Sheila Mikhail

Trademark Trial and Appeal Board

Jan 18, 2007

No. 78419550 (T.T.A.B. Jan. 18, 2007)

Mailed:
January 18, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sheila Mikhail
________

Serial No. 78419550
_______

Steven J. Hultquist of Intellectual Property/Technology Law
for Sheila Mikhail.

Ellen J. G. Perkins, Trademark Examining Attorney, Law
Office 110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Quinn and Hohein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sheila Mikhail, an individual, has appealed from the
final refusal of the Trademark Examining Attorney to
register BIOLOGICAL NANOPARTICLES, in standard character
format, as a trademark for “designer viral vectors for
scientific research used to deliver genes and other
material to a biological cell” in Class 1 and “designer
viral vectors for medical use for gene therapy and drug
THIS DISPOSITION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78419550
2
administration” in Class 5.1 Registration has been refused
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of the identified goods.2 Both applicant and
the Examining Attorney have filed appeal briefs.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered to be merely
descriptive; rather, it is sufficient that the term
describes one significant attribute, function or property
of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).

1 Application Serial No. 78419550, filed May 16, 2004, based on
Section 1(b) of the Trademark Act (intent-to-use).
2 In her appeal brief applicant states that there are two issues
on appeal--whether the mark is merely descriptive, and whether
her identification of goods is acceptable. However, with her
request for reconsideration applicant amended the identification,
and this amended identification was accepted by the Examining
Attorney. Therefore, as pointed out by the Examining Attorney in
her brief, the acceptability of the identification of goods is
not an issue in this appeal.
Ser No. 78419550
3
In support of her position that applicant’s mark is
merely descriptive of a significant characteristic or
feature of applicant’s goods, the Examining Attorney has
submitted the following dictionary definitions:
Biological: 1. Of, relating to, caused
by, or affecting life or living
organisms. 2. Having to do with
biology. 3. Related by blood: the
child’s biological parents; his
biological sister. n. A preparation,
such as a drug, a vaccine, or an
antitoxin, that is synthesized from
living organisms or their products and
used medically as a diagnostic,
preventive or therapeutic agent.3

Nanoparticle: A microscopic particle
whose size is measured in nanometers
4

The Examining Attorney also made of record excerpts
from a number of articles in which the term “nanoparticles”
appears, including the following:

3 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
4 Merriam-Webster’s Medical Dictionary, © 2002. The Examining
Attorney submitted this definition with her appeal brief, and
requested that we take judicial notice of it. We grant this
request. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983). We also note that in the
first Office action the Examining Attorney recited the following
definition of “nanoparticle”: An extremely small particle with a
radius that is less than 100 nanometers. Although the Examining
Attorney did not identify the dictionary from which this
definition was taken, applicant has not objected to our
consideration of it.
Ser No. 78419550
4
…the treatment also kills many other
rapidly-dividing cells necessary to a
healthy body, leading to a host of
serious side effects. Where this
approach is akin to carpet bombing,
tiny nanoparticles studded with
molecules programmed to link
specifically to cancer cells could
deliver that same drug with guided-
missile precision.
“The News Journal” (Wilmington, DE),
December 14, 2004

…the National Aeronautics and Space
Administration and medical researchers
believe they’ve found the culprit--a
nanoparticle so small it challenges the
definition of life.
“The Herald-Dispatch” (Huntington, WV),
December 11, 2004

The 23-employee company is researching
various uses for nanoparticles, ultra-
tiny materials with unique properties
because of their unusually small size.
“Reno Gazette-Journal,” December 1,
2004

In addition, the Examining Attorney submitted what she
described as a representative sample of web pages retrieved
by the Google search system in which the term “biological
nanoparticles” appears, including the following (emphasis
added):5
Nanoparticle research seeks to exploit
the strong size dependence of the
physical and chemical properties of
nanometer-sized particles.
Nanoparticles can be the building

5 The Examining Attorney also submitted the search summary page
showing excerpts from the web pages, as well as printouts of the
entire pages of selected websites.
Ser No. 78419550
5
blocks of materials with novel
mechanical or electrical properties, or
at the core of new “nanoelectronic”
devices. Over the past decades, the
University of Minnesota has built a
leadership role in nanoparticle
research around the world. A broad
range of research topics is pursued in
numerous thrust areas including novel
nanostructured materials, nanoparticle-
based devices, environmental impact of
nanoparticles, biological
nanoparticles, computational
nanoparticle research, and development
of instrumentation for nanoparticle
science and engineering.
OMNI Organization for Minnesota
Nanotechnology Initiatives (University
of Minnesota)
http://www.nano.umn.edu/omni/research/s
ub6.html

Synthetic biological nanoparticles,
next generation of gene delivery
systems [Title of lecture by Jude
Samulski, University of North Carolina,
at a September 2005 Conference on
Protein Expression in Animal Cells
http://web.hospitalite.com/clients/PEAC
e/7thpeace_program.htm

Cardiovascular Gene Therapy
The cardiovascular sessions at this
year’s ASGT meeting in St. Louis
provided an update on work vital to
moving cardiovascular gene and cell
therapy forward successfully. … Dr.
Jude Samulski from the University of
North Carolina presented an exciting
update on recent work with adeno-
associated viral vectors, including the
ability to manipulate vector tropism by
swapping and/or engineering the viral
coat, holding out the promise of
eventually providing designer
biological nanoparticles optimized for
Ser No. 78419550
6
particular biological or clinical
applications.
ASGT News, Summer 2005 (American
Society of Gene Therapy)
http://www.asgt.org

Applicant, in response to this website evidence,
submitted declarations from both herself and from Dr.
Richard Jude Samulski, the person referenced in the latter
two excerpts quoted above. She and Dr. Samulski state they
are co-founders of Asklepios Biopharmaceutical, Inc.
(hereafter Asklepios); that applicant is the Chief
Executive Officer and Dr. Samulski is the president; that
the company uses technology licensed from the University of
North Carolina at Chapel Hill; and that, in addition to his
employment as president of Asklepios, Dr. Samulski is a
Full Professor in the Pharmacology Department of the
University of North Carolina at Chapel Hill and the
Director of the Gene Therapy Center at the University,
where he is engaged in research focused on the study of
dependent parvovirus and associated virus. The
declarations further state that Asklepios’ business is the
custom design, development and production of vectors for
gene therapy applications, and the references in the Google
search to usage by Dr. Samulski of BIOLOGICAL NANOPARTICLES
relate to synthetic vectors prepared for gene therapy being
developed for commercialization by Asklepios. Both
Ser No. 78419550
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declarations (which are identical insofar as the pertinent
information regarding the product and Google information is
concerned) assert that Asklepios has used the trademark
BIOLOGICAL NANOPARTICLES “for several years in an open and
notorious manner within the biotechnology industry to
describe custom viral vectors being developed by the
company,” ¶ 8, and that Asklepios’ use of “BIOLOGICAL
NANOPARTICLES as a trademark for designer viral vectors
used for delivery of genes and other materials to a
biological cell is to [their] knowledge the first and
original use of BIOLOGICAL NANOPARTICLES and subsequent
usages by others are derivatively traceable to such first
and original use by Asklepios Biopharmaceutical, Inc.” ¶
9.6 Attached as an exhibit to each declaration is a

6 The declarations also state that “the term BIOLOGICAL
NANOPARTICLES as used by me and other representatives of
Asklepios Biopharmaceutical, Inc. has developed independent
significance as a trademark for designer viral vectors used for
the delivery of genes and other materials to a biological cell.”
¶ 9. Although such language may be used when making a claim of
acquired distinctiveness, applicant has not in any other manner
in the application suggested that she is seeking registration
under Section 2(f), and we do not regard this statement as an
assertion of acquired distinctiveness. Moreover, in denying
applicant’s request for reconsideration, with which the
declarations were submitted, the Examining Attorney stated that
the mark is unregistrable absent a showing of acquired
distinctiveness, and applicant never responded by asserting that
she was making such a claim. (We also note that the application
is based on an asserted intention to use the mark, rather than on
actual use in commerce; normally, to be successful in showing
acquired distinctiveness, an applicant must have used the mark in
commerce.)

Ser No. 78419550
8
PowerPoint presentation which, on the page headed “Company
Focus,” has the statement, “Utilizing our proprietary
Biological Nano Particles™ (BNPs) derived from recombinant
adeno-associated viruses, AskBio develops novel
protein/cellular based therapies for muscular-skeletal
disorders and other diseases treatable by delivering BNPs
to muscle.”
Responding to these declarations, the Examining
Attorney made additional Internet evidence of record
showing descriptive and/or generic use of the term
“biological nanoparticles” (emphasis added):
NanoVirDetect--a micro-fluidic device
for dielectrophoretic manipulation,
trapping and analysis of biological
nanoparticles.
Manipulation, trapping and in-situ
analysis of biological nano-particles
such as viruses and bacteria opens up
new avenues towards advanced
diagnostics.
www.nmi.de/englisch/showprj.php3?typ=1&
id=73

Membrane Chromatography of Biological
Nanoparticles
Abstract: …However, for large
biological nanoparticles such as
viruses, plasmid DNA, and LDL
cholesterol….
…These results are pertinent to the
removal of LDL from human plasma and
the purification of gene therapy
delivery vectors, viral vaccines, and
other large biological nanoparticles.
www.aiche.org.conferences

Ser No. 78419550
9

Curriculum Focus Areas
…
Chemical, Biomolecular, and
NanoBioEngineering--
Biochemical engineers develop the
biological processes associated with
industrial scale production of drugs,
chemicals and food products.
Increasingly batch processing using
bacterial and eukaryotic cells is being
used to process raw materials for
product recovery, development of
pharmaceuticals and environmental
protection. …NanoBioEngineers deal with
applications of principles of
nanotechnology in developing
bioengineering processes, systems and
products. These include biological
nanoparticles design and manufacturing,
drug design, targeting & delivery, gene
delivery & therapy, cancer treatment
research & development.
Bioengineering @ UIC College of
Engineering
www.uic.edu

The Zeta filter is a clever device that
uses an AC electric field to quickly
separate out “biological
nanoparticles,” things like bacteria,
viruses or cellular components….
Notre Dame Magazine
www.nd.edu

Finally, the Examining Attorney submitted web pages
that show that biological vectors include viruses:
Recombinant DNA techniques use
biological vectors like plasmids and
viruses to carry foreign genes into
cells.
Union of Concerned Scientists
www.ucsusa.org

Ser No. 78419550
10
Based on the evidence of record, we find that
applicant’s mark BIOLOGICAL NANOPARTICLES is merely
descriptive of her goods, in that it directly informs the
consumers of the designer viral vectors that these vectors
consist of biological nanoparticles. The dictionary
definitions of the individual elements show that, when
these words are combined in the term BIOLOGICAL
NANOPARTICLES, the mark clearly describes the components of
applicant’s identified viral vectors, namely that they are
biological material (viruses) that are extremely small
(nanoparticles). Moreover, the Internet evidence shows
that the term BIOLOGICAL NANOPARTICLES is a recognized term
in the industry.
Applicant has raised a number of arguments traversing
the Examining Attorney’s position that her mark is merely
descriptive, and we will address them in turn. First,
applicant asserts that, because the Examining Attorney
found her initial identification to be indefinite, the mark
cannot be merely descriptive because, if it were, the
identification would be clear. This argument is not
persuasive. The question of whether an identification of
goods is acceptable is determined on the basis of the
identification itself, not on whether the mark provides
additional information about the nature of the goods.
Ser No. 78419550
11
Applicant also asserts that the Examining Attorney has
impermissibly deconstructed the mark into its two separate
words, rather than considering the mark in its entirety.
The cases that applicant relies on in support of this
position, however, refer to the consideration of marks in a
likelihood of confusion analysis, in which marks must be
compared in their entireties. It is not improper, in
determining whether a mark is merely descriptive, to
consider the meaning of the individual elements of a mark
to see if they are descriptive, and then consider whether
they maintain their descriptive connotation when they are
combined, such that the mark as a whole is merely
descriptive. See In re Tower Tech, Inc., 64 USPQ2d 1314
(TTAB 2002), in which the Board found SMARTTOWER to be
merely descriptive of commercial and industrial cooling
towers, looking at the descriptive meaning of the
individual words in the mark in concluding that the mark
was merely descriptive.
Applicant has also asserted that there are a
multiplicity of meanings for the individual words in the
mark that prevent it from being merely descriptive. In
this connection, applicant points out that “biological”
could refer to a family relationship or genetic heritage,
as in “biological mother,” while the element “nano” in
Ser No. 78419550
12
“nanoparticles” could relate to a characteristic of being
compact in relation to other things of a same or similar
type. The fallacy of this argument is that the
determination of mere descriptiveness of a mark is not made
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with the goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Applicant’s argument that her “BIOLOGICAL
NANOPARTICLES mark does not form in the viewer’s or
hearer’s mind a simultaneous awareness and knowledge of
‘designer viral vector used for the delivery of genes and
other materials to a biological cell,’” brief, p. 7, also
fails to take into consideration that the determination of
whether a mark is merely descriptive is not made in the
abstract. Thus, the question is not whether a person,
seeing only the mark, is able to guess what the goods are,
but whether, upon seeing the mark in connection with the
goods, the consumer will immediately understand from the
mark a characteristic or feature of the goods.
Ser No. 78419550
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Applicant also argues that she has satisfied the
“competitor’s needs” test because there is no evidence that
other entities have adopted or used BIOLOGICAL
NANOPARTICLES as a trademark or service mark or in any
business or advertising sense, and that she has satisfied
the “competitor’s use” test because there is no evidence
that the term is used as a trademark by others.
As the Examining Attorney has pointed out, the fact
that applicant may be the first or only user of a
descriptive term does not justify registration where the
evidence shows that the term is merely descriptive of the
goods. Moreover, in the present case there is evidence
that the term BIOLOGICAL NANOPARTICLES is used by others.
Notwithstanding the declarations of applicant and of Dr.
Samulski, the record clearly demonstrates a competitive
need to use this terminology to describe characteristics of
goods such as applicant’s.
Decision: The refusal of registration is affirmed.