Law Lore & Practice, Dec 2013 Page 1

The US Court of Appeals for the Federal

Circuit recently affirmed a decision of the

US Trademark Trial and Appeal Board

(TTAB) holding that PRASTERONE.ORG

and THE PRASTERONE COMPANY

were generic for the following services:

"providing a website featuring scientific

and clinical research information about

investigation medical foods, dietary

supplements or drugs, namely, prasterone

or derivatives or analogs thereof." The

applicant had filed applications to register

these marks on the Supplemental

descriptive marks that do not qualify for

registration on the Principal Register, but

otherwise are capable of distinguishing an

applicant's goods or services, ordinarily

through sufficient use. The Supplemental

advantages as the Principal Register, but it

does allow a mark to be registered. If,

however, a mark is found to be generic

and thus incapable of distinguishing an

applicant's goods or services regardless of

the amount of use, then it will be refused

registration on both the Principal and the

Supplemental Registers. In this case, the

Appeals Court agreed with the TTAB that

these marks were generic for the

identified services, concluding that the

addition of generic terms such as .ORG

and COMPANY did not alter the generic

meaning of the marks. Thus, the Court

affirmed the decision to refuse

registration of these marks on the

Supplemental Register.
In another recent decision, the TTAB

found that the mark ACTRX for dietary

and nutritional supplements, which the

applicant stated will be sold only as

prescription medicines, was confusingly

similar to the prior mark ACT (and

related marks) for an anti-cavity mouth

rinse sold over-the-counter. In reaching

this conclusion, the TTAB found that the

RX element of the applicant's mark would

be understood as referring to "a medical

prescription" and was therefore a weak

element of the mark. The TTAB further

noted that even if non-prescription

supplements were sold under the ACTRX

mark, the RX element would have a

suggestive connotation "indicating that the

supplements are of a greater strength or

efficacy, similar to that of a prescription

product." The TTAB further concluded

that even though the applicant's goods

would be obtained at a prescription

counter and the opposer's goods are sold

over-the-counter, the same class of

consumers, namely, the general public,

would encounter both goods. Therefore,

this difference did not eliminate the

likelihood of confusion.

During a recent BBC Radio 4 edition of

Law in Action, the former Court of

Appeal Judge, The Right Hon. Professor

Sir Robin Jacob declared that copyright

was a 19th century "tax on knowledge".

He claimed that unlike Patents whose

limited lifespan stimulates innovation, this

other arm of intellectual property does

nothing to encourage people to create or

to better perform works of art. His interview was a response to

the 2011 European Union Directive aligning performing rights

with copyright. A challenging point of view which would

certainly have found favour with Maurice Ravel, the French

composer.

Ravel is the subject of a new play, based on the book of the last

ten years of his life which is currently receiving excellent reviews

here in Paris. Ravel is quoted as having been very disparaging to

Paul Wittgenstein the Austrian one armed pianist, following a

highly modified interpretation of the composer's piano concerto

for left hand, commissioned by the pianist himself. The Austrian's

defence (that the concerto needed improving) may possibly have

found favour with performing arts' associations who

understandably defend an entirely favourable view of the

provisions contained within the Directive. Their support is

particularly appreciated by session musicians who often find

themselves facing delayed percentage payments from record

companies rather than down payments for hours played.

Neither copyright nor any other intellectual property right was

on my mind when, as a teenager, I like millions of others of my

generation around the world, stayed up all night to watch Live

Aid and a few years later in June 1988 the Nelson Mandela 70th

Birthday Tribute. Performing artists at that stage in my political

awakening were the vehicles for a strong message and we all

believed at the time that our viewing had provided the much

needed popular surge of public opinion which led to Mandela's

release some twenty months later.

Listening this week to the many moving tributes, commentaries

and memorial services about that extraordinary man, I am

reminded that both those global events took place in a world

before social media. Turning on the radio and watching the

television were the only means available to take part in such

momentous occasions. Not for us Twitter or Facebook but

rather the reality of shared emotions the next morning at school.

Whichever artistic medium you chose, whether it be virtual or

good old fashioned Christmas cards sent by snail mail, may you

all be able to celebrate the holiday season in style!

Vanessa

Pharmaceutical
Trade Marks Group

Dec 2013

Editorial: A song for all seasons

US Law Update

James Thomas, Thomas Trademarks and Copyright Legal Services, USA