| To: | Neuronomix Inc. (dagoston@capu.net) |
| Subject: | TRADEMARK APPLICATION NO. 76457555 - BRAINCHIP - N/A |
| Sent: | 2/14/03 11:11:14 AM |
| Sent As: | ECom115 |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/457555
APPLICANT: Neuronomix Inc.
|
|
|
CORRESPONDENT ADDRESS: NEURONOMIX INC. 5620 SONOMA ROAD BETHESDA, MD
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom115@uspto.gov
|
|
MARK: BRAINCHIP
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: dagoston@capu.net |
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.
|
Serial Number 76/457555
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Descriptiveness
The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the goods. Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1); TMEP section 1209 et seq.
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. 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 section 1209.01(b). It is not necessary that a term describe all of the purposes, functions, characteristics or features of the goods to be merely descriptive. It is enough if the term describes one attribute of the goods. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
The applicant has applied to register the mark BRAINCHIP. The term BRAIN is defined as “[t]he portion of the vertebrate central nervous system that is enclosed within the cranium, continuous with the spinal cord, and composed of gray matter and white matter. It is the primary center for the regulation and control of bodily activities, receiving and interpreting sensory impulses, and transmitting information to the muscles and body organs. It is also the seat of consciousness, thought, memory, and emotion.”[1] The term CHIP is commonly used in the industry to describe a glass slide for scientific use. The examining attorney refers to the excerpted evidence from the LEXIS/NEXIS research database, NEWS library, ALLNEWS file, retrieved on February 14, 2003, in which the term “CHIP” appeared within 2 words of “GLASS SLIDE” in 57 stories. Only a representative sampling of the stories is attached because of the large number of stories responsive to the search request and the duplicative or irrelevant nature of some of the stories.
The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1). In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).
The term BRAINCHIP is merely descriptive of the applicant’s goods, namely, BRAIN tissue samples arranged on a CHIP or glass slide. The mark immediately names the exact nature of the goods and does nothing else. Accordingly, the mark is refused registration on the Principal Register under Section 2 (e) (1).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
The wording “the goods represent a brain tissue (animal or human)micro array product that is used in scientific research mainly by pharmaceutical companies and researchers the tissue samples are arranged on a small glass slide or chip” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “micro arrays, namely, human and/or animal brain tissue arranged on a chip for scientific and medical research use,” in INT. CLASS 1, if accurate. TMEP §1402.01.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Curtis French/
Trademark Attorney
Law Office 115
ecomm115@uspto.gov
703-308-9115 ext. 250
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.
MAIL-IT REQUESTED: FEBRUARY 14, 2003 10083K
CLIENT:
LIBRARY: NEWS
FILE: ALLNWS
YOUR SEARCH REQUEST AT THE TIME THIS MAIL-IT WAS REQUESTED:
GLASS SLIDE W/2 CHIP
NUMBER OF STORIES FOUND WITH YOUR REQUEST THROUGH:
LEVEL 1... 57
LEVEL 1 PRINTED
THE SELECTED STORY NUMBERS:
1,2,3,7,8,13,14,28,30,35
DISPLAY FORMAT: KWIC
SEND TO: FRENCH, CURTIS
TRADEMARK LAW LIBRARY
2101 CRYSTAL PLAZA ARC
MAIL BOX 3104
ARLINGTON VIRGINIA 22202-4600
**********************************01537**********************************
Copyright 2003 Business Wire, Inc.
Business Wire
February 12, 2003, Wednesday
DISTRIBUTION: News Editors & Health/Medical Writers
LENGTH: 807 words
HEADLINE: Stanford Researchers Study How Gene Level Variations in Blood Affect Immunity
DATELINE: STANFORD, Calif., Feb. 12, 2003
... being expressed in a given sample. They then attached a fluorescent molecule to the RNA and applied the samples to a gene chip -- a glass slide dotted with human genes. If a sample contained RNA corresponding to a gene on the chip, the fluorescently labeled RNA would ...
Copyright 2002 Reed Business Information UK, a division of
Reed Elsevier Inc.
All Rights Reserved
New Scientist
October 26, 2002
SECTION: Features; Pg. 34
LENGTH: 3261 words
HEADLINE: Sugar rush;
Once dismissed as mere decoration, sugar molecules turn out to be vital components in life's intricate machinery. Now the race is on to exploit them, says Karen Schmidt
BYLINE: Karen Schmidt; Karen Schmidt is a science writer based in California
BODY:
... fuel the glycomics revolution and may even lead to tools for detecting bioterrorism.
Modelled on the DNA chip, the glyco chip is a glass slide covered in an array of hundreds of different sugar dots. Each dot is made by sticking a tiny ...
Copyright 2002 Genomics & Genetics Weekly via NewsRx.com and NewsRx.net
Genomics & Genetics Weekly
August 9, 2002
SECTION: EDITOR'S CHOICE; Pg. 5
LENGTH: 945 words
HEADLINE: LYMPHOMA: Gene profiles predict survival
BODY:
... relied on DNA microarray technology, which allows researchers to determine which genes are active within cells. Microarrays, also known as gene chips, are glass slides that have been coated with thousands of spots of DNA, each representing a different gene. When a gene is active in a cell, ...
Copyright 2002 Globe Newspaper Company
The Boston Globe
July 8, 2002, Monday ,THIRD EDITION
SECTION: METRO/REGION;
Pg. B1
LENGTH: 1313 words
HEADLINE: CANCER RESEARCH FOCUSES ON TUMORS' DNA
BYLINE: By Raja Mishra, Globe Staff
BODY:
... basically enabled the field was developed in California. Patrick Brown, a Stanford University molecular biologist, developed "gene chips," tiny glass slides that could quickly analyze all the DNA activity in tumor samples. These chips contain no silicone like computer chips; ...
Copyright 2002 Telegraph Group Limited
THE DAILY TELEGRAPH(LONDON)
July 03, 2002, Wednesday
SECTION: Pg. 16
LENGTH: 1256 words
HEADLINE: Portrait of a tumour A revolutionary technique that analyses genetic changes will enable cancer treatments to be customised for patients. Roger Highfield reports
BYLINE: By Roger HighfieldBy Cassandra Jardine
BODY:
... Merck and Co, and Dr Laura J van't Veer of the Netherlands Cancer Institute.
To create the portrait they use a DNA chip, a glass slide with pieces of the DNA of thousands of genes. When genetic material from the tumour is poured over the chip, matching genetic sequences bind. The result is ...
Copyright 2002 Chicago Sun-Times, Inc.
Chicago Sun-Times
May 22, 2002 Wednesday
SECTION: FINANCIAL; i-ZINE SCENE; Pg. 70
LENGTH: 923 words
HEADLINE: Big grant from Canada for animal-research firm
BYLINE: Sandra Guy
BODY:
... beef.
The research with the University of Illinois at Urbana-Champaign is the first to develop a DNA chip, or microarray, for cattle.
The "chip" is a glass slide that contains 3,800 genes set up in a specific array. It enables scientists to watch the activity of all ...
Copyright 2002 Newspaper Publishing PLC
The Independent (London)
February 22, 2002, Friday
SECTION: NEWS; Pg. 11
LENGTH: 613 words
HEADLINE: INSTANT DNA FINGERPRINTING TURNS SCI-FI INTO REALITY
BYLINE: Steve Connor Science Editor
BODY:
... weapons, such as anthrax or smallpox, either on a battlefield or at sensitive installations.
At the heart of the new test is a glass slide or "chip" loaded with several strands of DNA which are designed to match with any genetic sequences that are of interest, for example anthrax genes or human ...
Copyright 2001 Nihon Keizai Shimbun, Inc.
The Nikkei Weekly
April 2, 2001
LENGTH: 368 words
HEADLINE: Nisshinbo unveils DNA chip offering speedy TB check
BODY:
Nisshinbo's DNA chip is a glass slide holding DNA fragments that probe for genes in the bacteria that bestow resistance to five common antibiotics including streptomycin. The ...
Copyright 2001 Living Media India Ltd.
India Today
January 22, 2001
SECTION: Science; Pg.60
LENGTH: 2443 words
HEADLINE: Biotechnology: New Money Plant
BYLINE: Supriya Bezbaruah
BODY:
... one is genetically predisposed to. These technologies will be in the market in 2-5 years. The concept: DNA on a chip is a glass slide coated with genes of interest, fluorescently labelled. If the patient has genes for a disease, those areas of the glass slide fluoresce instantly ...
Copyright 2000 Canada NewsWire Ltd.
Canada NewsWire
November 22, 2000, Wednesday
SECTION: DOMESTIC NEWS
DISTRIBUTION: Attention News/Health Editors
LENGTH: 1226 words
HEADLINE: Ontario's first Clinical Genomics Centre opens at Toronto's University Health Network;
$30 million partnership will enable targeted drugs, treatments
DATELINE: TORONTO, Nov. 22
BODY:
... across the province.
Microarray analysis allows scientists to isolate, read and compare tens of
thousands of genes stored on a glass slide or "gene chip" the size of a
postage stamp to quickly analyze the expression of those genes and
differentiate between normal and damaged cells. As a result, ...
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INTO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.