January 14, 2020

On Patents, Trademarks, and Descriptiveness

We have previously blogged about the intersection between patents and trademarks (see, eg, here). In that post, we noted that if certain features are protected by a utility patent, that is strong evidence those features are functional and therefore ineligible for trade dress protection. But the content of patents can affect whether trademark protection is available in other ways as well. This is aptly illustrated by a recent case decided by the Trademark Trial and Appeal Board, In re Omniome, Inc., App. 87/661,190 (TTAB Dec. 19, 2019) (precedential).

Omniome, Inc. filed App. 87/661,190 seeking to register SEQUENCING BY BINDING for use in connection with:

 Class 01: reagents for analysis of biological analytes

 Class 09: research laboratory analyzers for analysis of biological analytes for non-medical purposes

 Class 10: devices for analysis of biological analytes for medical purposes

 Class 42: analysis of biological analytes; development of new technology for others for
 analysis of biological analytes

The examining attorney refused registration on the grounds of descriptiveness, asserting that the mark merely describes the use or function of the goods and services identified in the application. More specifically, the examining attorney argued that SEQUENCING BY BINDING describes a process or procedure used with the goods and services identified in the application to analyze DNA. Marks that are merely descriptive may not be registered on the Principal Register of the United States Patent and Trademark Office (the “PTO”) unless the marks are shown to have acquired distinctiveness. Omniome was unable to convince the examining attorney to withdraw the refusal, and Omniome appealed the final refusal to the Trademark Trial and Appeal Board (the “TTAB”). The TTAB affirmed the refusal to register the mark SEQUENCING BY BINDING on the ground of descriptiveness.

In reaching its decision, the TTAB relied on evidence from multiple sources. Evidence that a mark is descriptive may be obtained from any competent source. Such sources may include works authored by the applicant. In this case, the TTAB considered multiple sources, including dictionary definitions, newspapers, industry articles, and promotional materials and the opinion made clear that another source could also be considered. Two of the items made of record in the prosecution of this trademark application were two of Omniome’s patent applications. As noted in the TTAB’s opinion, while patent law recognizes that a patentee may be its “own lexicographer” and use terms in a manner other than their ordinary meaning, if the trademark applicant chooses to use such terms in their ordinary, descriptive meaning in its patent filings, such use may be probative of descriptiveness.

In the brief, the examining attorney pointed to the numerous uses of the phrase “sequencing by binding” in Omniome’s patent applications as evidence of descriptiveness, arguing that it describes a process used in connection with applicant’s goods and services. By contrast, Omniome. argued that the phrase was simply a shorthand reference to a complex technique and that the phrase is a coined term with no recognized meaning other than Omniome’s mark.

The TTAB was unpersuaded by Omniome’s arguments, ultimately finding that SEQUENCING BY BINDING is descriptive of the goods and services, which are used “to sequence DNA by the process of binding.” The TTAB relied on multiple sources to reach its conclusion, including Omniome’s patent applications and Omniome’s own explanations of the DNA sequencing technology in its briefs. The TTAB found that each descriptive term comprising the proposed mark retained its descriptive nature in combination and resulted in a composite phrase that itself is descriptive of the goods and services identified in the application.

This is not the first case in which a trademark applicant’s patents contained content that aided a finding of descriptiveness, but it is significant because the TTAB expressly adds such evidence to the list of what may be considered when determining whether a proposed mark is descriptive. This case serves as a reminder for trademark applicants to be mindful of the risks of selecting certain terms as trademarks when they could be found to be descriptive. It is also helpful for trademark applicants to keep the lines of communication open between their trademark counsel and their patent counsel and marketing team so that a term the trademark applicant wants to protect as a mark is not used descriptively in patent applications, promotional materials, or elsewhere.