ImClone Systems Incorporated

Trademark Trial and Appeal Board

Sep 8, 2009

No. 76659576 (T.T.A.B. Sep. 8, 2009)

Mailed:
September 8, 2009
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ImClone Systems Incorporated
________

Serial No. 76659576
_______

Robert E. Lee, Jr., of Eli Lilly and Company for ImClone
Systems Incorporated.

Fred Carl, III, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Holtzman and Taylor, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
ImClone Systems Incorporated seeks registration on the
Principal Register of the mark STRENGTH IN DATA (in standard
character format) for goods recited in the application as:
“printed matter, namely, advertising and
promotional information materials in the
nature of newsletters, pamphlets and
brochures in the field of health care and
pharmaceuticals” in International Class 16.1

1 Application Serial No. 76659576 was filed on May 1, 2006
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. In addition to the above-listed goods in
Class 16, the initial application included goods in Class 5 and
services in Class 42. All the items in Classes 5 and 42 were
dropped from the application when applicant filed a Statement of
Use on July 6, 2007, submitting a single specimen for the goods
listed in International Class 16.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76659576
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The Trademark Examining Attorney refuses registration
of the proposed trademark on the Principal Register,
pursuant to Sections 1, 2 and 45 of the Trademark Act.
After the Trademark Examining Attorney made the refusal
final, applicant appealed to this Board.
We affirm the refusal to register.
Applicant submitted a specimen with its Statement of
Use on July 6, 2007. The Trademark Examining Attorney
refused the specimen as unacceptable, finding it to be an
advertisement for one of applicant’s branded pharmaceutical
products, ERBITUX. Applicant filed additional substitute
specimens on January 18, 2008 and again on August 21, 2008.
It is the position of the Trademark Examining Attorney
that none of these specimens is acceptable. He concluded
that the specimens do not show the applied-for-trademark
used in connection with the goods identified in the
application (e.g., newsletters, pamphlets and brochures).
15 U.S.C. §§ 1051 – 1052, 1127; 37 C.F.R. §§ 2.34(a)(1)(iv)
and 2.56.
By contrast, applicant argues that these are
informational brochures identified prominently by the
applied-for mark and containing useful medical information
for office-based medical oncology specialists and their
Serial No. 76659576
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patients concerning the best options in treatment of head
and neck cancer.
Preliminary matters
In its November 13, 2008 petition for remand to the
Trademark Examining Attorney, applicant pointed out that
each of the three times it submitted specimens, only a few
pages of each specimen had been properly scanned into the
electronic records of the U. S. Patent and Trademark Office.
The Office’s electronic records show a six-page specimen on
July 6, 2007 [since-assigned2 BATES Nos. 000069-000074].
According to applicant, the actual alleged submission,
supported by later declarations, included these same six
pages [Nos. 000009-000014] plus a package insert of an
additional six pages [Nos. 000015-000020].
Similarly, the Office records show a two-page specimen
on January 17, 2008 [Nos. 000075 & 000076]. According to
applicant, the actual alleged submission, supported by later
declarations, included these same two pages [Nos. 000033 and
000027] plus another six pages of this eight page brochure
[Nos. 000027-000034].

2 All of these page numbers were assigned for the first time
with the exhibits submitted on November 13, 2008, but will serve
as our identifiers herein.

Serial No. 76659576
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Finally, the Office records show a three-page specimen
on August 21, 2008 [Nos. 000085-000087]. According to
applicant, the actual alleged submission, supported by later
declarations, included these same three pages [Nos. 000049,
000057 and 000060] plus another nine pages of this twelve
page brochure [Nos. 000049-000060], plus a package insert of
an additional six pages [Nos. 000061-000066, identical to
Nos. 000015-000020].
We presume that the Trademark Examining Attorney had
before him this complete submission on December 16, 2008, at
the time he considered but then denied applicant’s request
for reconsideration. Hence, we also consider the more
complete versions of these specimens as having been properly
made of record.
Brochures of the general construction of those at issue
herein are acceptable specimens to show use of a trademark
in International Class 16. Additionally, under trademark
law, it is not material to our determination herein that
these goods, clearly distributed in commerce, are not
themselves sold. Rather, our decision turns on the content
and presentation of the brochures.
Content: the focus of the informational brochures:
Applicant is clearly involved in a marketing campaign
to promote its oncology pharmaceuticals to cancer
Serial No. 76659576
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specialists. Applicant’s approach to this marketing
challenge is essentially to make “data” the focal point of
the entire campaign. These various informational brochures
each present evidence of significant improvement in overall
survival rates, leading to an “extended” life for its
patients. In addition, a Kaplan-Meier (K-M) curve with
double lines drifting downward over time represents how many
patients were still alive as the study continued. The
tagline for this campaign is “Strength in Data.”
The Examining Attorney contends that all of these
specimens are “merely advertising for applicant’s
pharmaceutical products.” By contrast, applicant argues
that they are printed brochures containing useful medical
information about possible treatments that have nothing to
do with applicant’s pharmaceutical product, ERBITUX:
Head and neck cancer is a composite term that encompasses tumors arising in multiple primary
sites, including the oropharynx hypopharynx, and several locations in the larynx. Given the
anatomic complexity of the primary sites that may be involved and the numerous factors that
shape treatment decisions for the patients, the management of carcinomas of the head and
neck poses a difficult clinical challenge.
Each primary site requires specific staging procedures and local (surgical and radiotherapeutic)
management approaches. In general, multimodality treatment is the cornerstone of therapy for
early and locally advanced disease, often requiring the coordination of complicated treatment
regimens. In addition, the combined effect of tumor and treatment on basic functions (i.e.,
swallowing, breathing) and personal characteristics (i.e., appearance and voice) requires the
involvement of a multidisciplinary team in order to provide optimal care. 3

3 No. 000030.

Serial No. 76659576
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Applicant argues that the specimens explain how head
and neck cancer can be treated, identifying indicia to
ascertain the appropriate treatment such as surgery,
radiation and/or chemotherapy. Applicant repeatedly points
out that the possible treatments identified include ones
that have nothing to do with applicant’s branded oncology
therapies:
Locally or Regionally Advanced Disease
Initial resectability and operability are based on:
• Objective (or anatomic) factors, such as regional or nodal involvement and the
probability of full tumor removal
• Nonobjective factors, such as the surgeon's experience or a patient's
circumstances
For patients who undergo surgery:
• Patients with adverse features, mainly positive margins and extra-nodal
involvement, benefited from the addition of cisplatin to postoperative radiotherapy
• Patients without adverse features do not benefit from additional therapy
Definitive radiation-based therapy is recommended for inoperable patients or those with
postsurgical adverse features:
• Use of neoadjuvant/induction chemotherapy may substantially reduce local
and distant disease burden before definitive treatment
• Platinum therapy may be administered concurrently with radiation therapy (RT),
a strategy that has shown efficacy in clinical trials, but also has been shown to increase
toxicity and morbidity'
The decision regarding the type of RT regimen (alone or with chemotherapy) depends on
tolerability and rehabilitation concerns:
• General performance status and co-morbidities such as cardiovascular risk
and respiratory conditions
• Lifestyle issues, such as alcohol consumption, smoking habits, presence of
caregiver support
• Evaluation of patient's willingness to accept aggressive treatment, and of potential
problems in treatment delivery and compliance issues

Metastatic Disease
Recurrent/metastatic disease is managed with systematic therapy (radiotherapy is a
possibility for cases of focal recurrence).
• Front-line therapy is usually platinum based 4

4 Id.
Serial No. 76659576
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Applicant goes on to point out the published
references range from peer-reviewed articles in medical
journals to practice guidelines, and on varying treatments
available in the field of head and neck cancer. Applicant
argues that the materials are by no means limited to
applicant’s products, and they do convey objective scientific
data of value to medical practitioners.5
As to their contents, it is incontrovertible that
applicant’s specimens of record do contain scientific
information such as that excerpted above. Furthermore, if
applicant’s publications were strictly a summary of all the
latest medical information on the treatment of head and neck
cancer, they would, without doubt, have a functionality as
a publication. Even if it were primarily a medical
treatise having separate sidebar advertisements for ERBITUX
brand medications, the name of the publication would likely
be considered a publication mark. In such a case, it would
be acceptable to consider these as separable goods in trade
despite the fact that applicant always intended for the
informational publication to serve as a promotional device
for applicant’s pharmaceutical product. Like any other

5 No. 000029.

Serial No. 76659576
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collateral products (e.g., calendars,6 pens7 or T-shirts8),
these would be considered goods in trade that are
transported in commerce and possess a utilitarian purpose.
However, upon reviewing the overall contents of these
brochures, we are compelled to agree with the Trademark
Examining Attorney that the primary focus of these
publications is to promote applicant’s pharmaceutical
product. Whether ERBITUX brand medications are touted for
their efficacy as a single agent, or in combination with
other therapies such as radiation therapy, the entire
thrust of the brochures is promoting the value of ERBITUX
brand medications. Rather than conveying a neutral
presentation of scientific data, they have the look and
feel of any other persuasion piece marketing the benefits
of a single branded product.9 Accordingly, in spite of the

6 In re United Merchants & Manufacturers, Inc., 154 USPQ 625
(TTAB 1967) [although used as an advertising device to promote
applicant’s plastic film, applicant’s calendar possesses a
utilitarian function and has been regularly distributed in
commerce for years therefore constitutes goods in trade].

7 In re Snap-On Tools Corp., 159 USPQ 254 (TTAB 1968)
[promotional ball point pens which possess utilitarian function
and have been transported in commerce under mark, constitute
goods in trade].

8 In re Olin Corporation, 181 USPQ 182 (TTAB 1973) [Olin’s
corporate logo (a stylized letter “O”) applied to T-shirts will be
perceived as a secondary source of origin, clearly sponsored or
authorized by the Olin brand ski manufacturer].

9 In re Douglas Aircraft Company, Inc., 123 USPQ 271 (TTAB
1959) [materials used only to advertise, explain and publicize
the goods in which applicant deals will not constitute “goods”
Serial No. 76659576
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admitted value of some scientific data for medical
practitioners, these are primarily advertisements. As
promotional materials being distributed incidentally to the
pharmaceutical product, they possess little utilitarian
function other than promoting applicant’s goods.
Presentation: perceptions of cancer specialists
As seen in our discussion of the content of these
brochures, having a utilitarian function is necessary for
these publications to be considered goods in trade separable
from an advertising campaign for applicant’s primary goods.
While this proper content is necessary, absent a proper
presentation, that is not sufficient to find the alleged
source indicating matter to be a registrable trademark.
That is, in the event that the promotional aspect appeared
secondary to providing objective scientific data for medical
practitioners, permitting the subdivision of these “goods”
apart from pharmaceuticals, it would also still matter how the
alleged mark is presented.
The specimens of July 6, 2007, January 17, 2008
and August 21, 2008 show the following presentations:

themselves within the meaning contemplated by the Statute]; and
In re Radio Corp. of Am., 205 F.2d 180, 98 USPQ 157 (CCPA 1953)
[the slogan was used by appellant in the advertising or sale of
its goods].

Serial No. 76659576
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As noted years ago by the Court of Customs and Patent
Appeals, “[t]he important question is not how readily the
mark will be noticed, but whether, when it is noticed, it
will be understood as indicating origin of the goods. In re
Singer Mfg., 255 F.2d 939, 118 USPQ 310, 312 (CCPA 1958).
Serial No. 76659576
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Prospective consumers, including oncologists, will be
accustomed to deciphering readily the name of a publication.
For example, in the event this were indeed a publication
providing scientific information, and if the term “STRENGTH
IN DATA” were emblazoned across a masthead, this case would
likely not be in front of the Board. The essential question
facing the Trademark Examining Attorney was whether this
designation, as used, would be recognized/perceived in and
of itself, by the cancer specialists, as an indication of
origin for these brochures/informational newsletters. See
Textron Inc. v. Cardinal Engineering Corp., 164 USPQ 397,
399 (TTAB 1969).
Analogizing to the use of ornamental trademarks
emblazoned across the front of T-shirts, whether something
serves as an indication of origin in that context may well
turn on something as prosaic as “the size, location,
dominance, and significance of the alleged mark.” See In re
Astro-Gods Inc., 223 USPQ 621, 623 (TTAB 1984) [The Board
held that “ … the size, location, dominance, and
significance of the alleged mark as applied to the goods are
all factors which figure prominently in the determination of
whether it also serves as an indication of origin”].
As to the criterion focusing on the “significance” of
the term, the applied-for mark is a different designation
Serial No. 76659576
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than the name applicant adopted and uses in connection with
its primary pharmaceutical product. The term “Strength In
Data” has a definite, if nuanced, reference to the
scientific information or data in the brochure. Hence, the
nature and significance of the applied-for matter is clearly
such that it could well serve as a mark for International
Class 16 publications if it were being used in a more
traditional, dominant location and presented with banner-
headline-sized lettering.
However, as to the criteria of “size, location and
dominance” of the term as used on the brochures, we find
that it is simply not sufficiently prominent that consumers
would recognize it as a trademark for the brochure. Contra
In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004). In fact, it is
so incorporated with the “ERBITUX CENTUXIMAB INJECTION”
wording and design that it could likely be considered part
of a single composite mark for pharmaceuticals. Putting
ourselves in the position of these brochures’ targeted
oncologists, we find that visually these brochures uniformly
present a nearly imperceptible usage of this tagline, and
are clearly not a readily perceived source-indicator for
these promotional brochures touting ERBITUX medications.
Decision: We hereby affirm the refusal to register
under Sections 1, 2 and 45 of the Lanham Act.