Pharmavite LLC

Trademark Trial and Appeal Board

Aug 17, 2009

No. 77333250 (T.T.A.B. Aug. 17, 2009)

Mailed:
August 17, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Pharmavite LLC
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Serial No. 77333250
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Daniel J. Russell of Blakely Sokoloff Taylor & Zafman for
Pharmavite LLC.

Dannean J. Hetzel, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Walsh and Bergsman, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Pharmavite LLC (applicant) has applied to register the
alleged mark shown below on the Principal Register for
goods identified as “dietary supplements” in International
Class 5.1 The application describes the alleged mark as
follows, “The mark consists of a design showing two

1 Application Serial No. 77333250, filed November 19, 2007,
asserting first use of the mark anywhere and first use of the
mark in commerce on July 19, 2007.
THIS OPINION
IS A PRECEDENT OF THE
T.T.A.B.
Serial No. 77333250
2
bottles.” The application also states, “Color is not
claimed as a feature of the mark.”

The Examining Attorney has refused registration on the
grounds that the alleged mark shown in the drawing is not a
substantially exact representation of the mark as used in
the specimen, citing Trademark Rule 2.51(a), 37 C.F.R. §
2.51(a).2 The specimen appears below:

2 In the first Office action, the Examining Attorney had also
refused registration on the grounds that the subject matter in
the drawing did not function as a mark. That refusal is not
before us in this appeal because the Examining Attorney withdrew
that refusal in the final Office action.
Serial No. 77333250
3
For convenience, we also show below the particular
panel of the specimen where the Two Bottles Design appears:

We affirm.
To avoid any confusion, we begin by noting that the
alleged mark applicant seeks to register is a two-
dimensional representation of the outline of two bottles as
they appear on the packaging shown here, and not the three-
dimensional shape of the bottles themselves.
The Examining Attorney argues as follows:
Applicant’s drawing of record consists of
two stylized pill bottles with one bottle
slightly overlapping the second bottle. The
drawing only consists of these plain bottles with
no additional wording. The specimen of record
consists of packaging for the identified goods.
On the specimen, the two stylized pill bottles
from the drawing appear; however additional
wording appears on these bottles. On the bottle
on the left, the wording NATURE MADE with a
Serial No. 77333250
4
design and RX ESSENTIALS appears. On the bottle
on the right, the wording RX appears.

The mark as it appears on the drawing page
does not substantially match the mark as it
appears on the specimen of record because the
wording is physically connected to the bottles.
This wording encompasses a large physical space
on the bottles and is centered on the bottles,
thus becoming an integral element of the mark as
displayed on the specimen. It would be
impossible to remove this wording from the
stylized bottles without altering the physical
appearance of the mark as shown in the drawing.
In other words, removing this wording would alter
the commercial impression of the mark and is
therefore a mutilation of the drawing.

Examining Attorney’s Brief at 2.

The Examining Attorney argues further, “… applicant’s
suggestive design is unlikely to make a distinct and
separate commercial impression without the wording included
on applicant’s specimen.” Id. at 3.
On the other hand, applicant argues:
Applicant contends that its Two Bottle
Design mark as shown in the specimen contains the
essential and integral subject matter of the mark
as shown in the drawing. There is nothing
missing from Applicant’s distinctive Two Bottle
Design mark as shown on the drawing. Rather, it
is a complete representation of the mark as shown
on the specimens as no “essential or integral
subject matter” is missing from the mark as shown
on the drawing (citation omitted). … The removal
of the additional matter from the Two Bottle
Design mark does not disturb any aspect of the
Two Bottle Design mark itself. In fact, the
additional elements on the specimen may be
“peeled off” Applicant’s Two Bottle Design mark
without altering the distinctive appearance or
impression created by the design mark. Applicant
Serial No. 77333250
5
contends that the absence of the additional
elements in the drawing is not a mutilation, as
it does not result in registering less than the
entire mark for which registration is sought.

Applicant’s Brief at 3-4.
Applicant argues further that its Two Bottle Design is
not a common geometric shape, and that, “… Applicant’s mark
may be visible at a distance, whereas the additional matter
may be difficult or even impossible to read from a
distance.” Id. at 5.
Trademark Rule 2.51(a) states, “In an application
under section 1(a) of the Act, the drawing of the mark must
be a substantially exact representation of the mark as used
on or in connection with the goods and/or services.” The
specimen is the point of reference in determining whether
the alleged mark shown in the drawing agrees with the mark
in use. In re Software Publishers Assoc., 69 USPQ2d 2009,
2014 (TTAB 2003).
The Court of Appeals for the Federal Circuit, our
primary reviewing court, characterizes the issue before us
as follows:
… the background portion is registrable only if
it “performs a trademark function in and of
itself.” As Professor McCarthy states, “It all
boils down to a judgment as to whether that
designation for which registration is sought
comprises a separate and distinct ‘trademark’ in
and of itself.” 1 J.T. McCarthy, Trademarks and
Unfair Competition 909 (2d ed. 1984). In order
Serial No. 77333250
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to obtain registration of a part of the
background portion of a mark, the applicant
therefore must show that the portion sought to be
registered creates a separate and distinct
commercial impression, which thereby performs the
trademark function of identifying the source of
the merchandise to the customers.

In re Chemical Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828,
1829 (Fed. Cir. 1988).
Furthermore, as the Board noted in an earlier case,
the determinations in these cases are somewhat subjective.
In re Boyd Coffee Co., 25 USPQ2d 2052, 2053 (TTAB 1993).
The circumstances vary widely. In the end, we must decide
each case on the unique facts of the particular case.
Applicant and the Examining Attorney have discussed at
some length cases which address whether or not the subject
matter shown in the drawing is so physically connected to
other subject matter with which it appears in the specimen
that the subject matter shown in the drawing cannot be
registered separately. See, e.g., In re Miller Sports
Inc., 51 USPQ2d 1059, 1061 (TTAB 1999); In re Boyd Coffee
Co., 25 USPQ2d at 2053; In re Speroulias, 227 USPQ 166
(TTAB 1985). The facts in those cases do not correspond to
those before us in this case. The essential issue here is
whether the alleged mark in applicant’s drawing creates a
distinct commercial impression separate and apart from the
words and designs appearing on the bottles, not whether
Serial No. 77333250
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various elements can be separated in any physical sense.
Consequently, we do not find these cases particularly
helpful in this case.
Furthermore, although they may seem superficially
similar, the cases where an applicant is trying to register
a background design apart from wording with which the
background is used are not helpful here either. See, e.g.,
Jimlar Corp. v. Army and Air Force Exchange Service, 24
USPQ2d 1216 (TTAB 1992); In re Volante International
Holdings, 196 USPQ 188 (TTAB 1977); In re The Library
Restaurant, Inc., 194 USPQ 446 (TTAB 1977); and Permatex
Company, Inc. v. California Tube Products, Inc., 175 USPQ
764 (TTAB 1972). The alleged mark in applicant’s drawing
is not a background design in the usual sense.
In this case applicant seeks to register an outline of
two bottles which overlap. The specimen appears to be a
box which applicant uses as packaging for its bottles of
dietary supplements. The box does show two bottles.
Applicant acknowledges that the bottle on the left displays
“Applicant’s well-known registered and common law marks
NATURE MADE and Design (Reg. No. 3520080) and RX ESSENTIALS
(Reg. No. 3434075),” and that the bottle on the right
displays “the common RX symbol.” Applicant’s Brief at 7.
The bottle on the left with applicant’s word and design
Serial No. 77333250
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marks is in the shape of a “generic” dietary supplement
bottle. The bottle on the right, with the RX symbol, is in
the shape of a “generic” prescription medication bottle.
The commercial impression the Two Bottle Design, as
shown on the specimen, projects is that of applicant’s own
bottle for its dietary supplements with its registered word
and design marks and of a prescription bottle, identified
by the RX symbol. The Two Bottle Design mark shown in the
specimen may suggest some, presumably positive, association
between applicant's dietary supplements and prescription
medications.3
Strictly speaking, the simple outline of the two
bottles shown in the drawing, that is, without the NATURE
MADE and RX ESSENTIALS marks and without the RX symbol, is
not present in the specimen. More importantly, we find no
basis to conclude that relevant purchasers would, in any
sense, perceive the “mark” as shown in the drawing, the
mere outlines of bottles, in the mark shown in the
specimen.
We reject applicant’s argument that difficulty in
reading or seeing the word and design marks and the RX

3 The packaging panel where the Two Bottle Design appears
includes the following additional text: “DAILY SUPPLEMENT*
TAILORED TO YOUR PRESCRIPTION”; “TAKE WITH: Nexium®, Prevacid®,
Prilosec®”; and “Provides Essential Nutrients for People Taking
HEARTBURN & ACID REFLUX Medications.”
Serial No. 77333250
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symbol on the bottles from certain distances is even
relevant here. We conclude that these indicia, applicant’s
word and design marks and the RX symbol, are sufficiently
apparent that potential purchasers will see them. More
importantly, we conclude that potential purchasers will not
only see these elements but that they will perceive them as
the defining essence of the Two Bottle Design. That is,
applicant’s word and design marks and the RX symbol are
essential to the commercial impression of the Two Bottle
Design. Therefore, on this record, we conclude that the
outline of the two generic bottle shapes shown in the
drawing does not create a separate and distinct commercial
impression. In re Boyd Coffee Co., 25 USPQ2d at 2053.
In this regard, applicant states in its brief,
“Applicant contends that its consistent usage of its Two
Bottle Design mark in connection with various supplement
products has encouraged and conditioned consumers to view
the mark as a distinct and separate mark apart from any
other elements superimposed thereon.” Id. In the Chemical
Dynamics case, the Federal Circuit addressed a similar
situation:
The vice president's conclusory statement was
insufficient to establish that the dropper and
droplet created a distinct commercial impression.
… The declaration does not state the factual
basis, if any, for the declarant's belief that
Serial No. 77333250
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the dropper and droplet design “has become
distinctive.” There are no facts from which it
could be inferred that customers or the trade
generally so view that separate portion of the
background design. Although the vice president
refers to the “substantially exclusive and
continuous use” of the dropper and droplet as a
mark for five years, he does not state that the
dropper and droplet were so used separately
rather than as part of the entire background or
the broad mark consisting of the background and
the words “7 DROPS.”

In re Chemical Dynamics Inc., 5 USPQ2d at 1830. Here too,
we have only conclusory statements, an allegation of use in
commerce for less than two years and no evidence to support
applicant’s contention that potential purchasers perceive
the alleged mark shown in the drawing as a distinct mark.
Lastly, applicant has argued that the Examining
Attorney’s withdrawal of a previously raised refusal that
the alleged mark shown in applicant’s drawing did not
function as a mark dictates the conclusion that the alleged
mark in the drawing is distinctive and registrable. The
Federal Circuit’s analysis in Chemical Dynamics requires
that we reject this facile argument. The questions as to
whether the subject matter applicant depicts in its drawing
creates a separate and distinct commercial impression and
whether it is registrable remain in spite of the withdrawal
of the additional ground for refusal.
Serial No. 77333250
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In sum, we conclude that the Two Bottle Design shown
in applicant’s drawing does not create a separate and
distinct commercial impression apart from the mark shown in
applicant’s specimen. On that basis we conclude further
that the alleged mark in the drawing is not a substantially
exact representation of the mark as shown in applicant’s
specimen.
Decision: We affirm the refusal on the grounds that
the mark shown in the drawing is not a substantially exact
representation of the mark as used in the specimen as
required by Trademark Rule 2.51(a).