Avax Int’l. IP Holdings, Inc.

THIS DISPOSITION IS
2/22/02 NOT CITABLE AS
PRECEDENT OF THE
TTAB
Paper No. 15
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Avax International IP Holdings, Inc.1
________

Serial No. 75/272,715

_______

Amy J. Benjamin of Darby & Darby, P.C. for Avax
International IP Holdings, Inc.

Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Bucher and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 10, 1997, Avax International IP Holdings,

Inc. (applicant), through its predecessor, filed a

trademark application to register the mark AC VACCINE

TECHNOLOGY (in typed form) on the Principal Register for

1
Avax Technologies, Inc. assigned the application to Avax
International IP Holdings, Inc. in a document recorded at
Reel/Frame 2119/0270.
Ser No. 75/272,715

goods ultimately identified as “vaccine for the treatment

of cancer” in International Class 5.2

The Examining Attorney ultimately refused to register

the mark on the ground that the mark, when applied to the

goods, is deceptively misdescriptive under Section 2(e)(1)

of the Trademark Act. 15 U.S.C. § 1052(e)(1). After the

Examining Attorney made the refusal final, applicant filed

a notice of appeal. Both applicant and the Examining

Attorney have filed briefs, but no oral hearing was

requested.

We affirm the Examining Attorney’s refusal to

register.

The Examining Attorney’s position is that the mark AC

VACCINE TECHNOLOGY is deceptively misdescriptive when used

in connection with a vaccine for the treatment of cancer.

The Examining Attorney relies on medical and other

dictionary definitions of the terms “AC” “vaccine” and

“technology.” The medical dictionary defined “AC” as “a

cancer chemotherapy regimen consisting of Adriamycin

(doxorubicin) and cyclophosphamide.” Dorland’s Illustrated

Medical Dictionary (1992). From the Internet, the

Examining Attorney included information that showed that

2
The application is based on an allegation of a bona fide
intention to use the mark in commerce.

2
Ser No. 75/272,715

the term “AC” is used to describe a treatment for cancer

patients.

A Randomized Trial Comparing Preoperative Doxorubicin
(Adriamycin) Cyclophosphamide (AC) to Preoperative AC
Followed by Preoperative Docataxel (Taxotere) and to
Preoperative AC Followed by Postoperative Docetaxel in
Patients with Operable Carcinoma of the Breast.
Kansas City Clinical Oncology Program.

“AC”
Adriamycin® (Doxorubicin)
Cyclophosphamide (Cytoxan®)
How do these drugs work?
These are “chemotherapy” drugs that prevent the
division of DNA and growth of cancer cells….
Medical Oncology.

The Examining Attorney also submitted applicant’s

press release to show that applicant uses the term “vaccine

technology” descriptively.

Avax … is a company with a commercially available
cancer vaccine in Australia, several products in
clinical and preclinical development, and additional
commercialization opportunities in Europe for both its
cancer vaccine technology and its technology for joint
repair.
Avax Press Release dated October 3, 2000.

In addition, the Examining Attorney included evidence

that showed that the term “vaccine” is used descriptively

in relationship to cancer treatment, i.e., a cancer

vaccine. The Examining Attorney concludes:

Accordingly, the mark AC VACCINE TECHNOLOGY is
deceptively misdescriptive of applicant’s “vaccine for
the treatment of cancer” because it conveys the false,
though plausible, idea that applicant’s vaccine is
intended to be used in conjunction with the
chemotherapeutic agent AC, which is recognized in the

3
Ser No. 75/272,715

field of medicine as a standard abbreviation of the
chemotherapeutic agent Adriamycin cyclophosphamide.
In the alternative, however, if applicant’s goods are
in fact intended to be used in conjunction with
Adriamycin cyclophosphamide, or AC, the mark AC
VACCINE TECHNOLOGY must then be deemed to be merely
descriptive of applicant’s goods.
Examining Attorney’s Br. at 9.

In response to the refusal to register, applicant

argues that AC has many meanings including at least eleven

in the medical community. Applicant’s Br. at 7. It

submitted three declarations from people with Doctorates of

Pharmacy. The first declarant stated:

Although I am familiar with adriamycin,
cyclophosphamide as a chemical used during
chemotherapy to treat cancer patients, it is my
opinion that AC is not a specifically defined, unique
abbreviation in the industry for adriamycin,
cyclophosphamide.
McEvoy declaration, p. 2.

The second declarant “was surprised to learn that AC

is an abbreviation [for] “adriamycin, cyclophosphamide” and

also stated that “AC is not a commonly known abbreviation

in the industry for “adriamycin, cyclophosphamide.” Dahl

declaration, p. 2.

The third declarant disagreed with Dahl and stated

that the “abbreviation AC, when used in the oncology field

calls to my mind the chemotherapy drug adriamycin,

cyclophosphamide, which is used to treat breast cancer.”

Valley declaration, p. 2. Valley further admitted that

4
Ser No. 75/272,715

“AC is commonly known as an abbreviation for adriamycin,

cyclophosphamide” but she stated that it has no relation to

vaccines. Id.

Applicant argues that “[p]ersons with a medical

background who would encounter Avax’s AC VACCINE TECHNOLOGY

mark would not believe that a ‘vaccine,’ i.e., preparation

made from organisms for increasing immunity to a particular

disease, would contain a chemical compound consisting of an

antibiotic and an alkylating agent with antitumor

activity.” Applicant’s Br. at 12.

The primary issue in this case is whether the term AC

VACCINE TECHNOLOGY is deceptively misdescriptive of

applicant’s goods. In cases involving the issue of

misdescriptiveness, we apply the following test:

The test for deceptive misdescriptiveness has two
parts. First we must determine if the matter sought
to be registered misdescribes the goods. If so, then
we must ask if it is also deceptive, that is, if
anyone is likely to believe the misrepresentation.
Gold Seal Co. v. Weeks, 129 F.Supp. 928 (D.D.C. 1955),
aff’d sub nom. S.C. Johnson & Son v. Gold Seal Co.,
230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied,
352 U.S. 829 (1956). A third question, used to
distinguish between marks that are deceptive under
Section 2(a) and marks that are deceptively
misdescriptive under Section 2(e)(1), is whether the
misrepresentation would materially affect the decision
to purchase the goods. Cf. In re House of Windsor,
Inc., 221 USPQ 53 (TTAB Dec. 14, 1983).

In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB 1984).

5
Ser No. 75/272,715

We are constrained to consider the issue of

misdescriptiveness based on the goods as described in the

application. Octocom Systems Inc. v. Houston Computers

Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.

Cir. 1990) (“The authority is legion that the question of

registrability of an applicant’s mark must be decided on

the basis of the identification of goods set forth in the

application regardless of what the record may reveal as to

the particular nature of an applicant’s goods, the

particular channels of trade or the class of purchasers to

which sales of the goods are directed”); In re Vehicle

Identification Network, Inc., 32 USPQ2d 1542 (TTAB 1994)

(Descriptiveness of mark in an intent-to-use application

determined by services identified in application).

Viewed under these legal standards, the evidence

supports the Examining Attorney’s position that applicant’s

mark misdescribes a vaccine for the treatment of cancer

that is not used in conjunction with Adriamycin,

cyclophosphamide. First, we find that the term “AC” is a

recognized abbreviation for a cancer chemotherapy regimen

consisting of Adriamycin and cyclophosphamide. The

Dorland’s medical dictionary and the Internet articles

describing the use of AC in the treatment of cancer

adequately support the Examining Attorney’s position.

6
Ser No. 75/272,715

Applicant’s Valley declaration lends additional support to

this finding. As previously noted, Valley agrees that “AC,

when used in the oncology field, calls to my mind the

chemotherapy drug adriamycin, cyclophosphamide, which is

used to treat breast cancer.” Valley declaration, p. 2.

The declaration goes on to acknowledge that “AC is commonly

known in the industry as an abbreviation for adriamycin

cyclophosphamide.” Id. Applicant further acknowledges

that its “vaccine does not contain or ‘consist of’

Adriamycin or cyclophosphamide” although it admits that

patients “may be pre-treated with cyclophosphamide.”

Response dated May 11, 1998 at 2 and n.1. Therefore, the

term AC would be misdescriptive of a chemotherapy treatment

for cancer that did not utilize Adriamycin and

cyclophosphamide.

Second, we find that the addition of “vaccine

technology” does not overcome the deceptively

misdescriptive nature of the mark. Applicant’s

identification of goods uses the term “vaccine” as the name

of the goods. Its own press release dated October 3, 2000

(p.1) reports that applicant “has a commercially available

cancer vaccine in Australia.” The term “technology,”

defined as “a technical method of achieving a practical

purpose” (First Office Action, p. 2), has descriptive

7
Ser No. 75/272,715

significance in the medical and oncology areas. We are

aware that “’technology’ is a very broad term which

includes many categories of goods.” In re Hutchinson

Technology Inc., 852 F.2d 552, 7 USPQ2d 1490, 1493 (Fed.

Cir. 1988). Unlike in the Hutchinson Technology case, the

record here supports the finding that the term “technology”

is descriptive when applied to vaccines. Again, we look at

applicant’s press release that refers to “additional

commercialization opportunities in Europe for both its

cancer vaccine technology and its technology for joint

repair.” Press release dated October 3, 2000, p. 1. Its

president refers to its “TK suicide gene technology.” Id.

In addition, the Examining Attorney points out that the

term “technology” has been disclaimed in several

registrations that were made of record (Registration Nos.

2,381,827; 1,975,197; and 1,819,655). Finally, we note

that applicant’s declarant McEvoy uses the word in a

descriptive sense in his declaration. McEvoy declaration,

p. 2 (“[T]he drugs adriamycin and cyclophosphamide have no

relation to vaccine technology”).

Next, we find that the record demonstrates that cancer

vaccines and chemotherapy are used together in fighting

cancer. “Cancer Vaccine Trial Expanded with Sarcoma Study

… O-Vax is intended to prevent the recurrence of ovarian

8
Ser No. 75/272,715

cancer in women after surgery or chemotherapy.” Medical

Industry Today, October 18, 2000. “Breast Cancer Vaccine

Gets on Fast Track – The designation applies to the

investigation of Theratope vaccine as an adjunct to first-

line chemotherapy for its effect on delaying progression of

metastic breast cancer and overall survival.” Medical

Industry Today, May 9, 2000. “Aphton’s vaccines would be

an addition to surgery and chemotherapy, not a

replacement.” Miami Herald, April 24, 2000. “Combinations

of chemotherapy and new experimental cancer vaccines or new

drugs such as alpha-interferon are giving more options to

the most advanced melanoma patients.” Hartford Courant,

April 9, 2000. “The strategy is to team a vaccine with

existing treatments such as chemotherapy and radiation to

produce longer remissions, or perhaps even cures.” Omaha

World-Herald, April 17, 2000. “Girl In Battle with

Cancer…When she arrives in Memphis, her treatment will

involve heavy chemotherapy to prepare her body for the

vaccine.” Virginian-Pilot, December 19, 1999. The

evidence supports the argument that cancer vaccines and

chemotherapy are complimentary treatments that are used

together in the battle against cancer.

Finally, we find that cyclophosphamide, one of the two

drugs that make up AC, is used with cancer vaccines.

9
Ser No. 75/272,715

“Following the cyclophosphamide, vaccine injections mixed

with the adjuvant Baccillus Calmette-Guerin (BCG) commence

on a weekly basis.” O-Vax™ Clinical Trial. “Patients

[with melanoma] will also receive one dose of

cyclophosphamide 3 days before the first vaccine.” M-Vax™

Clinical Trial. Applicant also admits that patients may be

pre-treated with cyclophosphamide before the administration

of applicant’s preparation. Response dated May 11, 1998,

p. 2, n.1.

The next question is whether the mark AC VACCINE

TECHNOLOGY in its entirety is deceptively misdescriptive

for vaccines for the treatment of cancer. We have already

found that AC is a common abbreviation for a cancer

chemotherapy regimen involving Adriamycin and

cyclophosphamide. Cancer vaccines, also referred to as

vaccine technology, exist and they are used in conjunction

with traditional cancer treatments such as chemotherapy.

Finally, we have found that cyclophosphamide specifically

is used together with cancer vaccines. Potential

purchasers, therefore, are likely to believe that

applicant’s vaccine for the treatment of cancer is designed

to be used in conjunction with the known cancer

chemotherapy regimen involving AC. Because applicant’s

goods will not contain or are not intended to be used with

10
Ser No. 75/272,715

Adriamycin, we find that the mark deceptively misdescribes

the goods.

We note that applicant’s pharmacist declarants

conclude that AC is not related to vaccines or vaccine

technology. However, the declarations are undercut by the

fact that the declarants cannot agree on whether AC is a

recognized abbreviation in the industry. Also, McEvoy (pp.

2-3) states that persons encountering the term AC VACCINE

TECHNOLOGY would not view the term as referring to

adriamycin, cyclophosphamide because of the

“[i]napplicability of the chemotherapy drugs adriamycin and

cyclophosphamide to vaccines. However, the record clearly

shows a direct connection between cyclophosphamide and

vaccines that the declarant does not acknowledge or

explain. Similarly, the Valley declaration (p. 2) states

that “the chemotherapy drug adriamycin, cyclophosphamide

has no relation to vaccines.” Inasmuch as chemotherapy and

cancer vaccines are often used together and

cyclophosphamide is specifically used with cancer vaccines,

we do not find these declarations convincing that there is

a lack of a connection between AC and vaccines.

In conclusion, we find that the term AC VACCINE

TECHNOLOGY misdescribes the goods. The term AC would be

recognized as a drug used to treat cancer in a chemotherapy

11
Ser No. 75/272,715

regimen. Chemotherapy and vaccines are used together to

fight cancer and cyclophosphamide is used with cancer

vaccines. “Vaccine” and “technology” are terms used at

least descriptively in reference to vaccines. Since

applicant’s product is apparently not used in conjunction

with adriamycin, the mark AC VACCINE TECHNOLOGY

misdescribes the vaccine. We also find that people are

likely to believe the misrepresentation. As a recognized

drug used to treat cancer patients, AC would be expected to

be used in conjunction with the treatment of cancer with a

vaccine.3

Decision: The Examining Attorney’s refusal to

register the mark AC VACCINE TECHNOLOGY on the ground that

it is deceptively misdescriptive of applicant’s vaccine for

the treatment of cancer is affirmed.

3
The Examining Attorney also alternatively refused to register
the mark on the ground that applicant’s mark is merely
descriptive. Because applicant maintains that the goods do not
contain Adriamycin and cyclophosphamide and that patients may be
pre-treated with cyclophosphamide only, the question is whether
the mark is deceptively misdescriptive. Therefore, we will not
further address the merely descriptive refusal other than to note
that if applicant’s goods were to be used in conjunction with
Adriamycin and cyclophosphamide, applicant’s mark would be merely
descriptive for a vaccine for the treatment of cancer used in
conjunction with a cancer therapy regimen utilizing Adriamycin
and cyclophosphamide.

12