Bharat Biotech International Limited

Trademark Trial and Appeal Board

Jun 4, 2019

87570862 (T.T.A.B. Jun. 4, 2019)

Mailed: June 4, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
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In re Bharat Biotech International Limited
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Serial Nos. 87570858 and 87570862
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John M. Mueller of Baker & Hostetler LLP
for Bharat Biotech International Limited.

Benjamin Roth, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
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Before Cataldo, Adlin and Pologeorgis, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Bharat Biotech International Limited seeks Principal Register
registrations for the proposed marks ZIKAVAX and ZICAVAC (each in standard
characters) for “vaccine formulations” in International Class 5.1 The Examining
Attorney refused registration of both marks under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), on the ground that each mark is merely descriptive of the
identified goods. After the refusals became final, Applicant appealed, Applicant and

1 Application Serial Nos. 87570858 (the “’858 Application”) and 87570862 (the “’862
Application”), respectively, each filed August 16, 2017 under Section 1(b) of the Trademark
Act, based on an alleged intent to use each mark in commerce.
This Opinion is Not a
Precedent of the TTAB
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the Examining Attorney filed briefs and at the Examining Attorney’s request, the
appeals were consolidated.
I. The Record
The Examining Attorney relies on a dictionary definition which indicates that
“vax” means “a vaccine or vaccination,” and an entry in All Acronyms indicating that
“vac” also means “vaccine.” June 14, 2018 Office Action in ’858 Application TSDR 6
(printout from “oxforddictionaries.com”)2; June 14, 2018 Office Action in ’862
Application TSDR 5 (printout from “allacronyms.com”).
These definitions are supported by evidence of widespread third-party use of both
VAX and VAC to refer to vaccines. The following examples, among several others,
show third-party use of VAX:

2 The Oxford Dictionary definition is in “British and World English.” Because the “world”
encompasses the United States, and because the definition is corroborated by and consistent
with the third-party, United States uses of record, we have considered the definition.
Serial Nos. 87570858 and 87570862
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November 21, 2017 Office Action in ’858 Application TSDR 13-38 (printouts from
“nytimes.com,” “nypost.com” and “voicesforvaccines.org”); June 14, 2018 Office Action
in ’858 Application TSDR 7-17 (printouts from “fhcp.com,” “medpagetoday.com,”
“docgriffith.com,” “healthnutnews.com” and “fiercebiotech.com”). The following
examples, among several others, show third-party use of VAC:

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November 21, 2017 Office Action in ’862 Application TSDR 23-36 (printouts from
“foward.com” and “stayathomemommy.com”); June 14, 2018 Office Action in ’862
Application TSDR 6-13 (printouts from “webmd.com,” “childrenwithdiabetes.com”
and “medhelp.org”).
The Examining Attorney also relies on information about the Zika virus.
According to the National Institute of Allergy and Infectious Diseases (“NIAID”), the
Zika virus, a member of the flavivirus family, was discovered in the Zika forest, and
is transmitted to humans through mosquito bites. November 21, 2017 Office Actions
in both applications TSDR 6 (printout from “niaid.nih.gov”). While the virus typically
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causes only mild or no symptoms, it “can be transmitted from an infected pregnant
woman to her baby during pregnancy and can result in serious birth defects,
including microcephaly.” Id. The NIAID website reported in 2017 that NIAID was
developing “multiple vaccine candidates to prevent Zika virus infection.” Id.
II. Arguments
Applicant argues that the proposed marks are suggestive rather than merely
descriptive because they would require thought and imagination to determine the
goods for which Applicant intends to use the terms. 4 TTABVUE 7 (both cases)
(Applicant’s Appeal Briefs at 3). Specifically, the proposed marks do “little more than
locate the goods as possibly in the realm of vaccination formulations.” Id. at 9
(Applicant’s Appeal Briefs at 5).
The Examining Attorney counters that both of Applicant’s marks merely “combine
the name of a virus, or novel misspelling thereof, with widely used abbreviations of
the word ‘vaccine’ for ‘vaccine formulations.’” 8 TTABVUE 4 (both cases) (Examining
Attorney’s Appeal Brief at 3). Moreover, the Examining Attorney points out that the
record establishes that “consumers of vaccines are accustomed to seeing the name of
a virus paired with abbreviations for the word ‘vaccine’ to describe vaccines used to
prevent such virus,” i.e. “flu vax,” “chicken pox vax,” “flu vac” and “chicken pox vac.”
Id. at 11 (Examining Attorney’s Appeal Brief at 10). Thus, according to the
Examining Attorney, both of Applicant’s proposed marks are composite terms which
are themselves merely descriptive, because “they each immediately inform the
consumer that Applicant’s goods are vaccines with the feature or purpose of
preventing the Zika virus.” Id. at 5 (Examining Attorney’s Appeal Brief at 4).
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III. Analysis
The record leaves no doubt that both ZIKAVAX and ZICAVAC are merely
descriptive, because they immediately convey knowledge of a quality, feature,
function, characteristic or purpose of the goods for which Applicant intends to use the
terms. In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); In re Abcor Dev., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). More specifically, we agree with the
Examining Attorney’s cogent analysis: both terms “combine the name of a virus, or
novel misspelling thereof, with widely used abbreviations of the word ‘vaccine’ for
‘vaccine formulations.’”
When the name of the Zika virus, or a slight variation thereof, is combined with
abbreviations for the term “vaccine,” the mark as a whole, i.e., the combination of the
individual parts, does not convey “any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.” In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (PATENTS.COM merely
descriptive of computer software for managing a database of records that could
include patents, and for tracking the status of the records by means of the Internet).
To the contrary, from “the perspective of a prospective purchaser or user” of
Applicant’s vaccine formulations, “because … the combination of the terms does not
result in a composite that alters the meaning of [any] of the elements … refusal on
the ground of descriptiveness is appropriate.” In re Petroglyph Games, Inc., 91
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USPQ2d 1332, 1341 (TTAB 2009) (BATTLECAM merely descriptive for computer
game software).
While ZICA and the word “Zika” are not identical, as the Examining Attorney
correctly points out, Applicant’s slight misspelling of “Zika” does not make ZICA non-
descriptive. Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191, 42 USPQ2d 1711, 1716 (Fed.
Cir. 1997) (“Nupla’s mark [CUSH-N-GRIP], which is merely a misspelling of
CUSHION-GRIP, is also generic as a matter of law”); In re Quik-Print, 205 USPQ at
507 n.9 (finding QUIK-PRINT merely descriptive of printing and copying services,
stating “[t]here is no legally significant difference here between ‘quik’ and ‘quick.’”);
In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (“applicant’s applied-for mark,
URBANHOUZING in standard character form, will be immediately and directly
perceived by consumers as the equivalent of the admittedly descriptive term URBAN
HOUSING, rather than as including the separate word ZING”); In re Ginc UK Ltd.,
90 USPQ2d 1472, 1475 (TTAB 2007) (“The generic meaning of ‘togs’ is not overcome
by the misspelling of the term as TOGGS in applicant’s mark. A slight misspelling is
not sufficient to change a descriptive or generic word into a suggestive word.”).3

3 This is perhaps especially so here because ZICA would likely be pronounced the same as
ZIKA. In fact, while sometimes a “c” may be pronounced as an “s” rather than a “k,” that is
in our experience atypical when the “c” is followed by an “a” as it is here. More importantly,
in the context of Applicant’s proposed composite marks, which include known abbreviations
for “vaccine” and are to be used for “vaccine formulations,” we would expect relevant
consumers to pronounce ZICA the same way as ZIKA, a virus. In any event, there is no
evidence of record that ZICA would be pronounced differently than ZIKA.
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Similarly, Applicant’s use of abbreviations for the term “vaccine” does not make
the proposed marks non-descriptive. Indeed, the definitions and third-party uses
establish that “vaccine” is commonly abbreviated to VAX or VAC. This type of
evidence often supports a finding that an abbreviation is itself merely descriptive. In
re Well Living Lab Inc., 122 USPQ2d 1777, 1779 (TTAB 2017), aff’d 749 Fed. Appx.
987 (Fed. Cir. 2018) (finding, based on dictionary definitions and usage examples,
that LAB is an abbreviation of “laboratory,” and that WELL LIVING LAB is merely
descriptive of research, testing and development in the field of wellness); In re
Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (“A word, term, or letters
that are a recognized abbreviation for the goods in the application is merely
descriptive.”). Here, the widespread use of VAX and VAC to mean “vaccine,” and the
evidence that these abbreviations, when preceded by a virus name, refer to a vaccine
against that virus, establishes that ZIKAVAX and ZICAVAC are both merely
descriptive.
The record also belies Applicant’s claim that the proposed marks do “little more
than locate the goods as possibly in the realm of vaccine formulations.” To the
contrary, the proposed marks immediately describe the goods as Zika vaccines,
because “[t]he question is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question is whether someone who
knows what the goods or services are will understand the mark to convey information
about them.” In re Tower Tech Inc., 64 USPQ 2d 1314, 1316-17 (TTAB 2002). Here,
someone who knows that Applicant offers vaccine formulations will immediately
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know that the formulations bearing the proposed marks are intended to provide
immunity or protection against the Zika virus. Of course, Applicant’s identification of
goods (“vaccine formulations”) itself makes clear that ZIKAVAX and ZICAVAC are
merely descriptive. See, In re Taylor & Francis (Publishers) Inc., 55 USPQ2d 1213,
1215 (TTAB 2000) (PSYCHOLOGY PRESS & Design found merely descriptive of
nonfiction books in the field of psychology, in part because the applicant’s
“identification of goods expressly states that the series of non-fiction books upon
which applicant uses its mark are ‘in the field of psychology.’ The word
PSYCHOLOGY therefore is merely descriptive of the subject matter of applicant’s
books, as identified in the application ….”).
IV. Conclusion
Because the record reveals that Applicant’s proposed marks ZIKAVAX and
ZICAVAC are nothing more than the name of a virus (or a slight misspelling thereof)
combined with known abbreviations for “vaccine,” the terms are merely descriptive
of a characteristic, feature, function or purpose of Applicant’s vaccine formulations.
Decision: The refusals to register Applicant’s proposed marks under Section 2(e)(1)
of the Trademark Act are affirmed.