In a recent precedential decision, the Trademark Trial and Appeal Board affirmed that the mark SEQUENCING BY BINDING is merely descriptive of goods and services in Classes 1, 9, 10, and 42 related to biological analytes (material that is evaluated in biological testing), and that Applicant’s use of the mark in patent filings is good evidence of the descriptiveness of the mark. During prosecution, the Examining Attorney cited Applicant’s U.S. patents and patent applications, in which the Applicant repeatedly used the phrases “sequencing by binding” and “sequencing-by-binding” – for example, “[i]n a sequencing by binding embodiment, evaluation can proceed…” and “…the kit can be configured to support a repetitive method such as a sequencing by binding method.” In some instances, the Applicant attempted to avoid the issue of mere descriptiveness by using the symbol “™” and capitalizing the mark: Sequencing By Binding™. The Examining Attorney noted this type of use within the patent documents and argued that this usage of the mark was “merely explanatory or descriptive usage” in context, rather than as an indicator of the source of Applicant’s goods or services.

In arguing against the refusal, Applicant noted that its use of the mark within its patent filings was a coined shorthand label for “a complex DNA sequencing technique…solely for patent procurement purposes.” The Applicant also noted that third parties do not use the term to describe essentially the same concept, therefore there is no competitive need for others to be able to use the phrase descriptively. The Board disagreed, and affirmed that the patent documents are good evidence of the descriptiveness of the phrase because the phrase, as used in the patent filings, conveys information to the target audience.

Patent filings by trademark applicants often come into play when applicants seek to register trade dress; utility patent applications or patents claiming a feature or features described in an application for trade dress would likely result in a functionality refusal of the trademark application under Section 2(e)(5). However, as shown in this case, applicants seeking to register word marks in connection with patentable inventions must also ensure that they do not use their intended mark in a descriptive manner in their patent filings. Applicants should pay close attention to the way that marks are used in patent applications, but best practice in this case would be to not use trademarks in patent filings at all, if possible.