Naturopathic Laboratories International Inc.

Trademark Trial and Appeal Board

Nov 13, 2003

No. 76305377 (T.T.A.B. Nov. 13, 2003)

Mailed: November 13, 2003
Paper No. 10
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UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Naturopathic Laboratories International Inc.
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Serial No. 76305377
_______
Dennis H. Cavanaugh of Ullman, Shapiro & Ullman for Naturopathic
Laboratories International Inc.
Ronald McMorrow, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Simms, Seeherman and Hohein, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Naturopathic Laboratories International Inc. has filed
an application to register the term "PATCH4PAIN" for "topical
analgesics."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
term "PATCH4PAIN" is merely descriptive of them.
1 Ser. No. 76305377, filed on August 25, 2001, which is based on an
allegation of a bona fide intention to use such term in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76305377
2
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 (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 consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Ser. No. 76305377
3
Applicant contends that the term "PATCH4PAIN" is
suggestive rather than merely descriptive of its topical
analgesics, arguing that such term fails to convey information as
to the ingredients, qualities or characteristics of its goods
with the required degree of particularity. According to
applicant:
[C]onsumers must engage in a multi-stage
reasoning process in order to connect the
mark to the particular goods. Upon hearing
or seeing the term ..., consumers are
unlikely to make the immediate connection
between the mark and a topical analgesic
delivered transdermally via a skin patch.
Furthermore, the term "patch for pain" has
been used to describe many different types of
goods, thereby precluding a finding of [mere]
descriptiveness. [Citation omitted.] A
recent internet search for "patch for pain"
revealed the term is currently being used to
describe a variety of products including
animal tranquilizers, magnetic pain patches
for arthritis, bandages, wraps, and plaster
patches. Therefore, the connection between
"PATCH4PAIN" and topical analgesics is not an
immediate one. The degree of particularity
with which Applicant's mark describes the
identified goods, namely topical analgesics,
is lacking here. The mark does not indicate
what type of pain is being relieved, how the
patch works, how or where it is to be
applied, what ingredients are present, or how
the analgesic is being released. The
ambiguity of the mark and the lack of
information about key characteristics of the
goods indicates that Applicant's mark is
suggestive.
In addition, applicant maintains that in view of the
"level of fancifulness" inherent in the term "PATCH4PAIN," such
term is suggestive rather than merely descriptive of its goods
inasmuch as "competitors can still use the words 'patch for pain'
to describe their [topical analgesic] products without infringing
on Applicant's mark." Specifically, applicant asserts that
Ser. No. 76305377
4
because "'PATCH4PAIN' is a composite mark made up of three
components, 'PATCH,' '4,' and 'PAIN,'" in which the words "PATCH"
and "PAIN" are separated by the number "4," "a suggestive mark is
created."2 Furthermore, applicant maintains that, even if the
individual components of the composite term "PATCH4PAIN" are
2 Applicant, in its initial brief, also argues that "[n]umerous marks
related to Applicant's goods have been allowed for registration using
the word 'PATCH' and other descriptive components," listing as
examples thereof the following: "ALLERPATCH" for an asthma patch;
"SPRAY-PATCH" for cosmetics and medicated dermatological products;
"MEDIPATCH" for medical bandages; and "DENTIPATCH" for an oral patch
for delivering anesthetics and analgesics. In view thereof, and
because, according to applicant, several other "marks have also been
found to be non-descriptive," including "INVISIBLE PATCH" for
medicinal and nutritional skin gel and skin lotion for use as
nutritional supplements, applicant essentially contends that the term
"PATCH4PAIN" should likewise be "allowed for registration." However,
in his brief, the Examining Attorney "respectfully requests that the
Board not consider the applicant's arguments regarding third-party
registrations and applications because copies of the registrations
[and applications] were not properly made of record." In particular,
because the information applicant furnished consisted only of a
listing of various marks and the goods associated therewith, the
Examining Attorney states that he "is aware that objection to this
improper evidence should have been made previously and respectfully
requests that the [B]oard waive this requirement in light of the
assignment of this application to a new examining attorney after
issuance of the final refusal."
The Examining Attorney's request is denied. While it is true
that as a general proposition, a mere listing of information
concerning third-party registrations and applications is insufficient
to make such properly of record and that copies thereof, obtained from
the official records of the United States Patent & Trademark Office
must instead be furnished, see, e.g., In re Duofold Inc., 184 USPQ
638, 640 (TTAB 1974), the failure of the previous Examining Attorney
to object to the nature of the evidence furnished by applicant,
coupled with her having treated such evidence as being of record,
constituted a waiver of any objection thereto which is binding on the
current Examining Attorney. In consequence thereof, while the limited
information furnished by applicant is considered to be of record
(although the copies of the third-party applications and registrations
submitted with applicant's reply brief are clearly untimely under
Trademark Rule 2.142(d) and have been given no consideration), it is
nonetheless pointed out that each case ultimately must be determined
on its own merits and that allowance of prior third-party marks is not
determinative of the registrability of applicant's mark. See, e.g.,
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) ["Even 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"].
Ser. No. 76305377
5
considered as being merely descriptive of its goods, the
combination thereof "does not necessarily result in a descriptive
composite mark." Any doubt in such regard, applicant insists,
should be resolved in its favor, citing In re Morton-Norwich
Products, Inc., 209 USPQ 791 (TTAB 1981); and In re Gourmet
Bakers, Inc., 173 USPQ 565 (TTAB 1972).
The Examining Attorney, relying on dictionary
definitions which he requests that the Board take judicial notice
of,3 argues on the other hand that "[t]he proposed mark is
clearly descriptive based on the ordinary meanings of the terms
combined." Specifically, noting that The American Heritage
Dictionary of the English Language (3rd ed. 1992) defines, in
relevant part, the word "patch" as signifying "[a] transdermal
patch," lists the preposition "for" as being "[u]sed to indicate
the object, aim, or purpose of an action or activity" and sets
forth the noun "pain" as meaning "[a]n unpleasant sensation
occurring in varying degrees of severity as a consequence of
injury, disease, or emotional disorder," the Examining Attorney
contends that:
The applicant has conceded that the term
PATCH is descriptive when used on or in
connection with the relevant goods. The
applicant's response to the first Office
Action states that "it is not disputed that
the word 'PATCH' is a descriptive term for a
3 Such request is granted inasmuch as it is settled that the Board may
properly take judicial notice of dictionary definitions. See, e.g.,
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97
USPQ 330, 332 (CCPA 1953); University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills,
Inc. v. American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
Ser. No. 76305377
6
device to transmit some substance to the
skin, such as an analgesic." .... For a
mark that combines descriptive terms to be
registrable, the composite must create a
unitary mark with a separate, nondescriptive
meaning. In re Ampco Foods, Inc., 227 USPQ
331 (TTAB 1985). The applicant believes that
it has created such a mark by using the
number 4 to separate the terms "PATCH and
PAIN. However, the use of the number "4" to
replace the word "for" does not alter or
obviate the descriptiveness of the mark as a
whole because the two are phonetic
equivalents. See In re Hubbard Milling Co.,
6 USPQ2d 1239 (TTAB 1987). The mark
"PATCH4PAIN" does not have a separate,
nondescriptive meaning apart from the
meanings of the individual terms [combined].
The applicant has argued that the
proposed mark is merely suggestive because it
"does not indicate what type of pain is being
relieved, how the patch works, how or where
it is applied, what ingredients are present,
or how the analgesic is released." ....
However, it is not necessary that a term
describe all of the purposes, functions,
characteristics or features of the goods to
be merely descriptive. It is enough if the
term describes one attribute of the goods.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982).
Rather than being suggestive, the
proposed mark is so highly descriptive that
relevant consumers would immediately
ascertain the nature and use of the goods
without even considering the mark in context
with the goods since it quite clearly
indicates that the goods are patches used to
treat pain. The promotional materials made
of record via the applicant's response to the
first Office Action and the applicant's
statements made in conjunction therewith
verify that this is in fact the case.
Therefore, since the proposed mark
immediately indicates both the nature and use
of the goods, it is merely descriptive within
the meaning of Section 2(e)(1) of the
Trademark Act.
As stated in its response to the initial Office Action,
the promotional materials made of record by applicant and
Ser. No. 76305377
7
referred to above by the Examining Attorney consist of "printouts
from the Internet showing THERAPATCH ... products." The goods
which are the subject of the present application, as noted by
applicant, are "intended to be marketed in the same manner and
for the same use as THERAPATCH [products]," which are "generally
sold over-the-counter in drug stores and pharmacies." The
"THERAPATCH" products are referred to in such promotional
materials as, inter alia, a "PAIN RELIEF PATCH" which "provides
temporary relief directly on the site of pain or discomfort."
In addition, the record contains various excerpts taken
from a search of the "NEXIS" database which show that patches are
commonly used to apply or deliver analgesics. Representative
examples thereof are reproduced below (emphasis added):
"The use of external patches ... has
helped boost sales in the external analgesics
sector." -- Chain Drug Review, July 2, 2001;
"For instance, the company was among the
first suppliers to bring external analgesic
patches to the United States market when it
introduced the Mentholatum Pain Patch in the
mid-1990s.
....
Sokol and Nash say that patches
represent the future of external analgesics."
-- Chain Drug Review, July 2, 2001;
"Alza developed the opioid analgesic
Duragesic in transdermal patch form now
marketed by Janssen ...." -- Medical
Marketing & Media, May 1, 2001;
"'... all the new patch products, that's
starting to fuel the growth of this
category.' Citing data from Information
Resources Inc., Quinn pegged the patch piece
of the analgesic business at $25.5 for the
year ending in December 2000. ....
The TheraPatch line includes two non-
medicated SKUs, as well as a couple of
Ser. No. 76305377
8
analgesic offerings that utilize the patch as
a drug delivery device. ...." -- Drug Store
News, April 9, 2001 (article headlined:
"EXTERNAL ANALGESIC PATCHES SPELL RELIEF FOR
AILING PAIN RELIEF CATEGORY");
"Alza specializes in drug delivery
systems, such as Duragesic (fentanyl
transdermal system), an analgesic patch
licensed by J&J." -- Drug Topics, April 2,
2001;
"Much of the positive momentum in the
topical analgesics category these days is
coming from patch products, items that are
winning increasing trial and acceptance from
consumers.
....
... retailers generally display the
entire line in the analgesics section,
because patches can be presented as an
effective complementary therapy when combined
with internal pain relievers." -- Chain Drug
Review, February 26, 2001 (article headlined:
"Patch products gain ground among consumers;
topical analgesics"); and
"Absorbine Jr. Pain Relieving Patch ...
capitalizes on the growth potential of the
hottest new segment in the external
analgesics category. ....
... segment will continue to grow
because of the effectiveness of the patch as
a delivery system and its ability to provide
sustained treatment over time. Analgesic
patches have been used for well over a decade
in Asia, but they are just building momentum
in the American market." -- Business &
Industry, February 5, 2001.
Upon consideration of the above evidence and arguments,
we agree with the Examining Attorney that the term "PATCH4PAIN"
is merely descriptive of applicant's "topical analgesics." In
particular, as the record shows, the word "patch" is defined as
signifying "[a] transdermal patch" and thus, as applicant admits,
"the word 'PATCH' is a descriptive term for a device to transmit
some substance to the skin, such as an analgesic." The numeral
Ser. No. 76305377
9
"4" in the term "PATCH4PAIN" is clearly the phonetic equivalent
of the word "FOR" and is akin to a slight misspelling of such
word; it plainly has no significance in the context of
applicant's goods as literally either the number "4" or the word
"FOUR." Furthermore, the word "PAIN" in the term "PATCH4PAIN" is
descriptive of the unpleasant sensation or condition applicant's
goods are used to reduce or alleviate.
Clearly, when the terms "PATCH," "4" and "PAIN" are
combined to form the term "PATCH4PAIN," such term conveys
forthwith, without speculation or conjecture, that a significant
purpose, function or use of applicant's topical analgesics is
that the goods are a patch for pain relief. Actual and
prospective purchasers of applicant's goods would therefore
immediately understand the nature of its topical analgesics and
what it is that such goods do. Nothing in the term "PATCH4PAIN"
is incongruous, ambiguous or suggestive, nor is there anything
about such term which requires the exercise of imagination,
cogitation or mental processing or which necessitates the
gathering of further information in order for the merely
descriptive significance thereof to be readily apparent.
Additionally, the fact that potential competitors of applicant
may be able to describe their topical analgesics by terms other
than "PATCH4PAIN" (or the phonetic equivalent thereof, "PATCH FOR
PAIN,") does not mean that such term is not merely descriptive of
applicant's goods. See, e.g., Roselux Chemical Co., Inc. v.
Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA
1962).
Ser. No. 76305377
10
Moreover, while it is true that, in order for a term to
be held merely descriptive, it must describe an attribute of the
associated goods with some particularity, there is no requirement
that the term describe the goods exactly or in all respects.
See, e.g., In re Entenmann's Inc., 15 USPQ2d 1750, 1751 (TTAB
1990) [term "OATNUT" held merely descriptive of bread containing
oats and hazelnuts because it "readily informs purchasers, with
the required degree of particularity, of two not inconsequential
ingredients" of the product, even though the kind of nut is not
specified by such term]. Here, as indicated previously, the term
"PATCH4PAIN" immediately informs customers for applicant's
topical analgesics that a significant purpose, function or use of
the goods is that of a patch for pain relief. That such term
"does not indicate what type of pain is being relieved, how the
patch works, how or where it is to be applied, what ingredients
are present, or how the analgesic is being released," as argued
by applicant, does not mean that "PATCH4PAIN" is ambiguous or
otherwise lacking in specific information about key aspects of
applicant's goods. Rather, such term possesses the requisite
degree of particularity and is accordingly merely descriptive of
applicant's goods within the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.