Injex Pharma AG

Trademark Trial and Appeal Board

Dec 22, 2014

No. 79119172 (T.T.A.B. Dec. 22, 2014)

Mailed: December 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Injex Pharma AG
________

Serial No. 79119172
_______

Stewart J. Bellus and Sara M. Dorchak of Collard & Roe, P.C.,
for Injex Pharma AG.

Michael Eisnach Trademark Examining Attorney,1 Law Office 104,
Chris Doninger, Managing Attorney.
_______

Before Zervas, Cataldo, and Ritchie,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Injex Pharma AG (“Applicant”) filed an application to register the mark INJEX,
in standard character format, on the Principal Register, for the following goods in
International Class 10:2
needle-free injection system comprising needle-free injector sold empty
for use in releasing medical drugs via disposable needle-free ampoules
for medical drug storage and release, and accessories therefore,
namely, dosing aids in the nature of a transporter into which medical
drugs cartridges can be fixed, in order to allow a dose-accurate transfer
of medical drugs to the empty ampoules, reset box, transporters,

1 This Examining Attorney was substituted into the case after the appeal was filed.
2 Application Serial No. 79119172, filed on July 25, 2012 under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), based on International Registration No. 1132389,
registered on July 25, 2012.
This Opinion Is Not A
Precedent Of The TTAB
Serial No. 79119172
2
adapters for different drug containers; medical apparatus and
instruments for the needle-free hypodermic application of topical or
parenteral medical drugs sold empty; needle-free medical drug delivery
system, namely, needle-free injectors sold empty for medical drugs
administered either subcutaneously, intramuscularly or intradermally,
disposable needle-free ampoules sold empty, storage and carrying bags
and boxes and carrying cases for needle-free injectors; medical fluid
transfer couplers and accessories therefore, namely vial adapters, pen
adapters, transporter adapters, and luer adapters.

The Examining Attorney refused registration of the mark (i) under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that it is merely
descriptive of a feature of the identified goods; and (ii) under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the previously-registered mark INJEKT, registered on the Supplemental
Register in standard character format, for “injection needles,” in International Class
10,3 that when used on or in connection with Applicant’s mark, it is likely to cause
confusion or mistake or to deceive.
Upon final refusal of registration, Applicant filed a timely appeal.4 Both
Applicant and the Examining Attorney filed briefs,5 and Applicant filed a reply
brief.
Section 2(e)(1)
We first consider the refusal under Section 2(e)(1). A term is merely descriptive
if it immediately conveys knowledge of a quality, feature, function, or characteristic

3 Registration No. 3891618, issued December 14, 2010.
4 The Final Office Action also included a third ground for refusal, regarding the definiteness
of the identification of goods. However, this refusal was withdrawn after Applicant
amended its identification of goods in its request for reconsideration.
5 Applicant initially submitted a brief for an unrelated case. Applicant later filed the brief
on this case, and the Board, in its order mailed on July 23, 2014, accepted the later-filed
brief.
Serial No. 79119172
3
of the goods or services with which it is used. See In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012), citing In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). 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 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 its use. That a term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it
is settled that “[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 USPQ2d 1314, 1316-17 (TTAB
2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1538
(TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); and In re American Greetings Corp., 226 USPQ 365, 365 (TTAB 1985).
The Examining Attorney argues that the applied-for mark INJEX identifies “a
key function of applicant’s needle-free injection devices.” (Examining Attorney’s
brief at unnumbered p. 13 of 16). Applicant’s applied-for mark INJEX is the
phonetic equivalent of the term “injects.” (See Appl’s brief at unnumbered p. 4 of 8,
referring to the the root term as “inject”). The Examining Attorney submitted the
following dictionary definition with the November 27, 2012 Office Action:
Serial No. 79119172
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“Inject”: verb To force (a fluid) into a passage, cavity, or tissue: to inject
a medicine into the veins. Dictionary.com 11/26/2012.

The Examining Attorney further submitted evidence of third-party web sites
that discuss or show use of the verb “inject/injects,” used in a descriptive manner in
connection with needle-free systems. Some examples include the following:
Medtechinsider: Medtech Week Recap: Needle-free Device Injects
Drugs to Various Depths: June 11, 2012; A new device developed by
researchers at MIT can inject drugs without the use of a needle. While
similar systems already exist, the new device is said to be the first to
deliver drugs to variable depths in a highly controlled manner.
Attached to September 30, 2013, Final Office Action, p. 43.
http://medtechinsider.com.

MNT: Medical News Today: Jet Device Injects Drugs Without Needles:
25 May 2012; The prospect of less painful medicine shots without
needles came a step closer this month, as US researchers revealed how
they have developed a device that delivers a controlled, tiny, high-
pressure jet into the skin without using a hypodermic needle. . . .
Another advantage of a needle-less device is it may help improve
compliance, for instance among diabetes patients who are reluctant to
use hypodermic needles to inject themselves with insulin. . . . “If you
are afraid of needles and have to frequently self-inject, compliance can
be an issue.” Attached to September 30, 2013, Final Office Action, p.
45.
medicalnewstoday.com.

MIT news: Device may inject a variety of drugs without using needles:
Jet-injected drugs could improve patient compliance, reduce accidental
needle sticks; May 24, 2012; Getting a shot at the doctor’s office may
become less painful in the not-too-distant future. Attached to
September 30, 2013, Final Office Action, p. 53.
http://web.mit.edu.

Bespak: Needle-free Jet Injectors: Bespak Injectables’ reusable needle-
free injectors utilize spring power to inject drugs without a needle. . . .
These injectors are suitable for use with drugs packaged in a range of
vials and cartidges. Attached to April 15, 2014 Denial of Request for
Reconsideration, p. 8.
Bespak.com.

Serial No. 79119172
5
The Examining Attorney notes that Applicant’s own website uses the term
“injects” to describe the function of its needle-free system:

Furthermore, in its identification of goods, Applicant utilizes the terms
“injection” and “injector.”
Applicant, although admitting “[o]bviously, the term has ‘something to do’ with
an injection system,” states that “but the precise characteristic to which that word
refers will not be grasped without ‘some measure of imagination and mental pause,”
citing In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE not descriptive of a
snow removal tool, even though the mark’s significance would become clear upon
contemplation); In re George Weston, Ltd., 228 USPQ 57 (TTAB 1985) (SPEEDI-
BAKE only vaguely suggests desirable quality of frozen dough that can be baked
quickly); In re Geo. A. Hormel & Co., 218 USPQ 286 (TTAB 1984) (FAST ‘N EASY
requires analysis by purchasers to understand the significance of pre-cooked meats
Serial No. 79119172
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that are quickly and easily prepared). (See Appl’s August 27, 2013 Petition to
Revive). We find this case to be distinguishable from those cited, however. There is
no “mental pause,” imagination, or analysis needed to decipher the meaning of
“injects,” in order to understand the significance in relation to the goods identified.
Rather, based on the dictionary definition, the third-party uses, and Applicant’s
own website and identification of goods, we have no doubt that a consumer would
understand INJEX, used in connection with Applicant’s goods, as directly conveying
information about them, namely, that they provide an injection system for the
administration of medicine. Thus, the applied-for mark immediately describes a key
function, characteristic or an aspect of the identified goods. Applicant argues that
there is no “competitive need” for use of the term INJEX with regard to the
identified goods. In this regard, our precedent dictates that the primary purposes
for refusing registration of a merely descriptive mark are “(1) to prevent the owner
of a mark from inhibiting competition in the sale of particular goods; and (2) to
maintain freedom of the public to use the language involved, thus avoiding the
possibility of harassing infringement suits by the registrant against others who use
the mark when advertising or describing their own products.” In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). We find that
the mark is merely descriptive of the identified goods, and we affirm this refusal to
register.

Serial No. 79119172
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Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Each of these factors
may, from case to case, play a dominant role. du Pont, 177 USPQ at 567.
In this case, the strength of the cited registration, or rather the lack of strength,
plays a significant role in our analysis. The cited registration, as noted above, is on
the Supplemental Register. Marks that are not registrable on the Principal
Register, such as those that are merely descriptive within the meaning of Section
2(e)(1) of the Trademark Act, may be registrable on the Supplemental Register. The
registration of INJEKT on the Supplemental Register, rather than on the Principal
Register, indicates that it is a merely descriptive term, and therefore is entitled to a
limited scope of protection. See Quaker State Oil Refining Corp. v. Quaker Oil Corp.,
453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972) (an application for registration on
the Supplemental Register of a particular term is an admission of descriptiveness).
The level of descriptiveness of a cited mark may influence the conclusion that
confusion is likely or unlikely. In re The Clorox Co., 578 F.2d 305, 198 USPQ 337
(CCPA 1978). That is, the descriptiveness of a mark may result in a more narrow
Serial No. 79119172
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scope of protection. As the predecessor to our primary reviewing court stated in
Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295, 297
(CCPA 1958), in which no likelihood of confusion was found between SURE-FIT and
RITE-FIT for ready-made slip covers:
It seems both logical and obvious to us that where a party chooses a
trademark which is inherently weak, he will not enjoy the wide
latitude of protection afforded the owners of strong trademarks. Where
a party uses a weak mark, his competitors may come closer to his mark
than would be the case with a strong mark without violating his rights.
The essence of all we have said is that in the former case there is not
the possibility of confusion that exists in the latter case.

When marks are registered on the Supplemental Register because they are
descriptive, the scope of protection accorded to them has been consequently narrow,
so that likelihood of confusion has normally been found only where the marks and
goods or services are substantially similar. In re Smith and Mehaffey, 31 USPQ2d
1531 (TTAB 1994).
With the foregoing in mind, we consider the similarity or dissimilarity of the
marks. Both are merely descriptive terms, and there are differences in the terminal
lettering of each mark. Further, both marks constitute unusual misspellings of
“inject” or “injects.” The marks hence are not sufficiently similar to make confusion
likely for such weak terms.
With regard to the goods, they are by no means similar, and in fact differ
considerably in that one concerns injection needles and the other concerns injection
systems that do not use needles. Despite the evidence submitted by the Examining
Attorney of a commercial relationship between Applicant's and the registrant's
Serial No. 79119172
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identified goods, the good are quite different. Thus, in view of the differences in the
marks and the goods, and the limited scope of protection to which the cited
Supplemental Registration is entitled, we find that confusion is not likely between
Applicant's mark and the cited registrant’s mark.
Decision: The refusal to register under Section 2(d) is reversed. However, the
Section 2(e)(1) refusal is affirmed.