throbber
|Cool§§: Godward LLP]
`
`TTAB
`
`December 6, 2005
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`Examing Attorney: Steven Fine
`Trademark Law Office l 10
`
`ATTORNEYS AT LAW
`
`4401 Eastgate Mall
`San Diego, CA
`92121-1909
`Main
`858 550-6000
`Fax
`858 550-6420
`
`www.coo1ey.com
`
`KENT M. WALKER
`
`(858) 550-6065
`wa1kerkm@cooley.com
`
`Broomfield, CO
`720 566-4000
`
`Palo Alto, CA
`650 843-5000
`
`Reston, VA
`703 456-8000
`
`San Francisco, CA
`415 693-2000
`
`Washington, DC
`202 842-7800
`
`Re:
`
`Response to Office Action, Declaration of James A. Schoeneck for Trademark
`Application, and Amendment to Allege Use
`Applicant: BrainCells Inc.
`Serial No. : 78/395,089
`Mark: BRAINCELLS
`
`Classes 35 & 42
`
`Our File:
`
`Braincells, Inc./BRAINCELLS/U.S., Classes 35 & 42
`
`Dear Commissioner:
`
`Enclosed please find the following documents in connection with the above—identif1ed trademark
`Application:
`
`1.
`
`2.
`
`3.
`
`4.
`
`Notice of Appeal, and
`
`Response to Office Action with exhibits
`
`Declaration of James A. Schoeneck
`
`Amendment to Allege Use
`
`The USPTO is hereby authorized to withdraw the fee of $100.00 for filing the Notice of Appeal
`from our Deposit Account No. 03-3118. Please charge any deficiency or credit any overpayment
`of this fee to Deposit Account No. 03-3118. A duplicate copy of this letter as authorization is
`attached hereto for your convenience.
`
`Please return the enclosed postcard acknowledging receipt of these documents.
`
`Very truly yours,
`
`COOLEY GODWARD LLP
`
`//2«z/m¢/w€.¢—~//
`
`Kent M. Walker
`Enclosures
`433s34 vl/SD
`
`1||||||lllll|||1l|||||||||||||l|||||||||||||||||||
`
`12-09-2005
`U.S. Patent & TMOfc/TM Mail Flop! Dr. #64
`
`

`

`1
`
`Certificate of Mailing:
`
`I hereby certify that this correspondence is being deposited with the United
`States Postal Service as First Class Mail, postage prepaid,
`in an envelope
`addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria
`
`(Date)
`
`Virginia 223151451.
` (Name)
`
`I}
`
`(0
`
`A
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`' 5
`0
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trademark Law Office: 110
`
`) )
`
`) )
`
`) )
`
`) )
`
`) )
`
`In Re the Application of:
`
`Applicant:
`
`BrainCells Inc.
`
`Mark:
`
`BRAINCELLS
`
`Serial No.:
`
`78/395,089
`
`Classes:
`
`3-5 & 42
`
`Filed:
`
`April 1, 2004
`
`) Examining Attorney: Steven Fine
`)
`)
`Mailing Date: June 6, 2005
`T__
`
`1
`1
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`12/15/200 GTHOHRS2 00000040 033118
`01 FC:640
`100.00 DR
`
`78395089
`
`NOTICE OF APPEAL
`
`BrainCells Inc. (“Applicant”), hereby appeals to the Trademark Trial and Appeal Board
`
`,
`
`from the decision of the Trademark Examining Attorney refixsing registration of the mark
`
`BRATNCELLS.
`
`U 'd d t : 12/15/2005 GTHOHOSE
`12/15/2005 BTH0l'10S2 00000040 033118
`01 FC:6403
`100.00 CR
`
`78395089
`
`12/15/2005 GTHDHRSE 00000041 033118
`
`78395089
`
`01 r(;;54o3
`
`300,00 09
`
`

`

`NOTICE OF APPEAL
`
`SERIAL No. 78/395,089
`
`An appeal fee in the amount of $100 is filed concurrently herewith. 37 C.F.R.
`
`§2.6(a)(l8). The USPTO is hereby authorized to withdraw this ‘fee from our Deposit Account
`
`No. 03-3118. Please charge any deficiency or credit any overpayment of this fee to Deposit
`
`Account No. 03-3118.
`
`Respectfully submitted,
`
`COOLEY GODWARD LLP
`
`Date: 6
`
`By;
`
`£11
`
`Kent M. Wal er
`
`483734 vl/SD
`
`Attorneys for Applicant.
`4401 Eastgate Mall
`San Diego, California 92121
`Telephone: (858)550-6000
`Facsimile: (858) 550-6420
`Email:
`trademarks@cooley.com
`
`

`

`Certificate Mailing
`
`I hereby certify that this correspondence is being deposited with the United States Postal
`Service as First Class Mail, in an envelope addressed to: Commissioner for Trademarks,
`
`(Date)
`
`PO. Box 1451, {T ‘a, Virginia 22313-1451
`
`0
`
`'
`
`UNITED STATES DEPARTMENT OF COMMERCE
`
`PATENT AND TRADEMARK OFFICE
`
`Trademark Law Office: 110
`
`) )
`
`) )
`
`) )
`
`) )
`
`) )
`
`) Examining Attorney: Steven Fine
`)
`
`In Re the Application of:
`
`Applicant:
`
`BrainCells Inc.
`
`Mark:
`
`IBRAINCELLS
`
`Serial No.:
`
`'78/395,089
`
`Classes:
`
`35 & 42
`
`Filed:
`
`April 1, 2004
`
`)
`Mailing Date: June 6, 2005
` )
`
`Commissioner for Trademarks
`
`PO. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`RESPONSE TO OFFICE ACTION
`
`Bra:inCells Inc. (“Applicant”), by and through its counsel, responds as follows to Office
`
`Action No. 2 dated June 6, 2005 with respect to the above-captioned application for the mark
`
`BRAINCELLS (“the Mark”):
`
`

`

`Mark: BRAINCELLS
`
`Serial No.7 8/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`1.
`
`REQUEST FOR RECONSIDERATION
`
`Pursuant to 37 C.F.R. § 2.64(b) and TMEP § 715.02, Applicant respectfully requests that
`
`the Examining Attorney reconsider the FINAL refusal, in light of Applicant’s previous evidence
`
`and arguments, and the evidence and arguments submitted below.
`
`A..
`
`Refusal Should be Withdrawn Because Applicant’s Mark Is Not
`Merely Descriptive
`
`Registration of BRAINCELLS has been refused on the basis that it is merely descriptive
`
`of Applicant’s claimed services. Applicant respectfully responds that
`
`the Mark is at most
`
`suggestive of Applicant’s services. Since doubts on the issue of descriptiveness are to be
`
`resolved in favor of the Applicant, In Re Bed-Check Corporation, 226 U.S.P.Q. 946, 948
`
`(T.T.A.B. 1985), Applicant respectfully requests that the refusal be reconsidered and withdrawn
`
`based on the following arguments.
`
`ll.
`
`Imagination, Thought and Perception Required
`
`Applicant previously argued that BRAINCELLS is suggestive because it “requires
`
`imagination, thought and perception to reach a conclusion as to the nature of the goods [or
`
`services].” see Stix Products, Inc. V. United Merchants & Mfi9., Inc., 160 U.S.P.Q. 777, 785
`
`(S.D.N.Y. 1968). Only through an exercise of mature thought does BRAINCELLS suggest or
`
`hint at Applicant’s claimed services relating to pharmaceutical research and discovery. See
`
`Airco, Inc. v. air Products and Chemicals, Inc., 196 U.S.P.Q. 832, 835 (T.T.A.B. 1977) (holding
`
`that AIR-CARE was not merely descriptive, stating that “[t]he literal meaning of the mark,
`
`namely ‘care of the air’ may, through an exercise of mental gymnastics and extrapolation suggest
`
`

`

`Mark: BRAINCELLS
`
`Serial No.78/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`or hint at the nature of applicant’s services, but it does not, in any clear or precise way, serve
`
`merely to describe applicant’s preventative maintenance services”)
`
`The evidence and arguments submitted by the Examining Attorney in support of refusal
`
`to register serve to make this point even more. The Examining Attorney correctly states that
`
`Applicant’s services are business marketing and pharmaceutical research and development
`
`services. See Office Action No 2 at 2. The Examining Attorney next states that “the
`
`pharmaceutical products which are researched and developed by the applicant
`
`‘are
`
`specifically designed to effect receptors on neural stem cells in the hippocampus.” See id. The
`
`Examining Attomey then goes on to state that “hippocampus” is defined as the “area of [the]
`
`brain associated with memory.” From each of these separate points, the Examining Attorney
`
`concludes that neural stem cells in the hippocampus are “brain cells” and that,
`
`therefore,
`
`Applicant’s mark is merely descriptive of its claimed services. See id.
`
`As illustrated above, even the Examining Attomey’s statements required several different
`
`steps of analysis before reaching the conclusion that BRAINCELLS is descriptive of business
`
`marketing and pharmaceutical research and development. It is precisely these several different
`
`steps of analysis that constitute the “mental gymnastics” required to get from Applicant’s mark
`
`to Applicant’s claimed services. The test of descriptiveness is not whether the consumer could
`
`figure out the relation of the mark to the services after a careful thought or study. Rather, the
`
`connection between the mark and the Applicant’s services must be instantaneous for the mark to
`
`be considered merely descriptive. See Investacorp, Inc. v. Arabian Investment Banking Corp., 19
`
`U.S.P.Q.2d 1056 (11"‘ Cir. 1991).
`
`

`

`;
`'
`
`.
`
`Mark: BRAINCELLS
`Serial No.78/395,089
`
`Classes35&42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`2.
`
`BRAINCELLS Only Hints at Claimed Services
`
`BRAINCELLS would be considered merely descriptive only if it described an ingredient,
`
`quality, characteristic, function, feature, purpose or use of Applicant’s claimed services. See
`
`TMEP § l209.0l(b). Applicant submits that BRAINCELLS does not meet this standard.
`
`“Brain cells” are not an ingredient, quality, characteristic, function, feature, purpose, or
`
`use of Applicant’s claimed pharmaceutical research and discovery services. Applicant does not
`
`create brain cells, nor is its research focused on brain cells. Rather, the business of the company
`
`is to develop pharmaceuticals or related services that may or may not promote the growth or
`
`differentiation of cells anywhere in the human nervous system. In this way, BRAINCELLS may
`
`hint at or__sggg§_t_ an ingredient, quality, characteristic, function, feature, purpose or use of
`
`Applicant’s claimed services, but it does not merely describe them. The services are far removed
`
`from the mark; the mark hints at or suggests, but does not describe the goods or services.
`
`3.
`
`Doubt Must Be Resolved In Applicant’s Favor
`
`The connection between Applicant’s mark and Applicant’s claimed services is not
`
`instantaneous. The fact that it takes several steps of analysis to associate BRAINCELLS with
`
`Applicant’s claimed services signals that there is some doubt as to the descriptiveness of
`
`Applicant’s mark. Additionally, BRAINCELLS does not merely describe an ingredient, quality,
`
`characteristic, function, feature, purpose or use of Applicant’s claimed services. This aspect, too,
`
`signals doubt as to the descriptiveness of BRAINCELLS. This doubt is required to be resolved
`
`in Applicant’s favor. See In Re Bed-Check Corporation, 226 U.S.P.Q. 946, 948 (T.T.A.B. 1985)
`
`and In re Gourmet Bakers, Inc., 173 U.S.P.Q. 565, 565 (T.T.A.B. 1972) (holding that any doubt
`
`

`

`Mark: BRAINCELLS
`
`Serial No.78/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`in determining; registrability of THE LONG ONE for bread was to be resolved in favor of the
`
`Applicant). Applicant therefore respectfiilly requests that the refusal to register be withdrawn,
`
`and the application be permitted to proceed to publication.
`
`H.
`
`IN THE ALTERNATIVE, APPLICANT’S MARK HAS ACQUIRED DISTINCTIVENESS
`OF SECONDARY MEANING AND IS THEREFORE REGISTERABLE.
`
`Although Applicant believes that “BRAINCELLS” should be registerable because it is at
`
`most suggestive of the claimed services, in the event that the refusal to register on the grounds of
`
`descriptiveness is not withdrawn, Applicant respectfully requests that the refusal to register be
`
`reconsidered and withdrawn in View of acquired distinctiveness pursuant to section 2(f) of the
`
`Trademark Act. Accordingly, via a separate document, Applicant concurrently submits an
`
`Amendment to Allege Use of the Mark in classes 35 and 42 along with supporting declaration
`
`and specimens.
`
`Applicant respectfully submits that its Mark has come to be associated in the industry
`
`with a wide array of pharmaceutical research and development services and business marketing
`
`services in the field of licensed pharmaceutical products. Therefore, “BRAINCELLS” should
`
`proceed to registration on the Principal Register pursuant to Section 2(f) 15 U.S.C. §1052(f).
`
`Applicar1t’s advertising and promotion of the Mark in connection with Applicant’s
`
`services is sufficient to establish that the Mark has acquired distinctiveness.
`
`An evidentiary showing of secondary meaning adequate to show
`that a mark has acquired distinctiveness indicating the origin of the
`goods,
`includes evidence of the trademark owner’s method of
`using the mark, supplemented by evidence of the effectiveness of
`such use to cause the purchasing public to identify the mark with
`the source of the product.
`
`

`

`Mark: BRAINCELLS
`
`Serial No.78/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`In Re Owens-Corning Fiberglas Corp., 227 U.S.P.Q. 417, 422 (Fed. Cir. 1985). Under this
`
`standard, the following information is sufficient to show that Applicant’s use of the Mark has
`
`caused the relevant public to identify “BRAINCELLS” with Applicant and its services.
`
`A.
`
`Substantial and Continuous Use
`
`No other entities appear to be using or applying to register the mark “BRAINCELLS”
`
`other than Applicant. Indeed, the Examining Attorney found no related marks that would bar
`
`registration of Applicant’s mark. See Office Action No. 1
`
`Applicant has used the mark substantially and continuously since July 2004. See
`
`Declaration of James Schoeneck, CEO of BrainCells Inc. (“Sch0eneck Decl.”) Applicant’s
`
`business under the Mark continues to grow each year. App1icant’s use of the Mark,-combined
`
`with marketing and promotion of the mark over the last one and one half years, has caused
`
`consumers to recognize the “BRAINCELLS” mark and associate it with Applicant and its
`
`services. See Schoeneck Decl. at 1] 3.
`
`B.
`
`Press Releases
`
`Applicant advertises its drug discovery and development services in different types of
`
`print and electronic media, including through press releases. Attached as Exhibit A are examples
`
`of press releases highlighting the BRAINCELLS mark.
`
`C.
`
`Presentations at Industry Events
`
`Applicant regularly participates in, and has a leading presence in, industry trade shows
`
`and conferences such as the Texas Life Science Conference, the C21 BioVentures Conference,
`
`“The Biotech Meeting, ” CalBio, and Neuroscience, which are attended by thousands of industry
`
`professionals every year. Applicant’s presence at each of these trade show events is prominent,
`
`6
`
`

`

`Mark: BRAINCELLS
`
`Serial No.78/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`and Applicant promotes its services under the BRAINCELLS mark at
`
`these conferences.
`
`Attached as Exhibit B is a representative list of the industry trade shows and conferences in
`
`which App1ica:nt has attended and participated.
`
`Additionally, Applicant is ofien a featured speaker at these industry conferences, further
`
`promoting the BRAINCELLS mark in relation to its services. See Schoeneck Decl. at 1] 6.
`
`Attached as Exhibit C is evidence of PowerPoint presentations and other major presentations
`
`given by Applicant at major industry conferences.
`
`D.
`
`Examples of Recognition in the Industry
`
`Due to its innovative pharmaceutical research and discovery services, Applicant has
`
`become well-lmown in the biotechnology industry. Applicant’s notoriety in the industry
`
`strengthens the association between the BRAINCELLS mark and Applicant’s claimed services.
`
`Applicant is a member of BIOCOM, the largest regional life science association in the
`
`world, representing the Southern California life sciences community. Applicant has gained
`
`exposure of its BRAINCELLS mark through networking and other collaborative opportunities
`
`sponsored by BIOCOM. See Schoeneck Decl. at 1[ 7. Attached as Exhibit D are explanatory
`
`materials about BIOCOM, including evidence of Applicant’s membership in this association.
`
`In connection with its pharmaceutical research activities, App1icant’s work is often
`
`highlighted in scientific articles relating to the biotechnology field. Attached as Exhibit E are
`
`examples of such scholarly articles, indicating participation by Applicant and its leaders.
`
`

`

`Mark: BRAINCELLS
`
`Serial No.78/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`Attached as Exhibit F are press releases and other evidence from the biotechnology
`
`industry illustrating the connection between Applicant’s Mark and its pharmaceutical research
`
`and discovery services. Applicant’s membership in BIOCOM,
`
`its publication of scholarly
`
`articles in. the biotechnology field, and the other evidence of recognition in the biotechnology
`
`field support a conclusion that
`
`the relevant public (i.e.
`
`individuals and businesses in the
`
`biotechnology and pharmaceutical
`
`fields) have come to associate BRAINCELLS with
`
`Applicant’s pharmaceutical research and discovery and business marketing services.
`
`E.
`
`News Media Coverage
`
`Additionally, Applicant has also garnered attention outside its industry, and in the
`
`mainstream news media. Attached as Exhibit G is evidence of unsolicited news media coverage
`
`from publications such as Corante,
`
`the San Diego Union Tribune and YAHOO! Finance,
`
`showing use of the BRAINCELLS mark in connection with Applicant’s services. Each of these
`
`articles further serves to establish a connection between Applicant’s mark and its claimed
`
`services.
`
`F.
`
`Website
`
`A signifi cant source of publicity for Applicant’s services offered under the Mark comes
`
`from the Applicant’s website at www.braince1lsinc.com. The comprehensive web site displays
`
`the Mark prominently on every page and receives over one thousand hits each month. See
`
`Schoeneck Decl. at 1] 12. Attached as Exhibit H are excerpts from Applicant’s website showing
`
`the prominent use of the Mark.
`
`

`

`Mark: BRAINCELLS
`
`Serial No.78/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`Applicant has expended substantial resources in the successfiil promotion of its services
`
`in connection with the BRAINCELLS mark. As a result of its use, its promotion, and industry
`
`recognition of Applicant and the Mark in association with Applicant and its services, Applicant
`
`respectfully submits
`
`that
`
`the BRAINCELLS mark has gained secondary meaning and
`
`distinctiveness in the relevant marketplace.
`
`HI.
`
`AMENDMENT TO SUPPLEMENTAL REGISTER
`
`As more fully detailed above, Applicant believes that the Mark is suggestive, and should
`
`proceed to registration on that basis. In the alternative, Applicant argues that the Mark has
`
`acquired secondary meaning pursuant to section 2(f) of the Trademark Act, and should proceed
`
`to registration on that basis.
`
`If and only if the Examining Attorney does not accept either one of these bases for
`
`registration, Applicant requests that the application for BRAINCELLS be transferred to the
`
`Supplemental Register and that the words “Principal Register” in its original application be
`
`changed to “Supplemental Register” pursuant to 37 C.F.R. § 2.47(c) and § 2.75(a).
`
`CONCLUSION
`
`For the reasons set forth above, Applicant respectfully requests that the Examining
`
`Attorney withdraw the refusal
`
`to register on the ground that the “BRAINCELLS” mark is
`
`descriptive and find that the Mark is suggestive because it only hints at or suggests the claimed
`
`services.
`
`In the alternative, Applicant has amended its application to base registration on § 2(t)
`
`and has submitted evidence showing acquired distinctiveness. Lastly, in the event the Examining
`
`

`

`Mark: BRAINCELLS
`
`Serial No.78/395,089
`Classes 35 & 42
`
`Examining Attorney: Steven Fine
`Law Office: 110
`
`Attorney accepts neither one of those bases for registration, Applicant amends its application for
`
`transfer to the Supplemental Register.
`
`Respectfully submitted,
`
`COOLEY GODWARD LLP
`
`,
`By; K
`
`Ken M. Walker
`
`Attorney for Applicant
`4401 Eastgate Mall
`San Diego, CA 92121-1909
`(858) 550-6000
`trademarks@cooley.com
`
`Date:
`
`'6 lad 9/.0
`
`481925 vl/SD
`
`10
`
`

`

`/
`
`UNITED STATES DEPARTMENT OF COMMERCE
`
`PATENT AND TRADEMARK OFFICE
`
`,,In Re the Application of:
`
`I
`2' Applicant:
`
`Braincells Inc.
`
`I Mark:
`
`BRAINCELLS
`
`f Serial No.:
`
`78/395,089
`
`Classes:
`
`35 & 42
`
`~
`
`I
`
`Trademark Law Office: 110
`
`)
`)
`)
`>
`
`) )
`
`)
`)
`)
`>
`
`) Examining Attorney: Steven Fine
`
`I
`
`I
`
`Jl Filed:
`
`April 1, 2004
`
`)
`)
`»
`Mailing Date: June 6, 2005
`___;
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`DECLARATION OF JAMES A. SCHOENECK
`
`1, James A. Schoeneck, say and declare as follows:
`
`1.
`
`I am the Chief Executive Officer of BrainCells Inc., the (“Applicant”) in this matter
`
`(“Applicant”).
`
`I have personal knowledge of the facts set forth in this declaration.
`
`Applicant provides pharmaceutical
`
`research and development services and related
`
`business marketing services in the field of licensed pharmaceutical products. As the
`
`Chief Executive Officer,
`
`I am familiar with and have access to company records
`
`concerning the efforts to promote our services, the marketing budget and expenses for
`
`promotional events, publications, and communications to inform the press, public, and
`
`prospective customers about Applicant’s services.
`
`2. This Declaration is submitted to supplement the Response to Office Action No. 2 in the
`
`above-referenced application.
`
`

`

`Declaration in Support of Response to Office Action
`Mark: BRAINCELLS
`Serial No.: 78/395,089
`Class: 35 & 42
`
`. Applicant has used the mark substantially and continuously since July 2004. Applicant’s
`
`business under the BRAINCELLS mark continues to grow each year. Applicant’s use of
`
`the BRAINCELLS mark, combined with marketing and promotion of the mark since July
`
`2004, has caused consumers to recognize the “BRAINCELLS” mark and associate it with
`
`Applicant and its services.
`
`. Applicant advertises its drug discovery and development services in a different types of
`
`print and electronic media, including through press releases. Attached as Exhibit A are
`
`examples of press releases highlighting the BRAINCELLS mark.
`
`. Applicant regularly participates in, and has a leading presence in, industry trade shows
`
`and conferences such as the Texas Life Science Conference,
`
`the C21 BioVentures
`
`Conference, and “The Biotech Meeting” which are attended by thousands of industry
`
`professionals every year. Applicant’s presence at each of these trade show events is
`
`prominent, and BrainCells Inc. promotes its services under the BRAINCELLS mark at
`
`these conferences. Attached as Exhibit B is a representative list of the industry trade
`
`shows and conferences in which Applicant has participated and presented.
`
`. Applicant is often a featured speaker at these industry conferences, further promoting the
`
`BRAINCELLS mark in relation to its services. Attached as Exhibit C is evidence of
`
`PowerPoint presentations and other major presentations given by Applicant at major
`
`industry conferences.
`
`. Applicant is a member of BIOCOM, a regional life science association, representing the
`
`Southern California life sciences community. Applicant has gained exposure of its
`
`BRAINCELLS mark through networking and other collaborative opportunities sponsored
`
`

`

`Declaration in Support of Response to Office Action
`Mark: BRAINCELLS
`Serial No.: 78/395,089
`Class: 35 & 42
`
`by BIOCOM. Attached as Exhibit D are explanatory materials about BIOCOM, including
`
`evidence of App1icant’s membership in this association.
`
`8.
`
`In connection with its pharmaceutical research activities, Applicant’s work is often
`
`highlighted. in scientific articles relating to the biotechnology field. Attached as Exhibit E
`
`are examples of such scholarly articles, indicating participation by Applicant and its
`
`leaders.
`
`9. Attached as Exhibit F are press releases and other evidence from the biotechnology
`
`industry illustrating the connection between Applicant’s Mark and its pharmaceutical
`
`research and discovery services.
`
`10. Attached as Exhibit G is evidence of news media coverage from publications such as
`
`Corante,
`
`the San Diego Union ‘Tribune and YAHOO! Finance, showing use of the
`
`BRAINCELLS mark in connection with Applicant’s services.
`
`11. A significant source of publicity for Applicant’s services offered under the Mark comes
`
`from the Applicant’s website at_www.braincellsinc.com. The comprehensive web site
`
`displays the Mark prominently on every page and receives over one thousand hits each
`
`month. Attached as Exhibit H are excerpts from Applicant’s website showing the
`
`prominent use of the Mark.
`
`The undersigned, being hereby warned that willful
`
`false statements and the like are
`
`punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful
`
`A
`
`false statements may jeopardize the validity of the application or any resulting registration,
`
`

`

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`Certificate of Mailing
`
`I hereby certify that this correspondence is being deposited with the United
`States Postal Service as First Class Mail,
`in an envelope addressed to:
`Commissioner
`for T demarks, P.O. Box
`1451, Alexandria, Virginia
`
`22313-1451.
`
`UNITED STATES DEPARTMENT OF COMMERCE
`
`PATENT AND TRADEMARK OFFICE
`
`Trademark Law Office: 110
`
`) )
`
`) )
`
`) )
`
`) )
`
`) )
`
`In Re the: Application of:
`
`Applicant:
`
`BrainCells Inc.
`
`Mark:
`
`BRAINCELLS
`
`Serial No.2
`
`78/395,089
`
`Classes:
`
`35 & 42
`
`Filed:
`
`April 1, 2004
`
`) Examining Attorney: Steven Fine
`)
`)
`Mailing Date: June 6, 2005
`_?______‘__?)
`
`Commissioner for Trademarks
`
`P.O. Box. 1451
`
`Alexandria, Virginia 22313-1451
`
`AMENDMENT TO ALLEGE USE UNDER 37 C.F.R. § 2.76
`
`Applicant hereby requests registration of the above-identified trademark in the United
`
`States Patent and Trademark Office on the Principal Register established by the Act of July 5,
`
`1946 (15 U.S.C. § 1051 et seq., as amended). One specimen showing the mark as used in
`
`commerce for each class is submitted with this Amendment.
`
`Applicant
`
`is using the mark in commerce in connection with the following
`
`services:
`
`

`

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`KeeipMedial PR Newswire: BrainCells Inc. Announces $17.7 Million Series A Financing
`
`Page 1 of 1
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`
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`Jul 14 O5
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`My History
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`SAN DIEGO, July 14 —- BrainCells lnc., a privately-held, neuroscience-
`focused, drug discovery and development company targeting novel
`and/or best-in-class therapies for depression, related neuropsychiatric
`disorders and other central nervous system diseases, announced the
`close of its Series A private financing. Technology Partners and seed
`investors Oxford Bioscience Partners, and Bay City Capit

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