The U.S. Trademark Trial and Appeal
Board (TTAB) recently addressed the
argument that marks of prescription
pharmaceuticals are less likely to be
confused because they are dispensed by
pharmacists. Citing previous cases of US
federal courts, the TTAB noted that
courts have taken note of the fact that
prescription products are increasingly
marketed directly to potential patients.
Therefore, although the TTAB
acknowledged that such goods may be
distributed in an "environment in which
an above-normal degree of care will
presumably be exercised," it would not
negate likelihood of confusion. Mylan, Inc.
v Beaufort County Allergy, 2013 TTAB
LEXIS 315 (19 June 2013) (non-
precedential).
Another recent decision of the TTAB
demonstrates that the description of the
goods can be critical. The applicant had
filed applications to register DX
BIOSCIENCES and DX BIOSOLVE
respectively for "chemical preparations
for medical and veterinary purposes for
solubilizing tissue for cosmetic purposes."
The Examining Attorney had rejected
both applications based in part on the
assertion that "DX" was merely
descriptive, which the Examining Attorney
found merely referred to "diagnosis," a
step in which was solubilizing tissue.
Appealing this refusal, the applicant argued
that although DX stood for "diagnosis"
and although it was in the business of
diagnosis-related products, the goods in
these two applications were expressly
limited to solubilizing tissue "for cosmetic
purposes" and not for diagnosis purposes.
The TTAB reluctantly agreed, finding that
it could only reach a decision based on
the language of the description of goods in
the applications. In re Dx Biosciences,
Inc., 2013 TTAB LEXIS 289 (6 June 2013)
(non-precedential).
Furthermore, a trio of TTAB decisions
involving pharmaceutical goods
demonstrates that an applicant cannot
avoid its own marketing hype. In each
decision, the TTAB overcame the
applicant's assertions that its mark was
not merely descriptive by referring to the
applicant's own statements on its website
and in its marketing materials. In re
Caldera Pharmaceuticals, Inc., 2013 TTAB
LEXIS 225 (3 May 2013) (finding
applicant's own marketing materials
demonstrated that the term
"MOLECULAR X-RAY FLUORESCENCE"
retained its descriptive qualities for the
product) (non-precedential); In re Taro
Pharmaceuticals U.S.A., Inc., 2013 TTAB
LEXIS 263 (13 May 2013) (finding that
applicant's own packaging emphasized a
"spill resistant" quality and thus
"NONSPIL" was merely descriptive)
(non-precedential); In re Bio-Rad QL, Inc.,
2013 TTAB LEXIS 265 (17 May 2013)
(finding applicant's own website supported
the conclusion that the terms "DROPLET
DIGITAL" and "DROPLET DIGITAL
PCR" were merely descriptive).
Finally, the US Patent and Trademark
Office (USPTO) issued for comment a
new draft Examination Guide on gTLDs.
In light of ICANN's introduction of new
gTLDs, which may include marks capable
of source identification, the USPTO noted
that some of the premises of its previous
Guide may no longer apply. More
information can be found at
http://www.uspto.gov/trademarks/notices/I
deaScale_gTLD.jsp politicians.
For those of us in northern Europe who
enjoyed the hottest summer for a
decade, returning to school was
accompanied by a rapid drop in
temperature. Jumpers, even raincoats
were dug out of the chest of drawers in
a panic, sandals packed away and a
general air of "well, that's that then" has
befallen parents and children alike.
With September come blackberry and apple pie, scrumping for
apples and hazel nuts, jam and chutney making and the occasional
sharp fresh mornings which serve to heighten our senses and
make us look out for leaves on the turn. For children, this
month also rhymes with bags laden with homework, an
unwelcome return to routine and for secondary students English
literature lessons where John Keats' romantic poetry features
heavily. The mere mention of "season of mists and mellow
fruitfulness" catapults me back more years than I care to count!
European mobility week, now in its 12th consecutive year, also
takes place this month and aims to remind us that there can and
are alternative ways to get around. Several initiatives including
car pooling and alterative cycle routes underscore this year's
theme "clean air, it's your move" and challenge our dependence
on the motor car. This is particularly timely as most of us return
to the never ending race to deliver our children to their after
school activities, with scant thought for the impact on their
future planet.
Challenging our perceptions and broadening our horizons, two
themes dear to PTMG as I'm sure those of you who are enrolled
to attend the 87th conference in Vienna will soon find out.
I look forward to meeting you there.
Vanessa
TM
TM
TM
TM
TM
TM
Pharmaceutical
Trade Marks Group
Pharmaceutical
Trade Marks Group
Sept 2013
Editorial: "To Autumn"
US Law Update
James Thomas, Thomas Trademarks and Copyright Legal Services, USA