Elan Pharma International Ltd.

Trademark Trial and Appeal Board

Sep 5, 2008

No. 78517591 (T.T.A.B. Sep. 5, 2008)

Mailed: September 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Elan Pharma International Ltd.
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Serial No. 78517591
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Kevin R. Casey of Stradley Ronon Stevens & Young, LLP for
Elan Pharma International Ltd.

Ellen Awrich, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Hohein, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application has been filed by Elan Pharma
International Ltd. to register on the Principal Register
the mark NANOCRYSTAL COLLOIDAL DISPERSION in standard
character form for the following goods: “pharmaceutical
preparations, namely, adjuvant preparations sold as a
component of a full line of pharmaceuticals, and
ingredients and components thereof, namely ultra-small
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78517591
2
particle formulations.”1 The application is based upon an
allegation of December 19, 1996 as the date of first use of
the mark anywhere and in commerce. During the course of
examination of the application, applicant amended its
application to seek registration of its mark under Section
2(f) of the Trademark Act, based upon a declaration of
substantially exclusive and continuous use of the mark in
commerce for over five years. Applicant further claimed
ownership of Registration No. 23860892 for the mark
NANOCRYSTAL in typed or standard character form for the
same goods as those recited in the involved application,
and Registration No. 24929253 for the mark NANOCRYSTAL for
the following services: “business marketing consulting
services; business management consulting services” in Class
35; “manufacture of adjuvant preparations for use in
pharmaceutical preparations to the order and specification
of others” in Class 40; and “technical consultation and
research in the field of pharmaceutical manufacturing;
product development consultation; consumer product safety
testing and consultation” in Class 42. In addition,

1 Serial No. 78517591 was filed on November 16, 2004.
2 Registration No. 2386089 issued on the Principal Register on
September 12, 2000. Section 8 affidavit accepted; Section 15
affidavit acknowledged.
3 Registration No. 2492925 issued on the Principal Register on
September 25, 2001. Section 8 affidavit accepted; Section 15
affidavit acknowledged.
Ser No. 78517591
3
applicant disclaimed the exclusive right to use “COLLOIDAL
DISPERSION” apart from the mark as shown.
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark is merely descriptive of
its goods and that applicant’s evidence is insufficient to
show acquired distinctiveness of the mark under Section
2(f) of the Act. When the refusal was made final,
applicant appealed. Applicant and the examining attorney
have filed briefs on the issues under appeal, and applicant
has filed a reply brief.4
Evidentiary Matters
With its main brief on appeal, applicant submitted as
exhibits copies from the United States Patent and Trademark
Office’s (USPTO) Trademark Application and Registration
Retrieval (TARR) database of its previous, abandoned,
application Serial No. 75425863 for the mark under
consideration herein, and its prior registrations.
Applicant further submitted a printout from its Internet
website. With her brief on appeal, the examining attorney
also submitted as exhibits printed copies of applicant’s

4 The involved application was examined by several examining
attorneys, and was most recently assigned to the attorney whose
name is shown above to prepare the appeal brief.

Ser No. 78517591
4
prior registrations. Finally, with its reply brief,
applicant submitted as exhibits printouts from several
Internet websites, including its own, as well as copies of
documents relating to applicant’s marketing and business
practices.
By not objecting to applicant’s submission of the
copies of its prior registrations to its main brief and, in
addition, by attaching copies thereof to her own brief, the
examining attorney is deemed to have waived any objection
to our consideration thereof in our determination of the
issues under appeal. As for the other exhibits submitted
by applicant, the record in the application should be
complete prior to the filing of an appeal. See Trademark
Rule 2.142(d). The other exhibits attached to both
applicant’s main brief and reply brief were not made of
record during examination. Accordingly, their submission
at the briefing stage of this proceeding is untimely, and
we have not further considered this evidence in reaching
our decision.5 See In re U.S. Cargo Inc., 49 USPQ2d 1702,
1703 n.2 (TTAB 1998); and TBMP §1203.02(e) (2d ed. rev.
2004).

5 We hasten to add that even if these exhibits had been
considered in our determination herein, the result would be the
same.

Ser No. 78517591
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Issue on Appeal
We note that both applicant and the examining attorney
have presented arguments in their briefs directed toward
the issues of whether applicant’s NANOCRYSTAL COLLOIDAL
DISPERSION mark is merely descriptive under Trademark Act
Section 2(e)(1) as well as whether applicant has made a
sufficient showing that such mark has acquired
distinctiveness under Section 2(f).
However, applicant, in its November 17, 2006
communication, amended the instant application to seek
registration under Section 2(f) based upon a claim of
acquired distinctiveness. “Where … an applicant seeks a
registration based on acquired distinctiveness under
Section 2(f), the statute accepts a lack of inherent
distinctiveness as an established fact. Similarly, in
cases where registration was initially sought on the basis
of distinctiveness, subsequent reliance by the applicant on
Section 2(f) assumes that the mark has been shown or
conceded to be merely descriptive” (emphasis in original).
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). See also
General Foods Corp. v. MGD Partners, 224 USPQ 479, 485
(TTAB 1984). Having amended its application to seek
registration under Section 2(f), without reserving the
Ser No. 78517591
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alternative contention that its mark is not merely
descriptive, applicant has thereby conceded that its mark
is merely descriptive and is registrable on the Principal
Register only upon a showing of acquired distinctiveness.
Thus, the sole issue on appeal is whether applicant has
carried its burden of establishing, by a preponderance of
the evidence, a prima facie case that its merely
descriptive mark, NANOCRYSTAL COLLOIDAL DISPERSION, has
acquired distinctiveness under Section 2(f). See Yamaha
International Corp. v. Hoshino Gakki Co. Ltd., supra; and
In re Rogers, 53 USPQ2d 1741 (TTAB 1999). In consequence
thereof, applicant’s arguments directed toward the
sufficiency of the examining attorney’s refusal to register
under Section 2(e)(1) are moot and will be given no further
consideration.6
Acquired Distinctiveness
In support of its claim of acquired distinctiveness,
applicant “points out its continuous and exclusive use of
the composite mark since 1996 (now about 12 years) and its
prior registrations, in 2000 and 2001 respectively, of the
mark NANOCRYSTAL alone” (brief, p. 19). Applicant did not

6 We note in addition that an earlier refusal to register the
involved mark on the ground of genericness was withdrawn prior to
appeal. Accordingly, the issue of genericness is not before us
and the examining attorney’s arguments relating thereto will be
given no consideration.
Ser No. 78517591
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submit any additional evidence in support of its claim that
NANOCRYSTAL COLLOIDAL DISPERSION has acquired
distinctiveness under Section 2(f) of the Trademark Act.
Turning first to applicant’s prior registrations,
Trademark Rule 2.41(b) provides that ownership of a
registration of “the same mark” on the Principal Register
may be accepted as prima facie evidence of acquired
distinctiveness. In relying on this rule, an applicant is
essentially seeking to “tack” the use of the registered
mark to its use of the present mark for purposes of
transferring distinctiveness to the new mark. See In re
Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977). Thus, the
analysis used to determine whether applicant’s present mark
is “the same mark” as its previously registered mark, for
purposes of the rule, is the analysis used in tacking
cases, i.e., whether the marks are legal equivalents. See
Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156,
17 USPQ2d 1866 (Fed. Cir. 1991). See also In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,
1812 (Fed. Cir. 2001).
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same,
continuing commercial impression such that the consumer
would consider both as the same mark. See Van Dyne-Crotty,
Ser No. 78517591
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Inc. v. Wear-Guard Corp., supra; and In re Dial-A-Mattress
Operating Corp., supra. Therefore, a minor difference in
the marks, such as an inconsequential modification or
modernization of the later mark, would not be a basis for
rejecting application of the rule. See In re Loew's
Theatres, Inc., 223 USPQ 513 (TTAB 1984) aff’d, 769 F.2d
764 (Fed. Cir. 1985); and In re Flex-O-Glass, Inc., supra.
Aside from the legal equivalency of the marks in the
registration and the application, applicant is also
required to establish, through submission of relevant
evidence rather than mere conjecture, a sufficient
relationship between the goods and/or services in the prior
registrations and the goods identified in the application
to warrant the conclusion that the distinctiveness of the
mark associated with the goods and services in the
registrations will “transfer” to the goods listed in the
application. See In re Rogers, supra.
It is applicant’s contention that “[b]ecause the
shared term NANOCRYSTAL in the claimed registrations is the
only distinctive term in the instant mark, and it is the
dominant portion of the instant mark, it is the legal
equivalent of the prior NANOCRYSTAL registrations and
creates the same continuing commercial impression such that
the consumer would consider them the same mark” (brief, p.
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20).
In this regard, we note that applicant’s prior
registrations for the mark NANOCRYSTAL, both registered on
the Principal Register without a showing of acquired
distinctiveness, are each over five years old and thus at
present are no longer subject to attack by way of a
cancellation proceeding based upon mere descriptiveness and
instead can only be cancelled if shown to be generic. See
15 U.S.C. §1065. See also In re American Sail Training
Association, 230 USPQ 879, 880 (TTAB 1986). We further
note that subsequent to amending the involved application
to seek registration under Section 2(f), applicant, in
response to a requirement from the examining attorney,
disclaimed the exclusive right to use “COLLOIDAL
DISPERSION” apart from the mark as shown. Further, in view
of the evidence made of record by the examining attorney,
the wording “COLLOIDAL DISPERSION” appears, at best, to be
highly descriptive of the recited goods. As a result, we
agree with applicant that the word NANOCRYSTAL in the
involved mark, NANOCRYSTAL COLLOIDAL DISPERSION, is the
dominant and distinguishing portion thereof.
Thus, the involved mark for which applicant seeks to
make a prima facie showing of acquired distinctiveness
consists of the word NANOCRYSTAL, previously found to be
Ser No. 78517591
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inherently distinctive, and the highly descriptive wording
“COLLOIDAL DISPERSION.” In light of the foregoing, we find
that on the record of this case the mark NANOCRYSTAL
COLLOIDAL DISPERSION creates the same, continuing
commercial impression as the previously registered
NANOCRYSTAL marks such that it is the legal equivalent
thereof. Therefore, the marks are “the same” for purposes
of Trademark Rule 2.41(b).
We further find that the goods identified in
applicant’s prior Registration No. 2386089 are identical to
the goods identified in the application. Accordingly,
there is no question that the distinctiveness of the
NANOCRYSTAL mark associated with the goods in Registration
No. 2386089 will “transfer” to the identical goods listed
in the involved application.7 See In re Rogers, supra.
In view of the above evidence, coupled with the
further evidence, as set forth in applicant’s declaration,
that the involved mark has been in substantially exclusive
and continuous use in commerce since 1996, we find that the
combination of such evidence is sufficient to show that
applicant’s mark has acquired distinctiveness.

7 As a result, we need not and do not reach the question of
whether the services recited in applicant’s Registration No.
2492925 are sufficiently related to the goods in the involved
application such that the distinctiveness of the NANOCRYSTAL mark
therein would transfer to such goods.
Ser No. 78517591
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Accordingly, we find that, based upon its ownership of
prior Registration No. 3386089 for the mark NANOCRYSTAL,
and the evidence set forth in its Section 2(f) declaration,
applicant has made a prima facie showing that its mark
NANOCRYSTAL COLLOIDAL DISPERSION has acquired
distinctiveness as applied to the recited goods sufficient
to permit registration thereof under Section 2(f).
Decision: The refusal to register is reversed.