Bespak PLC

Trademark Trial and Appeal Board

Jan 11, 2005

No. 76430621 (T.T.A.B. Jan. 11, 2005)

Mailed: January 11, 2005
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bespak PLC
________
Serial No. 76430621
_______
Adesh Bhargava and Donald N. Huff of Dykema Gossett PLLC for
Bespak PLC.
Brian D. Brown, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Hohein, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Bespak PLC has filed an application to register the
term "UNIDOSE" for "drug delivery systems, composed primarily of
dry powder inhalers sold empty, dry powder inhaler valves and
activators for nasal drug delivery; liquid inhalers sold empty,
liquid inhaler valves and activators all for nasal drug delivery
and parts and fittings for all of the aforesaid goods."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
1 Ser. No. 76430621, filed on July 11, 2002, which is based on an
allegation of a bona fide intention to use the term "UNIDOSE" in
commerce.
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser. No. 76430621
2
ground that, when used in connection with applicant's goods, the
term "UNIDOSE" is merely descriptive thereof.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used or is intended to be used on or in connection
with those goods or services and the possible significance that
the term would have to the average purchaser of the goods or
services because of the manner of such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product [or service] is from
Ser. No. 76430621
3
consideration of the mark alone is not the test." In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant contends in its main brief that, "even though
the prefix 'uni' may denote 'one' or 'single,' such is only the
case when the prefix if [sic] combined with specific words."
According to applicant, "[t]he UNIDOSE mark ... does not give any
specific meaning to a consumer since it is not an existing
English word, and as such, must be seen as a neologism."
Applicant urges, furthermore, that its mark is not merely
descriptive "since the utilization of imagination, thought or
perception ... is clearly required in order to determine the
attributes of the 'drug delivery systems' goods the UNIDOSE mark
indicates" and that "any doubt as to the question of whether the
UNIDOSE mark is merely descriptive should be resolved in
Appellant's favor in accordance with the Board's policy," citing
In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981) and
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Applicant, in particular, contends that mental
processing, cogitation or reflection is required because "the
words 'uni' and 'dose' ... have several different connotations
which would lead a consumer viewing the UNIDOSE mark to question
whether UNIDOSE refers to a product that administers only one
dose (i.e., a disposable product), to a product that can only
administer one size of dose (in other words the dose administered
cannot be changed), or even further, whether UNIDOSE refers to a
product that perhaps is made to administrate only one dose at a
time." Applicant also asserts that, "since the UNIDOSE mark
Ser. No. 76430621
4
identifies drug delivery systems including inhaler valves,
actuators, liquid inhalers[,] etc., sold empty, the primary
consumer of the [goods sold under the] present mark would not be
the end consumer[,] who utilizes an inhaler with the product
therein thus expecting a specific dosage of product to be
dispensed, but is instead a drug manufacturer who would place
privately labeled product in the empty delivery system container"
(underlining in original). Applicant insists, therefore, that "a
manufacturer who would place product in the empty inhalers would
clearly have to utilize imagination, thought or perception ... in
order to determine that the UNIDOSE mark identifies drug delivery
systems including inhaler valves, actuators, liquid inhalers[,]
etc., sold empty" (underlining in original).
Finally, based upon a listing, which appears for the
first time in its main brief, of certain marks which are the
subjects of various third-party registrations2 and the assertion
that "the U.S. Patent & Trademark Office has granted numerous
registrations [which include either] the term 'dose' [or the term
2 While such evidence is untimely under Trademark Rule 2.142(d), the
Examining Attorney has not only offered no objection thereto on such
ground, but has discussed the registrations in his brief.
Accordingly, we have treated the third-party registrations as being of
record herein. See In re Nuclear Research Corp., 16 USPQ2d 1316, 1317
n. 2 (TTAB 1990). It is further pointed out, however, that the
probative value of such listing is extremely limited inasmuch as there
is no indication as to whether the third-party registrations issued on
either the Principal Register, with or without resort to the
provisions of Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f),
or the Supplemental Register, and the Board does not take judicial
notice of third-party registrations. See, e.g., In re Duofold Inc.,
184 USPQ 638, 640 (TTAB 1974). Consequently, the proper way for
applicant to have made such registrations of record, for whatever
probative value they may have, would instead have been to submit,
prior to the filing of its notice of appeal, either copies thereof or
printouts of the registrations from the electronic search records of
the United States Patent and Trademark Office. Id.
Ser. No. 76430621
5
'uni' paired with] ... other potentially suggestive words,"3
applicant argues that combining such terms to form the term
"UNIDOSE" likewise is at most suggestive rather than merely
descriptive of its goods.
The Examining Attorney, on the other hand, maintains in
his brief that "applicant has combined two descriptive terms
whose resulting combination does not create a unitary mark with a
separate, nondescriptive meaning." Specifically, citing the
definitions of record from The American Heritage Dictionary of
the English Language (3d ed. 1992), which list "uni-" as a prefix
meaning "[s]ingle; one: unicycle" and "dose" as a noun connoting,
in the field of medicine, "a. A specified quantity of a
therapeutic agent, such as a drug or medicine, prescribed to be
taken at one time or at stated intervals. b. The amount of
radiation administered as therapy to a given site," the Examining
3 The examples referred to by applicant, as set forth in its main
brief, are for the marks "PERFECT DOSE ... for ... 'automatic tablet,
pill and capsule dispensers sold empty,' QUIK-DOSE ... for ...
'filling machines for industrial use excluding those for medical
and/or pharmaceutical use,' LIQUIDOSE ... for ... 'chemicals for use
in the manufacture of industrial and household cleaning products,'
EASY-DOSE ... for ... 'syringes, namely, syringes for use in the
veterinary industry,' SECURE DOSE ... for ... 'non-metal closures for
use with medicine containers,' MICRODOSE ... for ... 'containers,
namely, resilient plastic ampules for dispensing small quantities of
medicinals and dental materials,' MINI DOSE ... for ... 'trial-sized
cosmetics, namely[,] facial makeup, facial cleansers, eye makeup
removers, lipsticks, concealers, [and] facial moisturizers,' ...
ACCUDOSE ... for ... tablets which are designed to be divided into
various dosage amounts[,]'" "UNI-CLIP ... for ... 'medical apparatus
and instruments, namely, compression staples,' UNI-TAB ... for ...
'disinfectants and deodorants contained in dispensers for urinals,'
UNI-BAR ... for ... 'hand tools, namely, crowbars, prybars and manual
jacks,' UNITOOL ... for ... 'hydraulic cutting shears and hydraulic
spreaders for use as rescue equipment,' UNI-WIPES ... for ...
'premoistened glass cleaner wipes, hand and face wipes, baby wipes,
toilet seat wipes, and moisturizer wipes,' and UNI-SOCKET ... for ...
'hand tools, namely[,] adjustable socket wrenches.'"
Ser. No. 76430621
6
Attorney contends that "the components in the mark still maintain
their descriptive meaning in relation to the [applicant's] goods
because[,] by definition, 'uni' is a common prefix that denotes
'single' and 'dose' refers to the quantity of medicine or drug
that is 'to be taken at one time or at stated intervals.'"
In addition, the Examining Attorney argues that "it ...
appears that drug delivery systems are characterized as 'single
or multi-dose' in scope or nature," noting that "web pages [which
are of record] from applicant's website provide the following:"
"Bespak has the capabilities to develop
single and multi-dose devices for the
delivery of liquid drug formulations ...";
and
"UniDose DPâ„¢ offers more than 96 per
cent efficiency of the metered dose in a
single actuation."
(Emphasis added.) Such pages, we also observe, similarly contain
the statement that "UniDoseâ„¢ is an innovative dry powder nasal
device capable of delivering an accurate single dose of a wide
range of therapies" (emphasis added). Likewise, as the Examining
Attorney further points out, an excerpt of record from the
December 18, 2003 edition of the electronic version of Business
Weekly sets forth, among a listing of various stories relating to
applicant, the following statement (emphasis added): "Bespak has
launched UniDose DP, an innovative dry powder nasal device
capable of delivering a single dose of a wide range of
therapeutic agents." In view thereof, the Examining Attorney
contends that "the proposed mark is merely descriptive of the
goods" in that the term "UNIDOSE" immediately describes any kind
Ser. No. 76430621
7
of single dosage drug delivery systems. In particular, the
Examining Attorney insists that the fact that applicant's goods
would be sold empty to drug manufacturers rather than to patients
"is of little relevance" because "[t]he fact remains that the
goods are capable of delivering medicines or pharmaceutical
preparations in a single dose."
Upon consideration of the evidence and arguments
presented, we agree with the Examining Attorney that, when
considered in its entirety, the term "UNIDOSE" is merely
descriptive of applicant's goods, namely, "drug delivery systems,
composed primarily of dry powder inhalers sold empty, dry powder
inhaler valves and activators for nasal drug delivery; liquid
inhalers sold empty, liquid inhaler valves and activators all for
nasal drug delivery and parts and fittings" therefor. Contrary
to applicant's assertions in its reply brief that "the Examining
Attorney's express statements noted above actually support
Appellant's position that the UNIDOSE mark is not merely
descriptive of the goods" and that "the Examining Attorney's
citations of the various descriptions on Appellant's web page
used for explaining the function of a 'Unidose' DP in fact prove
that the term 'Unidose' does not convey ... an immediate idea of
the ... qualities or characteristics" of its goods, we find that
the evidence of record demonstrates that such term immediately
conveys, without speculation or conjecture, that a significant
purpose, function, characteristic or use of applicant's goods is
to provide delivery of a single dosage of a drug. Irrespective
of whether applicant's goods, for instance, deliver a single drug
Ser. No. 76430621
8
dose just once before being disposed of, administer single drug
dosages repeatedly, and/or provide only one size of drug dosage,
the term "UNIDOSE" merely describes any drug delivery system
having such a feature or attribute. Nothing in the term
"UNIDOSE" is incongruous, ambiguous or suggestive, nor is there
anything which would require the exercise of imagination,
cogitation or mental processing, or necessitate the gathering of
further information, in order for the merely descriptive
significance thereof to be readily apparent to customers of
applicant's product. Instead, to both ordinary consumers and
drug manufacturers, the term "UNIDOSE" conveys forthwith that
applicant's goods, whether containing when purchased the drug to
be administered or sold empty, will deliver a single dose of a
particular drug.
As the Examining Attorney also correctly points out in
his brief, the fact that on this record the term "UNIDOSE" is not
found in a dictionary, and thus appears to be a "neologism," is
not controlling on the issue of registrability. See, e.g., In re
Gould Paper Corp., 824 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir.
1987); and In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB
1977). Additionally, as the Examining Attorney properly notes,
it is well settled that the fact that applicant may be or intends
to be the first and/or sole user of a merely descriptive term
does not entitle it to registration thereof where, as here, the
evidence of record demonstrates that the term projects only a
merely descriptive significance in the context of applicant's
goods. See, e.g., In re National Shooting Sports Foundation,
Ser. No. 76430621
9
Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In re Mark A. Gould,
M.D., 173 USPQ 243, 245 (TTAB 1972).
Lastly, as the Examining Attorney accurately observes,
"[e]ven if one were to accord any weight to the registrations
cited by the applicant, ... many of those marks identify goods
that are totally unrelated to ... devices for delivering drugs to
humans in a single dose," and "many of the remaining marks
contain nondescriptive wording or are presented in a unitary way
such that a disclaimer or refusal to register [on the basis of
mere descriptiveness] would not be required." We find, in short,
that none of the third-party registrations of record is
sufficiently analogous to be persuasive of a finding that the
term "UNIDOSE," when used in connection with applicant's goods,
is at most suggestive rather than merely descriptive, nor do they
singly or collectively serve to create any doubt with respect
thereto. Moreover, as our principal reviewing court noted in In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001), "[e]ven if some prior registrations had some
characteristics similar to [applicant's] application, the ...
allowance of such prior registrations does not bind the Board or
this court." See also, In re Broyhill Furniture Industries Inc.,
60 USPQ2d 1511, 1514 (TTAB 2001); and In re Pennzoil Products
Co., 20 USQP2d 1753, 1758 (TTAB 1991). The evidence of record
herein clearly demonstrates that the term "UNIDOSE" forthwith
conveys the meaning of "single dose," which is identical to the
meaning engendered by the combination of its constituent
components "uni-" and "dose." Because, as explained previously,
Ser. No. 76430621
10
such term immediately describes a significant purpose, function,
characteristic or use of applicant's goods, which is to provide
delivery of a single dosage of a drug, it is merely descriptive
thereof within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.