USPTO rejects DNA sequencing trademark

A San Diego biotechnology company has been refused a trademark registration for ‘Sequencing by Binding’ on the grounds that it is too descriptive.

Omniome, which develops DNA sequencing tools, filed for the mark in 2017 but had its application refused by an examining attorney at the US Patent and Trademark Office (USPTO).

In a precedential decision, issued on Monday, January 6, the USPTO’s Trademark Trial and Appeal Board (TTAB) upheld the original decision, concluding that ‘Sequencing by Binding’ was descriptive of the claimed goods and services.

Omniome had argued that ‘Sequencing by Binding’ was the brand name of its proprietary DNA sequencing method, which is the subject of US patent filings.

According to Omniome, this is a quicker and more efficient method of DNA sequencing than other alternatives on the market.

The TTAB cited those same patents as evidence in its decision, concluding Omniome used the term in a descriptive manner.

Omniome had held that the term as a whole had “no recognised meaning” other than as its trademark, and that the phrase had been used in the patent filings as a shorthand to explain its technology.

According to the TTAB, however, “sequencing” and “binding” were both descriptive terms in the context of DNA sequencing.

The combination of these terms, the board concluded, “results in a composite that is itself merely descriptive”.

“We further find that the term “by” adds to the descriptiveness of the proposed mark because it indicates that the method by which one ‘sequences’ DNA is by ‘binding’,” the TTAB stated.

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