Pharmacy Fulfillment Services, LLC

Trademark Trial and Appeal Board

Mar 19, 2003

No. 75537127 (T.T.A.B. Mar. 19, 2003)

Mailed: March 19, 2003
Paper No. 15
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pharmacy Fulfillment Services, LLC (by change of name
from Rx Store Mail, LLC) having interests assigned from
Joseph S. Rosson (original applicant) via Rx.com, Inc.
________
Serial No. 75/537,127
_______
Mack Ed Swindle, Clark R. Crowley and Thomas F. Harkins,
Jr. of Whitaker Chalk Swindle & Sawyer LLP for Pharmacy
Fulfillment Services, LLC.
Gwen P. Stokols, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Hairston, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pharmacy Fulfillment Services, LLC is the current
owner of an application to register the term RX.COM on the
Principal Register as a mark for services recited, as
amended, as “on-line retail pharmacy services; drug
prescription fulfillment services via the Internet,”1 in
International Class 35.
1 Application Serial No. 75/537,127 was filed by Joseph S.
Rosson on August 14, 1998 based upon applicant’s allegations of a
bona fide intention to use the mark in commerce. An amendment to
allege use was filed in August 2001 by Mr. Rosson’s successor-in-
interest, Rx.com, Inc., claiming first use and first use in
commerce at least as early as March 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/537,127
- 2 -
The Trademark Examining Attorney has refused
registration on the ground that the term RX.COM, when used
in connection with the recited services, is merely
descriptive thereof. 15 U.S.C. §1052(e)(1). After the
Trademark Examining Attorney made the refusal to register
final, applicant filed a notice of appeal.
Both applicant and the Trademark Examining Attorney
have filed briefs.2 Applicant did not request an oral
hearing.
We affirm the refusal to register.
The Trademark Examining Attorney’s position is that
the mark RX.COM is merely descriptive of applicant’s
services “because the term RX is a widely known
abbreviation for a medical prescription” (Trademark
Examining Attorney’s brief, p. 4) and “[t]he term ‘.com’ is
a top-level domain and merely acts as an Internet entity
designation.” (Trademark Examining Attorney’s brief, p. 6).
She then concludes that “[a]ccordingly, the descriptive
term (RX), combined with a term that is not a source-
identifier (.COM) produces a merely descriptive mark in
connection with the identified services.” (Id.)
2 As will be discussed later in this opinion, applicant
requested in its brief that the Board permit amendment to the
Supplemental Register in the event that we find this mark to be
merely descriptive under Section 2(e)(1) of the Act.
Serial No. 75/537,127
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By contrast, applicant argues: that in common
parlance, the term “Rx” has come “to refer to a remedy or
cure for any type of problem, not just health related
problems” (applicant’s brief, p. 11); that applicant plays
the part of a “middle man,” not that of “filling
prescriptions” in the traditional sense (Id.); and that the
combined term only suggests some connection with
pharmaceuticals and the Internet.
The Trademark Examining Attorney relies on the
following dictionary definitions for the significance of
the term “Rx”:
RX Prescription http://www.acronymfinder.com
Rx a medical prescription [Cambridge University
Press’ English Language Teaching Dictionaries
Online]
Rx prescription http://www.allwords.com
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978); and In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB
Serial No. 75/537,127
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1992). It is not necessary that a phrase describe all of
the properties or functions of the goods or services in
order for it to be considered merely descriptive thereof;
rather, it is sufficient if the phrase describes a
significant attribute or idea about them. Moreover, it is
well-established that the determination of mere
descriptiveness must be made, not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the possible significance that the phrase would have to the
average purchaser of such goods or services. In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In
re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Consequently, “[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). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. In re Home Builders Association of Greenville,
18 USPQ2d 1313 (TTAB 1990).
Serial No. 75/537,127
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Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Trademark
Examining Attorney that the asserted mark RX.COM is merely
descriptive of applicant’s services.
First, as noted, we must consider the question of
descriptiveness in the context of actual or prospective
use, not whether potential consumers or users will be able
to guess what the services are but rather whether the mark,
as used in connection with the services, describes a
quality, feature or characteristic of the services.
Therefore, we consider the mark RX.COM as used on or in
connection with a website providing drug prescription
fulfillment services.
Applicant is correct in noting that the term “Rx” is
sometimes used to refer to a remedy for a variety of
problems, not just health related problems.3 However, as
explained, the Board must evaluate the significance of the
term “Rx” in the context of a website providing drug
prescription fulfillment services. Moreover, applicant
attempts to characterize its “middle man” role as quite
different from the way one’s local druggist traditionally
3 A dictionary entry submitted by the Trademark Examining
Attorney contained, as a second entry, this more general meaning
of a remedy for non-medical problems.
Serial No. 75/537,127
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filled prescriptions. However, the very terms of the
recital of services herein differ from traditional retail
pharmacy or drug prescription fulfillment services only in
that these services, as recited, involve the use of the
Internet. And of course, the .COM suffix portion of the
mark makes it clear that this designation identifies a
commercial site on the Internet.
While the only issue herein is whether the term RX.COM
is merely descriptive, we have recently found similarly
constructed marks comprising generic matter plus a top-
level domain name to be incapable of achieving
distinctiveness. Compare In re CyberFinancial.Net, Inc.,
___USPQ2d___, Serial No. 75/482,561 (TTAB August 28, 2002)
[BONDS.COM held unregistrable for, among other things,
online informational services regarding such financial
products as debt instruments and related investments]; and
In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002)
[CONTAINER.COM held generic and incapable of registration on
the Supplemental Register when used in connection with
“retail store services and retail services offered via
telephone featuring metal shipping containers” and “rental
of metal shipping containers”].
Finally, we turn to the question of whether applicant
still has the option of salvaging a Supplemental
Registration from this application. Applicant never
Serial No. 75/537,127
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actually filed an amendment requesting that the application
be amended to seek registration on the Supplemental
Register, even as an alternative argument to the refusal
under 15 U.S.C. §1052(e)(1). Accordingly, the Trademark
Examining Attorney was never faced with the issue of
whether this mark would even be acceptable for registration
on the Supplemental Register. In fact, in opposing this
tardy option, the Trademark Examining Attorney noted that
RX.COM might well be incapable of achieving trademark
significance in light of recent Board decisions in
CyberFinancial.Net, supra and Martin Container, supra.
Inasmuch as this option was not raised by applicant until
the time of its appeal brief and hence this option was not
considered by the Trademark Examining Attorney, we agree
with the Office’s contention that this request came too late
in the proceeding to remain an option for this particular
application. See In re Petite Suites, Inc., 21 USPQ2d 1708
(Comm’r Pats. 1991).
Decision: The refusal to register is affirmed.