From: Ulrich, Gretchen
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`Sent: 7/21/2017 3:47:55 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86300247 - ONCOBIOME - 00449 - Request for
`Reconsideration Denied - Return to TTAB - Message 1 of 18
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`*************************************************
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`Attachment Information:
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`Count: 21
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`Files: oncobiome mirage- full txt_Page_01.jpg, oncobiome mirage- full txt_Page_02.jpg, oncobiome
`mirage- full txt_Page_03.jpg, oncobiome mirage- full txt_Page_04.jpg, oncobiome mirage- full
`txt_Page_05.jpg, oncobiome mirage- full txt_Page_06.jpg, oncobiome mirage- full txt_Page_07.jpg,
`oncobiome mirage- full txt_Page_08.jpg, oncobiome mirage- full txt_Page_09.jpg, oncobiome mirage-
`full txt_Page_10.jpg, oncobiome mirage- full txt_Page_11.jpg, oncobiome mirage- full txt_Page_12.jpg,
`ovarian oncobiome_Page_01.jpg, ovarian oncobiome_Page_02.jpg, ovarian oncobiome_Page_03.jpg,
`ovarian oncobiome_Page_04.jpg, ovarian oncobiome_Page_05.jpg, ovarian oncobiome_Page_06.jpg,
`ovarian oncobiome_Page_07.jpg, ovarian oncobiome_Page_08.jpg, 86300247.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`U.S. APPLICATION SERIAL NO. 86300247
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`MARK: ONCOBIOME
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`CORRESPONDENT ADDRESS:
` HEATHER E BALMAT
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` BALMAT LAW, PLLC
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` 977 SEMINOLE TR., #342
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` CHARLOTTESVILLE, VA 22901
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`APPLICANT: EVELO THERAPEUTICS, INC.
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` 00449
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`CORRESPONDENT E-MAIL ADDRESS:
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` hbalmat@balmatlaw.com
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`
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`*86300247*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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`VIEW YOUR APPLICATION FILE
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`REQUEST FOR RECONSIDERATION DENIED
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`ISSUE/MAILING DATE: 7/21/2017
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`The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
`denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B),
`715.04(a). The following requirement(s) and/or refusal(s) made final in the Office action dated
`December 29, 2016 are maintained and continue to be final: Section 2(e)(1) refusal. See TMEP
`§§715.03(a)(ii)(B), 715.04(a). The following requirement(s) and/or refusal(s) made final in the Office
`action are withdrawn: requirement for a definite Class 5 identification of goods. See TMEP
`§§715.03(a)(ii)(B), 715.04(a).
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`
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`In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a
`new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final
`Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new
`light on the issues. Accordingly, the request is denied.
`
`
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`If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the
`Board will be notified to resume the appeal. See TMEP §715.04(a).
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`
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`If no appeal has been filed and time remains in the six-month response period to the final Office action,
`applicant has the remainder of the response period to (1) comply with and/or overcome any
`outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP
`§715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay
`or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
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`FINAL REFUSAL: SECTION 2(e)(1) MERELY DESCRIPTIVE - MAINTAINED & CONTINUED
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`
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`Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose,
`intended use and subject matter of applicant’s goods and services. Trademark Act Section 2(e)(1), 15
`U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
`
` A
`
` mark is merely descriptive if it describes or immediately conveys knowledge of an ingredient, quality,
`characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP
`§1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015)
`(quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In
`re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D.
`Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). “A mark may be merely descriptive even
`if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl &
`Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress
`Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b).
`Rather, it is enough if a mark describes only one significant function, attribute, or property. In re The
`Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP
`§1209.01(b); see In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
`
`
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`Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services,
`the context in which the mark is being used, and the possible significance the mark would have to the
`average purchaser because of the manner of its use or intended use. See In re The Chamber of
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`

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`Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
`Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
`Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at
`963-64, 82 USPQ2d at 1831.
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`
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`Applicant’s mark is “ONCOBIOME” for the following goods and services:
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`
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`Class 5: Microbial preparations for pharmaceutical, veterinary and medical purposes, namely,
`microbial preparations for use as tumor suppressing agents, immuno-suppressing agents,
`immuno-stimulating agents, and anti-cancer agents; dietary supplements, nutritional
`supplements, nutraceuticals for use as dietary supplements, food supplements, nutritionally
`fortified vegetable-based food, beverages, and nutritional food bars, all of the foregoing
`containing microorganisms for medical, therapeutic, or preventative purposes; therapeutic
`pharmaceuticals containing microorganisms for medical and veterinary use for the treatment
`and prevention of pre-neoplastic lesions, neoplasms, tumors, cancers, and metastases;
`therapeutic pharmaceuticals containing derivatives of microorganisms for medical and
`veterinary use for the treatment and prevention of pre-neoplastic lesions, neoplasms, tumors,
`cancers, and metastases; pharmaceutical, veterinary and medical preparations and
`substances, namely, anti-microbial preparations and substances, anti-bacterial, anti-fungal,
`anti-viral, and anti-protist preparations and substances, all for the treatment of cancer, cancer
`symptoms, cancer-related diseases, and side-effects of cancer therapies; anti-cancer
`preparations and substances; preparations for inhibiting microbiological decomposition in
`food, beverages, animal feed and pharmaceuticals, namely, combination preparations
`containing in majority part antimicrobial preparations and lesser amounts of microbial
`preparations and anti-cancer preparations for use as a preservative; pharmaceutical
`preparations and substances for the treatment of cancer, namely, microbial and anti-microbial
`preparations for veterinary and medical use; anti-cancer preparations for use in treating
`cancer symptoms, cancer-related diseases, and side-effects of cancer therapies;
`pharmaceutical preparations for the treatment of infectious diseases and cancer, namely,
`combination preparations of anti-cancer agents, microbial preparations and anti-microbial
`preparations; diagnostic kits for diagnosing disease, determination of likelihood of disease,
`prognosis of responsiveness to therapy and/or patient prognosis comprised of diagnostic
`reagents and buffers for the detection of microbes, viral, bacterial, fungal, and parasitic or
`non-parasitic protist infections, inflammation, and biomarkers associated with pre-neoplastic
`lesions, neoplasms, tumors, cancers, or metastases; preparations for detecting mutations in
`genes for medical purposes as used in the collection of large-scale genomic, metagenomic,
`proteomic, transcriptomic, epigenetic, and metabolomic medical data and related clinical data
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` Class 9: Scientific, analytical, and statistical computer software for creating and managing
`databases containing genomic, metagenomic, proteomic, transcriptomic, epigenetic, and
`metabolomic data derived from patient clinical care information and medical research data;
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`computer software for analyzing and creating statistical models derived from patient clinical
`care information and medical research data in the nature of genomic, metagenomic,
`proteomic, transcriptomic, epigenetic, and metabolomic data
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`
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` Class 10: Medical diagnostic instruments for screening, assessing, and determining
`appropriate courses of treatment in relation to pre-neoplastic lesions, neoplasms, tumors,
`cancers and metastases
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`
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` Class 42: Electronic data storage services, namely, electronic storage of large-scale genomic,
`metagenomic, proteomic, transcriptomic, epigenetic, and metabolomic data and related
`clinical data for treatment and diagnostic purposes; database, computer-readable program
`and software development services, namely, development of scientific, analytical, and
`statistical software and related databases for use in conjunction with genomic, metagenomic,
`proteomic, transcriptomic, epigenetic, and metabolomic data gathered from patient clinical
`care information and medical research data; scientific, chemical, biochemical and
`microbiological research; scientific research in the field of genetics and genetic engineering of
`microbes; scientific research in the field of genetic and molecular tests, including tests for
`microbial populations in vertebrate samples; research and development of therapeutic
`pharmaceuticals, consumer medical products, diagnostic equipment and prognostic tools
`consisting of genetically engineered microorganisms, combinations of microorganisms, and
`individually selected microorganisms for treatment and prevention of pre-neoplastic lesions,
`neoplasms, tumors, cancers and metastases
`
`
`
`Class 44: Medical clinics; veterinary dentistry; behavioural analysis for medical purposes;
`genetic testing for medical purposes; collection and preservation of human blood for medical
`purposes; medical diagnostic testing for assessing pre-neoplastic lesions, neoplasms, tumors,
`cancers, or metastases
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`
`
`The term comprising the applied-for mark “oncobiome” refers to the “microbiota associated with cancer
`development.” See, https://microbiomejournal.biomedcentral.com/articles/10.1186/s40168-016-0203-
`0; see also, “oncobiome” defined as, the “interplay between the study of the human microbiome and its
`influence on cancer development.” The Microbiome and Cancer: Is the ‘Oncobiome’,
`https://www.biomodulation.com/attachments/article/134/PIIS2405803315000060.pdf. As applicant’s
`Class 5 goods are oncobiome medications, they are intended to work with the oncobiome, the applied-
`for mark describes an intended use, purpose, feature and characteristic of these goods. Applicant’s
`software is oncobiome software that is for use in the oncobiome field and will presumably feature
`algorithms that accurately profile microorganisms in metagenomic samples; thus, the applied-for mark
`is descriptive of a feature, characteristic, intended use, purpose and subject matter of applicant’s Class 9
`and Class 42 software goods and services. Applicant’s medical diagnostic instruments will be used to
`screen, biopsy, test and assessing the oncobiome, the applied-for mark is descriptive of a feature,
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`characteristic, intended use and purpose of the Class 10 goods. As applicant’s electronic data storage
`services will store oncobiome data, and applicant’s research services are oncobiome research services,
`“oncobiome” is merely descriptive of a feature, characteristic, intended use and purpose of these Class
`42 services. As applicant’s clinical and testing services are ones that will feature testing and clinical
`services related to the oncobiome, the applied-for mark is merely descriptive of a feature, characteristic,
`purpose and intended use of these Class 44 services.
`
`
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`Additionally, as the previously and currently attached internet evidence demonstrates, “oncobiome” is
`commonly used in a descriptive manner in relation to applicant’s goods and services in that
`“oncobiome” describes an intended use, purpose, feature and characteristic of them. In the article
`“The Microbiome and Cancer: Is the ‘Oncobiome’ Mirage Real?” the authors note that “much of
`oncobiome research is currently focused on colorectal cancer” and that “oncobiome screening could
`potentially be designed to detect not only individual bacterial species associated with cancer but
`also…before…cancer has developed.”
`https://www.biomodulation.com/attachments/article/134/PIIS2405803315000060.pdf. This article also
`provides a schematic entitled “Care of the oncobiome patient” which requires “screening,” “treatment”
`and “surveillance” and a figure entitled “Proposed Oncobiome Studies Necessary to Progress the Field of
`Research.” See Id; see also, https://www.cancer.gov/about-cancer/screening/screening-tests,
`https://www.cancer.gov/about-cancer/screening/screening-tests#other-tests. Thus, the term
`“oncobiome” in this article is used in a descriptive manner- it describes a feature and characteristic of
`medical testing, medical screenings, medical research, and scientific research, as well as the intended
`use and purpose of these services.
`
`
`
`Additionally, it is worth noting that this article has been cited nine times in other scholarly articles, in
`multiple journal blogs and in numerous articles accessible via the internet. See,
`https://www.scopus.com/results/citedbyresults.uri?sort=plf-f&cite=2-s2.0-
`84957795451&src=s&imp=t&sid=282EB2466B5D09CA21FC9DB433B96998.wsnAw8kcdt7IPYLO0V48gA%
`3a30&sot=cite&sdt=a&sl=0&origin=inward&editSaveSearch=&txGid=282EB2466B5D09CA21FC9DB433B
`96998.wsnAw8kcdt7IPYLO0V48gA%3a2; http://www.blogsearchengine.org/search.html?cx=partner-
`pub-9634067433254658%3A5laonibews6&cof=FORID%3A10&ie=ISO-8859-
`1&q=%22the+microbiome+and+cancer+is+the+oncobiome+mirage+real%3F%22&sa.x=48&sa.y=14;
`https://www.google.com/?gws_rd=ssl#q=%22the+microbiome+and+cancer+is+the+oncobiome+mirage
`+real?%22&spf=1500648572897. Thus, this descriptive use of the term “oncobiome” in relation to
`applicant’s services has been widely viewed.
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`
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`Additional recent articles also use “oncobiome” descriptively. In the newly published article entitled
`“The ovarian cancer oncobiome” the authors note that the medical diagnostic element used in the study
`employed “probes.” See,
`http://www.impactjournals.com/oncotarget/index.php?journal=oncotarget&page=article&op=downloa
`d&path%5B%5D=16717&path%5B%5D=53459. Thus, “oncobiome” is descriptive of the intended use
`and purpose of these medical diagnostic elements, as well as a feature and characteristic of them.
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`Despite the recent release of this publication, this article is widely available and accessible via the
`internet. See,
`https://www.google.com/?gws_rd=ssl#q=%22The+ovarian+cancer+oncobiome%22&spf=150065254370
`3. In “The vaginal microbiota, human papillomavirus infection and cervical intraepithelial neoplasia:
`what do we know and where are we going next?” the authors note that “All four studies in patients with
`CIN [54, 55, 56, 57] are observational studies, and with lack of longitudinal data, it is only possible to
`demonstrate association with disease states rather than causality. This has been acknowledged as one
`of the current limitations of ongoing research into the ‘oncobiome’; that is the microbiota associated
`with cancer development.” https://microbiomejournal.biomedcentral.com/articles/10.1186/s40168-
`016-0203-0.
`
`
`
`Oncobiome research employs software. Specifically, oncobiome research is performed using a
`proprietary platform, the applied-for mark is descriptive in relation to software goods and services. See,
`https://news.uchicago.edu/article/2016/04/21/uchicago-evelo-biosciences-develop-microbiome-based-
`cancer-therapy. “Platform” is defined as, “support software for a particular activity.” See,
`http://foldoc.org//platform. Thus, oncobiome describes the intended use, feature, purpose and subject
`matter of applicant’s software goods and services.
`
`
`
`The oncobiome is also the subject matter of lectures, seminars, and PowerPoint presentations, and
`forums within the scientific and medical communities. See, seminar, University of Arizona, “Microbial
`Genomics and Colorectal Cancer: The Birth of the Oncobiome” http://cbc.arizona.edu/events/microbial-
`genomics-and-colorectal-cancer-birth-oncobiome; Surgery Grans Rounds – Dr. Ryan M. Thomas
`Presents ‘Evidence for the Oncobiome: Can the Human Microbiota Regulate Carcinogenesis?’
`https://ufhealth.org/events/surgery-grand-rounds-dr-ryan-m-thomas-presents-evidence-oncobiome-
`can-human-microbiota; “Microbiome and cancer (oncobiome), https://cancercenter-
`facca.sites.medinfo.ufl.edu/files/2016/04/Topic-1-Viruses-Bacteria-and-the-Microbiome-Dr.-Jobin.pdf;
`Microbiome World Congress “Exploring the Cancer Microbiome or ‘Oncobiome’, and Whether it Will
`Offer a New Horizon in Colon Treatment and Diagnosis?”
`http://www.terrapinn.com/conference/microbiome-americas/agenda.stm; “It’s the oncobiome, the
`interplay between the human microbiome and cancer development, which researchers feel may be
`important factor to consider in response to therapy, including immunotherapies and existing anti-
`neoplastic agents.” http://worldmedicalinnovation.org/wp-content/uploads/2016/04/Partners-FORUM-
`2016-BROCHURE-D12-Cancer-160422_0942-FREV1-WEB-X3-SM-SPREADS.pdf.
`
`
`
`The knowledge of the oncobiome and oncobiome research extends beyond the scientific and medical
`communities in to the public sphere. The term “oncobiome” is used descriptively in multiple news
`outlets, thus ensuring its perception by consumers as a descriptive term. A University of Chicago press
`release entitled “UChicago, Evelo Biosciences to develop microbiome-based cancer therapy” discusses
`its partnership with the applicant and contains the following quote: “Immunotherapy is a rapidly
`growing field with huge potential, and the University is at the forefront of oncobiome research.” While
`the quotation mentions applicant, this usage of “oncobiome” indicates that it is not only a field of
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`research, but that it is used to descriptively in relation to cancer therapy and therapies. See,
`https://www.cancer.org/treatment/treatments-and-side-effects/treatment-types/chemotherapy/oral-
`chemotherapy.html, https://www.cancer.gov/about-cancer/treatment/types. This news was also
`covered by Biotechnology Calendar in its “Science Market Update” section, and contains the same
`quote. See, http://info.biotech-calendar.com/uchicago-and-evelo-biosciences-partner-to-develop-new-
`cancer-immunotherapy. In “Big deal: a first real shot at the oncobiome” the author notes that “a
`bacterial pill based on bioinformatics that treats severe and deadly disease by reestablishing bacterial
`composition of the gut” and that “The oncobiome seems to suppress the immune response to the
`tumor effectively shielding it from harm and supporting it with nutrients.”
`https://medium.com/@deal_by_deal/big-deal-a-first-real-shot-at-the-oncobiome-
`67b3dff1389d#.y46o0og84. The press release entitled “COSMOSID ANNOUNCES ONCOBIOME
`PARTNERSHIP WITH THE WHITE HOUSE CANCER MOONSHOT INITIATIVE” indicates that its
`bioinformatics platform (algorithms that accurately profile microorganisms in metagenomic samples)
`will be used for cancer microbiome, or oncobiome, research studies. See,
`http://www.cosmosid.com/blog-cosmosid/2016/10/17/cosmosid-announces-oncobiome-partnership-
`with-the-white-house-cancer-moonshot-initiative. This press release was republished by PR Newswire
`and Bioportfolio. See, http://www.prnewswire.com/news-releases/cosmosid-announces-oncobiome-
`partnership-with-the-white-house-cancer-moonshot-initiative-300345759.html,
`http://www.bioportfolio.com/news/article/2874663/CosmosID-Announces-Oncobiome-Partnership-
`with-the-White-House-Cancer-Moonshot-Initiative.html. Cathy Biase, a nutrition consultant provides
`the following article on her website: “Oncobiome: The New Frontier of Cancer Research?” See,
`http://www.cathybiase.com/oncobiome-the-new-frontier-of-cancer-
`research/?doing_wp_cron=1500642432.5371088981628417968750. The Ride for Roswell, a cancer
`charity race sponsored by Roswell Park Cancer Institute, had participants under Team “OncoBiome –
`Microbes Against Cancer”
`http://give.roswellpark.org/site/TR/Events/General?fr_id=1060&pg=team&team_id=1708;
`https://rideforroswell.org/about/; see also, “Now, to be clear, the research is still emerging and many
`questions remain to be answered, but the potential breakthroughs of research into the relationship
`between cancer and the microbiome, or “oncobiome” [12], may finally help us end our quest for the
`Holy Grail.” https://rebelhealthtribe.com/microbiome-holy-grail/; “Not to get too much out in left
`field........the (that) field of the microbiome & cancer (new term is "oncobiome")studies are in their
`relative infancy.” https://www.inspire.com/fighterm/journal/why-chemotherapy-works-for-some-but-
`not-for-all-alternative-treatments/?page=9&s_item=post&s_type=ahpfr-; LinkedIn, “Or is it possible
`that a merging of two completely different disease-fighting strategies such as immuno-oncology and
`microbiome will lead to a new one? Perhaps an ‘Oncobiome’ is just around the corner. I’m excited about
`such innovative possibilities.” https://www.linkedin.com/pulse/innovation-through-adversity-stepping-
`towards-solutions-singh; Facebook, https://www.facebook.com/cosmosid/; Twitter,
`https://twitter.com/hashtag/oncobiome?lang=en.
`
`
`
`Please note that the two major reasons for not protecting descriptive marks are (1) to prevent the
`owner of a descriptive mark from inhibiting competition in the marketplace and (2) to avoid the
`possibility of costly infringement suits brought by the trademark or service mark owner. In re Abcor Dev.
`Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors
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`should be free to use descriptive language when describing their own goods and/or services to the
`public in advertising and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB
`2001). The term “oncobiome” is already used widely and descriptively.
`
`
`
`These noted uses of “oncobiome” not only demonstrate that oncobiome describes the intended use, the
`purpose, a feature and characteristic of applicant’s goods and services, but that the widespread
`dissemination and usage of oncobiome in a descriptive manner will cause consumers to view the
`applied-for mark merely as a descriptive term. Therefore, registration is denied for the applied-for
`mark. The final refusal is maintained and continued.
`
`
`
`Applicant’s Arguments Against the Refusal
`
`
`
`Applicant provides several arguments against the refusal. For the reasons noted, below, these
`arguments are unpersuasive.
`
`
`
`The applicant argues that the applied-for mark ONCOBIOME “is suggestive, not descriptive, as applied to
`the applicant's goods and services” and that “one would need to reflect a bit on the mark in order to
`have an idea of the goods and services offered under it.” Applicant’s argument is unpersuasive.
`Determining the descriptiveness of a mark is done in relation to an applicant’s goods and services, the
`context in which the mark is being used, and the possible significance the mark would have to the
`average purchaser because of the manner of its use or intended use. See In re The Chamber of
`Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer
`Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b).
`“Whether consumers could guess what the product [or service] is from consideration of the mark alone
`is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). The question is not whether
`someone presented only with the mark could guess what the goods and/or services are, but “whether
`someone who knows what the goods and[/or] services are will understand the mark to convey
`information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254,
`103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB
`2002)); In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012). Thus, descriptiveness
`of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82
`USPQ2d at 1831. In this case, someone who knows what the goods and services are will understand the
`mark to convey information about them, namely that their purpose and intended use is with the
`oncobiome, that the oncobiome is a feature and characteristic of them, and that applicant’s research is
`oncobiome research. Please note that “[a] mark may be merely descriptive even if it does not describe
`the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d
`1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240
`F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if a mark
`describes only one significant function, attribute, or property. In re The Chamber of Commerce of the
`
`

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`U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); TMEP §1209.01(b); see In re
`Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371.
`
`
`
`Applicant argues that because other marks that contain the suffix “BIOME” – CARDIOBIOME, PROBIOME
`and µBIOME- its mark should also be able to register. Applicant’s argument is unpersuasive. The fact
`that third-party registrations exist for marks allegedly similar to applicant’s mark is not conclusive on the
`issue of descriptiveness. See In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977); TMEP
`§1209.03(a). An applied-for mark that is merely descriptive does not become registrable simply because
`other seemingly similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ at
`519; TMEP §1209.03(a). It is well settled that each case must be decided on its own facts and the
`Trademark Trial and Appeal Board is not bound by prior decisions involving different records. See In re
`Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111
`USPQ2d 1330, 1336 (TTAB 2014); TMEP §1209.03(a). The question of whether a mark is merely
`descriptive is determined based on the evidence of record at the time each registration is sought. In re
`theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011); TMEP §1209.03(a); see In re Nett
`Designs, Inc., 236 F.3d at 1342, 57 USPQ2d at 1566.
`
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`/N. Gretchen Ulrich/
`
`Trademark Examining Attorney
`
`Law Office 113
`
`U.S. Patent & Trademark Office
`
`phone: (571) 272-1951
`
`gretchen.ulrich@uspto.gov
`
`
`
`

`

`Trends in Cancer
`
`CePress
`
`The Microbiome and Cancer:
`Is the 'Oncebiome' Mirage
`Real?
`
`Ryan M. Themas‘“ and Christian Jebin3'*
`
`Investigations focused on the interplay between the human microbtorne and
`cancer development, herein termed the ‘oncobiome'. have been growing at a
`rapid rate. However. these studies to date have primarily demonstrated asso—
`ciative relationships rather than causative ones. We pose the question of
`whether this emerging field of research is a ‘mirage’ without a clear picture.
`or truly represents a paradigm shift tor cancer research. We propose the
`necessary steps needed to answer crucial questions and push the field forward
`to bring the mirage into a tangible reality.
`
`The Oncobiome Mirage Appears
`Of all human maladies. nothing strkes fear into our hearts. minds. and souls as cancer. A
`diagnosis ()I turmensinn, diabetes, or my other litany (rt chronic; diseases that can he nonlmlled
`with medication will produce avery differontrespense than that of cancer. Researchers therefore
`press forward. attempting to uncover the smoking gun to caqelain tumor susceptibility, initiation,
`and pregrcssicn. This search has been tried countless t'rries with similar. ottai discouraging,
`results. ‘iNl'tat then makes investigators thir‘k that work involving the host microbiota and cancer
`will be any different, or is it all only a mirage?
`
`The microbiota encompass a wide variety of mie'ccrgan‘tsms (bacteria. viruses. protozoa. fungi,
`and arches) and this eclectic ecosystem shares the body space of every individual, creating a
`commensal, symbiotic. and pathebiont relationship that has garnered inrreasing attention
`regarding its role in cartritogenesks[seeGkrssary}11—5]. Olall the body surface. the gastrc'rtlestinal
`tract harbors the greatest number and diversity of micrebrs in the human body. with bacteria
`representing the bukofthe microbiotat‘t 0' 2 bacteria/gm faces) [6]. Atthougi the oncogenic role of
`viruses has been recognized [13}. bacteria represent the chief merrth of the micrcb iota and will be
`the focus of this (itemtrssit tt't. Perhaps the most recxrgrtixed link hedweert bacteria and (H106! is the
`case of! l'r-h‘r'cetmcterpykfiand rtort—t:ardiagastritzcartinema [?.E!J_This hatzleritm has heart shr turn
`to secrete semat viru lence factors such as Gag/t {cytotoxin—asseeated gene A). VIA {vacuolating
`cytotoxin A). urease. aid Mott (neitrephil—activating protein A) that rcsult in oxidative stress.
`ct'trenitc inflammation. and host DNA damage that can lead to carcincrna [9-] I]. Ccnsideri rig that
`H. {Marinas been designated a type | canc‘rtcgert hyttre Worldl lealth Organization [1 9,1 3]. several
`clinical trials have been performed to modulatethe risk of gastric cancer by eradicating the bacteria
`in infmled individufits [1 4.1 5]. A recent meta-analysis of six randomized controlled trials damm-
`stratss a slight risk reduction of gastric cancer with H. mien elim'r'taticn [16}. Despite this link
`between a pathogenic organism and (arcinoganesis, there still has been little direct evidence that
`the symbiotic microbiota modulates carcinogenesis in humans. The relafienship between cancer
`and [lie ht rsl mimrbiota. It) be termed the 'mcebiome‘, could he a [TI trage: we have an idea of art
`image in the distance bill are uncertain of its true reality nrsignirmnce. What is known is thatmcre
`people are tak'rtg notice of this mirage — but is it real?
`
`24
`
`Trends in manner, 39919me mi 5, \rnr. 1. m1
`at ants ream Ltid. Al rights reserved.
`
`mah’mfidamfl n.1015’ttrecrrrt.?015.n7.t‘rnfi
`
`Trends
`The 'mcobioms' isths expanding field
`of research investigating the role of the
`nfiorcbiota and associated microbiome
`on hurmn tanner: dovdopment.
`
`such as
`writs particular basis-is.
`Esoherr'o‘tra mt. Sacrectr'des.
`and
`Fusebacrmtm. as wet as associated
`toodnsr’genotcutins. have been asso-
`stated with men cancer development
`in mouse are human slums. there is
`no stretches that
`these micreces cr
`metabottes directly cm cancer.
`
`the OI‘IGObiOfl‘Ia field is WIN I'I‘I‘Iitad
`by entries of microbiota assodafim
`with cancer. rather than with wusaticn
`of cancer.
`
`Should the 'rtttuence of the onccbiome
`be umttrmerd. it can be envisaged that
`the seeming, treatment, and surveitd
`lame ct cancer patients will one day
`incorporate this research.
`
`1Derarrrirnent of Surgery. North Florida!
`South Gemgia Veterans Health
`System, Gainesvitte, FL 32506, usA
`9Deprrrtrnent 01 Surgery. Universin of
`Florida, Gaincsvillc, FL 32611, USA
`3Depeirtr-hsnt or Medicire and
`Departtrtenl of Infectious Diseases and
`Pathology, Uniwu'siry of Florida,
`Gainesvile, FL. 32611, USA
`
`‘Currespondenee:
`FlynnTMm nsflsurgerynflem
`[FLM Thomas] and
`Cl'l'istiandobinflmedicine.also“
`EC. Jebir].
`
`®W
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`

`

`Trends in Cancer
`
`CePress
`
`Glossary
`cunmmsat describes the
`ratationship between two organisms
`in which one bet-reins without
`attracting. or itself being beneficial.