Response to Office Action

Ms. Bush:

Applicant acknowledges receipt of the Office Action dated July 1, 2004. Its contents have been carefully noted.
Applicant respectfully requests the Examining Attorney to consider the following remarks, reconsider her position that the subject mark is merely descriptive of the services, and allow registration of the mark on the Principal Register.  In the alternative, if the Examiner does not allow registration of the mark on the Principal Register, the Applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words "Principal Register" to "Supplemental Register").

I. Registration of the Mark OLIGOANALYZER Would Not Offend the Policy Behind the Descriptiveness Rejection

Under 15 U.S.C. § 1052(e)(1) "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it... (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant, is merely descriptive...."  As the Examining Attorney is aware, the policy for this rule is that terms or phrases that are merely descriptive must be free for public use so that competitors can use them to describe their own goods or services.  But a mark need not be completely devoid of meaning in relation to the goods or services to be registerable.  T.M.E.P. 1209.01(a)  A mark is "suggestive," and therefore registerable, when imagination, thought, and perception are required to reach a conclusion as to the nature of the goods/services.  The line between merely descriptive and suggestive terms is nebulous.  Therefore, doubt should be resolved in favor of the applicant because competitors have the opportunity to oppose the registration once published, and to present additional evidence.

II. The Cited Cases Do Not Support The Rejection

Because a determination of mere descriptiveness vel non in any particular case is highly fact-specific, resort to prior case law is usually not helpful.  Here, the cases cited in the Office Action do not support a finding of mere descriptiveness of the present mark.  Rather, if the marks in the cited cases are representative of merely descriptive marks, the present mark should be considered registerable.
In the first supporting case, In re Polo International Inc., 51 USPQ2d 1061 (TTAB 1999), the term "DOC-CONTROL" was refused registration when used with document management software.  Clearly, there are few options afforded in the English language that could describe software for document management. Both terms in the mark, DOC and CONTROL, when used together in this manner, do not require any imagination or thought regarding the nature of the services. As stated in the Applicant's prior Office action response, OLIGOANALYZER could bring to mind any of the following goods or services: 1) a machine or program that analyzes several characteristics (i.e., sequences, physical constants, etc.) of short biological polymers; 2) a microarray system for biological testing composed of short biological polymers; 3) an oligonucleotide internal control that is used to determine whether a genetic test is functioning properly; 4) a machine that performs a small number of analyses; and/or 5) a machine for analysis that is composed of a small number of components.
In In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987), the proposed mark, CONCURRENT PC-DOS, the Applicant asserted that CONCURRENT was not descriptive because technically their system ran programs sequentially and not concurrently. However, the court correctly determined that the relevant field used the term "concurrent" even for sequentially operating systems. The In re Digital, applicant's arguments are not relevant for OLIGOANALYZER in that the Applicant does not suggest that "oligo" or "analyzer" are misleading and not actually present in the goods covered by the mark. Rather, the Applicant argues that the terms could mean any number of things in the relevant field, and an element of imagination, thought and perception is required before a conclusion can be reached as to the nature of the associated services.
In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985) is also inapposite because the mark "VENTURE LENDING ASSOCIATES" was merely descriptive of services relating to the lending of venture capital funds of institutional investors.  Also cited is In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985), where the mark "APRICOT" was refused registration for use with an apricot-scented line of dolls.  In each of the above cases the words used in the marks were the best descriptions, if not the only descriptions, for the goods/services in the respective applications.  Moreover, in each case, the marks were composed of words in common usage in the English language.  In contrast, the present mark, OLIGOANALYZER, is not a word in use in the English language and does not immediately, absent hindsight with knowledge of the services, bring to mind any particular goods or services.  Applicant submits that imagination, thought, and/or perception would be required to reach a conclusion as to the nature of the goods/services.
Applicant submits that, with respect to the term "OLIGO", the requisite imagination, thought, and perception for a suggestive mark would be required to conclude that the term "oligo," in the current context, means oligonucleotide.  The definition of the term "oligo" according to Webster's Dictionary is few.  (See Appendix 1)  This meaning would not be lost on Applicant's consumers.  Even in situations where consumers use the term "oligo" with reference to nucleotides, the term "oligo" refers to polymeric nucleotides that contain relatively few nucleic acid residues. 
As the Examining Attorney knows, a unitary mark such as OLIGOANALYZER must be analyzed as a whole.  When the term "OLIGO" is combined with "ANALYZER" rather than "NUCLEOTIDE," at the very least, the conclusion that "OLIGO" refers to oligonucleotides is strained and a consumer would be unlikely to immediately conclude that the term still refers to oligonucleotides.  The meaning of the entire mark "OLIGOANALYZER" in consumers' minds is more likely in the first instance to bring to mind any or all of the descriptions listed above.  At least some amount of imagination, thought, and perception would be required to conclude that "OLIGO" means oligonucleotide and that the services associated with "OLIGOANALYZER" would be "providing online information about nucleic acid polymers," as in the present application.
Because the mark no more than indirectly conveys information about the associated services, OLIGOANALYZER should be considered at least "suggestive" and registerable, particularly where, as here, there is no danger of depleting the general vocabulary.  Applicant submits that it is only through the use of hindsight, with knowledge of the services in mind, that the mark could be considered merely descriptive, as opposed to a registerable "suggestive" mark.  Clearly, hindsight should be avoided in the inquiry. 
For the foregoing reasons Applicant respectfully submits that the mark, when considered as whole, is registerable and requests the Examiner to reconsider and withdraw the rejection and allow registration of the mark on the Principal Register.

III. The Mark Will Be Eligible For Registration on the Principal Register in September of 2005 Based Upon Its Substantially Exclusive and Continuous Use in Commerce for at Least the Preceding Five Years

The Applicant submits that the present mark, OLIGOANALYZER, if refused registration on the Principal Register, will be eligible within months of the refusal based upon its substantially exclusive and continuous use in commerce for the prior five years.  The Applicant respectfully requests that the Examiner recognize that the difference between allowance based upon this response, and allowance based upon five year's of continuous use, will be in all practical terms a matter of approximately six months. In terms of efficiency alone, the Applicant respectfully requests registration on the Principal Register.

V. Conclusion

For the foregoing reasons, the applicant requests the Examiner to reconsider and withdraw the descriptiveness rejection and register the mark on the Principal Register.  If the Examiner does not allow registration of the mark on the Principal Register, the Applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words "Principal Register" to "Supplemental Register").  Should the Examining Attorney wish to speak to the applicant she is encouraged to call the undersigned attorney.

John Petravich

Integrated DNA Technologies, Inc.

847.745.1699