UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/379076
APPLICANT: Great Smokies Diagnostic Laboratory, Inc ETC.
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CORRESPONDENT ADDRESS: DAVID M. CARTER CARTER & SCHNEDLER, P.A. 56 CENTRAL AVENUE, #101 P.O. BOX 2985 ASHEVILLE, NC 28802 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom106@uspto.gov
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MARK: IMMUNOGENOMIC
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CORRESPONDENT’S REFERENCE/DOCKET NO: GSD-6
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/379076
This letter responds to the applicant’s communication filed on December 19, 2002.
The refusal to register made pursuant to Section 2(e)(1) of the Act is continued and made Final.
A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).
The examining attorney must consider whether a mark is merely descriptive in relation to the identified goods/services, not in the abstract. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). TMEP §1209.01(b).
It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods/services to be merely descriptive. It is enough if the term describes one attribute of the goods/services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). TMEP §1209.01(b).
Here, as previously indicated the term at issue is merely descriptive because it describes the fact that the services could or will encompass the immune system “immuno” and likewise could or will concern the testing of a collection of genes. See the attachments included with the June 21, 2002, office action. Immuno refers to the immune system, and there are diagnostic tests that use characteristics of the immune system to separate various substances (most commonly, radio-immuno assay, a/k/a RIA). Genomic is descriptive of the genome, the set of genes that are encoded in any living being. The fact that a term is not found in the dictionary is not controlling on the question of registrability. In re Gould Paper Corp., 834 F. 2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987; In re Orleans Wines, Ltd., 196 USPQ (TTAB 1977). TMEP section 1209.03(b). Furthermore, as the previously attachments submitted with the June 21, 2002, office action demonstrated, the term at issue has been and is being used by others in the field in a descriptive manner. Thus, for the reasons set forth the refusal to register made pursuant to Section 2(e)(1) of the Act is continued and made Final.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. §2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
/Edward Nelson/
Examining Attorney
Law Office 106
(703) 308-9114, ext. 144
(703) 308-8106 (fax no.)
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.