BioArray Solutions, Ltd.

Trademark Trial and Appeal Board

Jul 17, 2007

No. 78675381 (T.T.A.B. Jul. 17, 2007)

Mailed:
July 17, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BioArray Solutions, Ltd.
________

Serial No. 78675381
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Eric Mirabel, Esq., Attorney for BioArray Solutions, Ltd.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hairston, Grendel, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

BioArray Solutions, Ltd. filed an intent-to-use
application for the mark EXACTMATCH (in standard character
format) for the following services, as amended: “medical
research services, namely, method of identifying compatible
donors and recipients of transfused blood using genetic
markers, including markers for minor group antigens.”1
The examining attorney issued a final refusal of
registration on the ground that the mark is merely
descriptive pursuant to Section 2(e)(1) of the Lanham Act,

1 Application Serial No. 78542726, filed July 21, 2005.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78675381

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15 U.S.C. §1052(e)(1). Applicant has appealed the final
refusal.
Both applicant and the examining attorney have filed
briefs. For the reasons discussed below, we affirm the
refusal to register.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the services with which it
is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the services for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). In other words, the issue is not
whether one can guess what the services are based on the
mark alone, but whether someone who knows what the services
are will understand the mark to convey information about
the services. In re Tower Tech, Inc., 64 USPQ2d 1314,
1316-1317 (TTAB 2002); In re Patent & Trademark Services
Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB
Serial No. 78675381

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1990); In re American Greetings Corp., 226 UPSQ 365, 366
(TTAB 1985).
The examining attorney has made of record evidence
which shows that the phrase “exact match” is used in
connection with blood transfusions, blood donations and
medical procedures requiring blood transfusions to describe
a particular degree of compatibility between the donated
blood and the transfusion recipient. For example, the
examining attorney’s submissions show the following use of
the term (emphasis added):
Those who need a Blood transfusion require an exact
match of certain Blood traits of the Blood donor with
their own. Statistically, because these traits are
inherited, a patient's most likely match is another
family member. Unfortunately, over 70% of African
American Blacks can not find a Blood type match within
their own families. They, therefore, require an
unrelated individual willing to be tested and then to
donate Blood.
[http://www.bloodbook.com/african.html]

Sickle cell anemia patients receive up to four units
of red blood cells per treatment, and those who
require a blood transfusion must find an exact match
of specific blood traits.
[http://www.beaufortgazette.com/features/body_and_soul
/story]

Patients who are to undergo surgical procedures for
which a blood transfusion might be required may elect
to donate a supply of blood for the purpose ahead of
time. The blood is stored at the hospital for the
exclusive use of the patient. This procedure assures
that the blood type is an exact match. It also
assures that no infection will be transmitted through
the blood transfusion.
Serial No. 78675381

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[http://www.healthatoz.com/healthatoz/Atoz/common/stan
dard/transform.jsp]

Most of us will need a blood transfusion some time in
our lives. But often, those who need a lot of blood
require blood that’s an exact match, not just a
matched blood type.
[http://www.psbc.org/about/raredonor.htm]

Based on this evidence, we find that the
term “exact match” is merely descriptive when used in
connection with applicant’s services as they are recited in
the application, i.e.,“medical research services involving
identifying compatible donors and recipients of transfused
blood using genetic markers, including markers for minor
group antigens.” The term directly describes a significant
feature, function or purpose of the services, i.e., they
provide or consist of a means or method of finding or
identifying an “exact match” between “compatible donors and
recipients of transfused blood.”
We further find that the mark applicant seeks to
register, EXACTMATCH, is legally equivalent to the term
“exact match” as it appears in the evidence of record. The
descriptiveness of the term is not negated by applicant’s
mere combination of the two words into a single compound
term. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic
as applied to premoistened antistatic cloths for cleaning
computer and television screens); In re Tower Tech, Inc. ,
Serial No. 78675381

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64 USPQ2d 1314 (TTAB 2002) (SMARTTOWER merely descriptive
of "commercial and industrial cooling towers and
accessories therefor, sold as a unit").
Applicant argues that the examining attorney’s
evidence of usage of the term “exact match” refers only to
blood donor-recipient compatibility based on the commonly
used blood types: A, B, O and AB blood types, including
identifying a positive Rhesus presence (ABO/Ph blood
types). Applicant states that its services can be
distinguished from said use because it provides donor-
recipient blood compatibility services “based on comparison
of the antigens predicted to be present in donor and
recipient under designated matching rules, including rules
in which mismatched donors are not rejected unless the
mismatch is clinically significant and a rule that a
mismatch is not significant where the recipient expresses
antigens the donor does not (but not the other way around).
Thus, compatible donors and recipients are often not
identical and may have unmatched antigens and antibodies.”
(Applicant’s Brief, p. 2). Applicant asserts that one of
the purposes of its services is to identify not only
“exact” matches, but also “approximate matches (within an
acceptance level) that will nonetheless be compatible.”
(Applicant’s Brief, p. 5, emphasis in original).
Serial No. 78675381

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We are not persuaded by this argument. The issue of
mere descriptiveness must be determined on the basis of the
goods or services as identified in the application, and not
on the basis of what applicant’s actual services might be.
The “compatible donors and recipients of transfused blood”
identified in the application must be presumed to include
donors and recipients whose level of compatibility is an
“exact match,” as that term of art is used in the relevant
field. Whatever may be applicant’s particular means or
method of “identifying blood donor-recipient
compatibility,” the evidence of record establishes that
relevant purchasers will readily and immediately understand
the term “exact match” to refer to a significant feature or
purpose of applicant’s recited services, i.e., that they
enable the user to identify or locate an “exact match”
between blood donors and recipients. That applicant’s
actual services also might be designed or capable of
identifying “approximate” matches is not dispositive and
does negate the mere descriptiveness of “exact match” or
EXACTMATCH as used in connection with applicant’s services
as broadly recited in the application.
For the reasons discussed above, we find that
EXACTMATCH is merely descriptive of applicant’s recited
services.
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Decision: The refusal to register is affirmed.