Cybergenetics Co.

Trademark Trial and Appeal BoardOct 29, 2012

No. 76700247 (T.T.A.B. Oct. 29, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: October 29, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Cybergenetics Co. _____ Serial No. 76700247 _____ Ansel M. Schwartz, Esq. for Cybergenetics Co. Sean Crowley, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _____ Before Bucher, Bergsman and Ritchie, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Cybergenetics Co. (“applicant”) filed an intent-to-use application to register the mark DNA INVESTIGATOR, shown below, for “newsletters in the field of DNA investigation,” in Class 16. The Trademark Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e), on the ground that the Serial No. 76700247 2 mark DNA INVESTIGATOR for a newsletter in the field of DNA investigation is merely descriptive. The wording “DNA investigator” identifies the occupational title of a person that investigates DNA and applicant’s use of this wording merely serves to inform these DNA investigators that applicant’s DNA investigation newsletters are specifically tailored towards their interests.1 To support the descriptiveness refusal, the Trademark Examining Attorney introduced the following evidence: 1. A copy of applicant’s newsletter about DNA investigations.2 The “Feature Article” is entitled “DNA Information and Uncertainty.” The article discusses how a DNA analyst should collect and interpret DNA evidence from crime scenes. Other articles include, inter alia, “Testifying Tip: Presenting Match Information in Court” and “Tutorial: DNA Match Information.” The content of the article is geared toward DNA investigators or analysts. 2. A book review for GENETICS posted on GoogleBooks.com.3 The book includes an interview with a DNA investigator at the National Fish and Wildlife Forensics Laboratory. 3. An article posted on the KCRG.COM website (September 17, 2008) (Dubuque, Iowa) about a murder investigation.4 The article referenced the report of a DNA investigator. 1 Trademark Examining Attorney’s Brief, p. 2 (unnumbered). 2 February 18, 2010 Office action. 3 January 11, 2011 Office action. See also the review posted on the National Science Teachers Association website (nsta.org). Serial No. 76700247 3 4. An advertisement for a documentary “Villa De Alburquerque” [sic] available through the American Public Television website (aptonline.org).5 “During the program, a DNA investigator reconstructs New Mexico’s multicultural heritage by tracing the genetic ancestry of some of its residents.” 5. An article from the UC Davis microbiology department posted on the UC Davis website (May 16, 2000) (microbiology.ucdavis.edu) regarding the RecBC enzyme in E. coli bacterium.6 The article states that “most DNA investigators expected the RecBC would move along one to five rungs or nucleotides, at a time.” 6. An article posted on the Missourian website (columbiamissourian.com) (August 19, 2011) entitled “DNA, bloodstain and firearms examiners’ evidence places Kahler at shootings.”7 LYNDON, Kan. – DNA from blood found in the stairwell for Dorothy Wight’s home in Burlingame, Kan., matched that of James Kraig Kahler, a forensic DNA investigator with the Kansas Bureau of Investigation testified via videotaped deposition Friday. See also WSFX.com website referencing DNA matched by DNA investigators in a murder investigation in Horry County, South Carolina; an article posted on eHOW.com about teaching forensics to grade school students (directing DNA investigators to compare finger print sequences); and an article posted on the VailDaily.com website (August 25, 2004) reporting on the Kobe Bryant rape case 4 January 11, 2011 Office action. 5 January 11, 2011 Office action. 6 November 1, 2011 Office action. 7 November 1, 2011 Office action. Serial No. 76700247 4 where “[t]he defense, meanwhile, plans to call a Colorado Bureau of Investigation DNA investigator as a witness in the trial.”8 7. An article posted (July 19, 2007) on the NYSUN.com website.9 DNA Investigations To Soar With Opening of City Lab The city’s use of DNA to investigate and solve crimes is expected to skyrocket with the opening a $290 million forensic biology laboratory, the largest government – run DNA lab in the country. Part of the Office of the Chief Medical Examiner, the new lab will allow DNA investigators to increase their usual caseload of 3,000 criminal investigations each year to more than 200,000. “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used." In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods or 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 question is not whether someone presented only with the mark could guess the products listed in the description of goods. Rather, the question is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc., 8 November 1, 2011 Office action. 9 November 1, 2011 Office action. Serial No. 76700247 5 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). When two or more merely descriptive terms are combined, the determination of whether the composite mark also has a merely descriptive significance turns on the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods or services, the combination results in a composite that is itself merely descriptive. See In re Tower Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely descriptive of commercial and industrial cooking towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). In this regard, we must consider the issue of descriptiveness by looking at the mark in its entirety. However, “if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). In this regard, “incongruity is one of the accepted guideposts Serial No. 76700247 6 in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” In re Shutts, 217 USPQ at 365. Finally, a term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004) (GASBUYER merely descriptive of risk management services in the field of pricing and purchasing natural gas because it is clearly intended for individuals who purchase natural gas); Hunter Publ’g Co. v. Caulfield Publ’g Ltd., 1 USPQ2d 1996, 1998 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems); In re Camel Mfg. Co., Inc., 222 USPQ 1031, 1032 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail-order services in the field of outdoor equipment and apparel because “a mark is merely descriptive if it describes the type of individuals to whom an appreciable number of all of a party’s goods or services are directed.”). The evidence demonstrates that DNA investigators collect and analyze DNA evidence and that applicant’s newsletters are directed to DNA investigators. DNA INVESTIGATOR describes a feature or characteristic of applicant’s newsletters because it immediately conveys that the newsletters are intended for DNA investigators. Accordingly, the term DNA INVESTIGATOR is merely descriptive as to some, if not all, of the readers or subscribers of a newsletter in the field of DNA investigation. Decision: The refusal to register is affirmed.