Unigene Laboratories, Inc.

Trademark Trial and Appeal Board

Sep 30, 2008

No. 78679390 (T.T.A.B. Sep. 30, 2008)

Mailed: September 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Unigene Laboratories, Inc.
________

Serial No. 78679380
Serial No. 78679390
Serial No. 78679397

_______
Charles P. LaPolla, Esq. of Ostrolenk, Faber, Gerb &
Soffen, LLP for Unigene Laboratories, Inc.

Dominic Fathy, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Grendel and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On July 27, 2005, Unigene Laboratories, Inc. filed
applications to register the following marks:
SECRAPEP (in standard character format) for:
Biochemical preparations in the nature of bio-
technology based preparations for medical and
veterinary purposes in International Class 5;1 and

ENTERIPEP (in standard character format) for:
Bio-technology based delivery agents that facilitate
the delivery of pharmaceuticals for medical and
veterinary purposes in International Class 5;2 and

1 Application Serial No. 78679380. Notice of Allowance was
mailed on May 30, 2006.
2 Application Serial No. 78679397 (filed on July 27, 2005).
Notice of Allowance was mailed on April 4, 2006.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 78679380, 78679390, and 78679397
2
NASAPEP (in standard character format) for:
Bio-technology based delivery agents that facilitate
the delivery of pharmaceuticals for medical and
veterinary purposes in International Class 5.3

The applications were based upon applicant’s allegation of
a bona fide intention to use the mark in commerce. The
applications were published for opposition and a notice of
allowance subsequently issued with respect to each
application.
Applicant filed a statement of use for each
application; in doing so, applicant attached the same
specimen of use and alleged the same date (September 12,
2006) of first use anywhere and first use in commerce. The
specimen appears as follows:

3 Application Serial No. 78679380 (filed on July 27, 2005).
Notice of Allowance was mailed on April 4, 2006.
Serial Nos. 78679380, 78679390, and 78679397
3
In each application, the trademark examining attorney
issued a refusal on the ground that the specimen submitted
was not acceptable to show use of the mark in connection
with the identified goods. Specifically, he stated that
the specimen “comprises what appears to be an advertisement
for the applicant’s goods” and, as such, is not acceptable.
Applicant filed responses wherein it argued against
the refusal. Specifically, in each case, applicant
essentially argued that the specimen “constitutes an
appropriate display associated with the goods at their
point-of-sale”; that the display “has been projected on a
wall at a trade show booth where perspective purchasers
were in a position to place orders for the goods”; and
therefore “the specimen...constitutes a point-of-sale
presentation in the same manner as a banner, shelf talker
window display, menu or similar device as permitted under
TMEP 904.06.”4 Moreover, applicant argued that because of
“the nature of the goods,...[i]t has to be anticipated that
point-of-purchase displays would be the natural form of
specimen for such goods in view of the microscopic and
intangible nature of such bio-technology based goods.”5

4 These arguments were made in applicant’s June 20, 2007 response
for application Serial No. 78649380, but nearly identical
arguments were made in its responses in the other two
applications.
5 Id.
Serial Nos. 78679380, 78679390, and 78679397
4
The examining attorney, however, was not persuaded by
applicant’s arguments and issued a final refusal to
register for each application.
Applicant filed notices of appeal and requests for
reconsideration. The examining attorney denied the
requests for reconsideration and maintained the refusal to
register the three marks based on the ground that specimen
was not acceptable for the identified goods. Applicant and
the examining attorney thereafter filed briefs.
Applicant’s appeals in the three referenced
applications are hereby consolidated and shall be decided
in this single opinion.
As a preliminary matter, we address the examining
attorney's objection to evidence applicant submitted for
the first time with its appeal brief.6 Specifically,
applicant submitted printouts from the Wikipedia online

6 In its reply brief, applicant notes the examining attorney’s
objection. Applicant does not withdraw its submission of the
evidence, but requests that we take judicial notice of the
definition of “peptide” from the Merriam-Webster Online
Dictionary (2008). It is well settled that the Board may 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). This includes online reference works which exist in
printed format or have regular fixed editions. See In re Red
Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Accordingly, the
“peptide” definition has been considered.
Serial Nos. 78679380, 78679390, and 78679397
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encyclopedia website concerning “peptide.” The Examining
Attorney objects to this evidence as untimely and, “as it
is a Wikipedia article, that the examining attorney has not
had the opportunity to rebut.” Examining Attorney’s Brief,
(unnumbered) p. 4. The Examining Attorney's objection is
well taken. The record must be complete prior to appeal,
subject to certain exceptions not relevant here. See 37
C.F.R. § 2.142(d). Applicant's submission here is clearly
late. Furthermore, as the examining attorney alluded to,
we will not take judicial notice of evidence from Wikipedia
or other sources which are available only online. See In
re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also In re IP Carrier Consulting Group, 84
USPQ2d 1028 (TTAB 2007) (Wikipedia evidence only admissible
when there is an opportunity to verify its accuracy).
Accordingly, we have not considered the Wikipedia evidence.
Nonetheless, we note that, even if we had considered it, we
would not decide the case differently.
We turn then to the merits of the appeal. The sole
issue for consideration is whether the specimen submitted
by applicant with its statements of use is acceptable to
show use of the mark in connection with the identified
goods. Narrowing the issue further, in its brief,
applicant states “[t]he sole issue presented by this appeal
Serial Nos. 78679380, 78679390, and 78679397
6
is whether the specimen submitted...may be construed as a
point-of-sale display associated with the goods.” Brief,
p. 2. In this regard, we note that Trademark Rule
2.56(b)(1) provides:
A trademark specimen is a label, tag, or
container for the goods, or a display associated
with the goods. The Office may accept another
document related to the goods or the sale of the
goods when it is not possible to place the mark
on the goods or packaging for the goods.

Trademark Rule 2.88(b)(2), applicable to this
application because applicant filed its specimen with its
Statement of Use, requires a specimen of the mark as
actually used in commerce, and specifically refers to Rule
2.56 for the requirements for specimens.
Further, Section 45 of the Trademark Act states, in
pertinent part, that a mark is deemed to be in use in
commerce
(1) on goods when –
(A) it is placed in any manner on the goods or
their containers or the displays associated
therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes
such placement impracticable, then on documents
associated with goods or their sale, …

Applicant argues that the specimen is a display
associated with the goods; applicant notes that it has
repeatedly advised the examining attorney that “the display
[of the specimen] was projected on a wall at trade shows
Serial Nos. 78679380, 78679390, and 78679397
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where prospective purchasers were in a position to place
orders for the goods.” Brief, p. 1. Applicant states that
“[w]ith sales representatives in close proximity to the
projection, it is inevitable that the projection is
designed to act as a banner intended to stimulate sales.”
Brief, p. 3 (emphasis in original). Applicant asserts that
the latter statements regarding use of the specimen at
trade shows is supported by a declaration (signed by
applicant’s counsel) at the end of its request for
reconsideration.
The examining attorney, on the other hand, contends
that the specimen fails to meet the criteria (previously
set forth in case law) to be considered displays associated
with the goods. She argues specifically that the specimen,
in all three applications, does not show an appropriate
relationship with the goods and notes there is no
information relating to the sale of goods, such as price,
ordering information, or a picture of the goods. She also
disputes applicant’s contention that there are sales
representatives nearby or otherwise call attention to
purchasers that a product is available for sale.
The TMEP sets out factors to consider when determining
whether a specimen is a display associated with the goods.
Serial Nos. 78679380, 78679390, and 78679397
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A display must be associated directly with the goods
offered for sale. It must bear the trademark
prominently. However, it is not necessary that the
display be in close proximity to the goods. See In re
Marriott Corp., 459 F.2d 525, 173 USPQ 799 (C.C.P.A.
1972); Lands' End Inc. v. Manbeck, 797 F. Supp. 511,
24 USPQ2d 1314 (E.D. Va. 1992).

Displays associated with the goods essentially
comprise point-of-sale material, such as banners,
shelf-talkers, window displays, menus and similar
devices.

These items must be designed to catch the attention of
purchasers and prospective purchasers as an inducement
to make a sale. Further, the display must prominently
display the trademark in question and associate it
with, or relate it to, the goods. In re Osterberg, 83
USPQ2d 1220 (TTAB 2007); In re Morganroth, 208 USPQ
284 (TTAB 1980) (purported mark was so obfuscated on
the specimen that it was not likely to make any
impression on the reader). The display must be
related to the sale of the goods such that an
association of the two is inevitable.

TMEP § 904.03(g) (5th ed. rev. September 2007).

Applicant also cites to, and relies heavily on, the
Board’s decision in In re Shipley Co., 230 USPQ at 694
(TTAB 1985). The Board, reversing the examining attorney’s
refusal in that case, found that applicant’s use of its
mark at a trade show booth amounted to a point of sale
display and demonstrated use of applicant’s mark on the
identified goods. In that case, the applicant not only
submitted pictures showing applicant’s mark being used on
its trade show booth, but also submitted a declaration from
Serial Nos. 78679380, 78679390, and 78679397
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applicant’s marketing communications director averring
that:
[A]t all trade shows where [applicant] has such a
booth, [applicant’s] sales personnel are at the booth
at all times during the show promoting and selling
[applicant’s] products, and though products are not
always in close proximity to the booth, point of sale
materials such as product literature, banners,
displays, etc., are at the booths and . . . the
display of the identified trademark at the booth is
intended to catch the attention of purchasers and
prospective purchasers as an inducement to consummate
the sale of chemicals for use in the fabrication of
printed circuit boards.

In Shipley, the Board made absolutely clear that
decisions regarding this type of specimen to show use for
goods were to be made on a case-by-case basis and depended
heavily on the evidence submitted. “In holding this use to
be a display associated with the goods, we do not intend to
establish a broad rule that any and all signs bearing a
mark establish use in commerce for any and all
goods...Here, the proof, that is, the circumstances of use
shown in the specimens and explained in the declaration
supporting them, convince us that applicant's use is a
‘display associated” with the goods.’” 230 USPQ at 694.
The present record differs significantly from that in
Shipley and we are not able conclude, on this record, that
applicant’s specimen amounts to a point of purchase
display. For each application, applicant only submitted
Serial Nos. 78679380, 78679390, and 78679397
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the specimen above which its counsel states, albeit under
signature of a declaration, is projected on a wall at trade
shows. There is no evidence showing the manner in which
the specimen is used. Specifically, there is no photograph
of the actual trade show exhibit or projection of the
specimen or a declaration by someone with personal
knowledge attesting to the manner in which the specimen was
used. As to the “declaration” of applicant’s counsel, this
no probative value because there is nothing in the
declaration, or elsewhere in the record, to suggest that
applicant’s counsel has personal knowledge of how the
specimen was being projected or that sales representatives
were present at the trade show booths.
The specimen, on its face, falls short of amounting to
a point of purchase display. As the examining attorney
correctly notes, there is no association of applicant’s
marks with the identified goods. Moreover, applicant’s
marks are followed immediately by “technology for nasal
delivery of peptides,” or “technology for manufacturing
peptides,” or “technology for oral delivery of peptides.”
The use of the term “technology” certainly obfuscates
whether the mark is even identifying goods. Indeed, we
find it very likely that this language may lead one to
believe that the mark is identifying a process, method or
Serial Nos. 78679380, 78679390, and 78679397
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procedure. Also, noticeably absent in the specimen is any
inducement for the consumer to purchase any goods; there is
no information regarding price or how one may even begin to
purchase applicant’s identified goods, not even a telephone
number or an address.
Applicant alternatively argues that, in view of the
nature of the identified goods, the specimen should be
considered acceptable as “another document related to the
goods or the sale of the goods,” citing to TMEP § 904.03(k)
(5th ed. rev. September 2007). Applicant explains that its
goods are a “bio-technology based preparation, microscopic
and intangible in nature, and submits that they are akin to
natural gas or chemicals that are transported in tankers,
both are which are also intangible in nature.” Brief, p.
5.7
The TMEP section cited by applicant specifically
states that the examining attorney may accept another
document related to the goods “when it is not possible to
place the mark on the goods, packaging, or displays
associated with the goods.” (emphasis added). Any
reliance by applicant on this section must therefore be

7 Brief filed in Serial No. 78679380. Same essential argument,
if not verbatim, was made in applicant’s reply briefs filed with
respect to the other two applications.

Serial Nos. 78679380, 78679390, and 78679397
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based on an assumption that the specimen is not a point of
purchase display. See In re Genitope Corporation, 78
USPQ2d 1819, 1822 (TTAB 2006) (“If applicant is asserting
that the nature of its product precludes it from creating a
display associated with the goods that satisfies the
requirements of the Trademark Act, as it has been
interpreted by case law, then applicant may not be able to
rely on a display associated with the goods as its evidence
of trademark use, but rather would have to submit evidence
of a different manner of use.”).
Although we have found that applicant’s specimen is
not a point of purchase display, we are not able to
conclude, as applicant requests in its alternative
argument, that such use is impractical. Indeed, the record
in the Shipley case demonstrated that an applicant may use
point of purchase displays to show use of a mark on goods
highly similar in nature to those of applicant herein.8 In
any event, applicant here has not demonstrated that its
goods are of such a nature that traditional trademark use
is not practical. The record is unclear as to how
applicant actually transports or delivers its goods to its

8 In Shipley, applicant’s goods were identified as
“biopharmaceutical preparations used to treat cancer in humans, namely,
individualized cancer treatments prepared specifically for each
individual patient from whom tumor tissue has been received.”

Serial Nos. 78679380, 78679390, and 78679397
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consumers. If they are delivered in laboratory containers,
then it is likely that these containers could be labeled or
affixed somehow with applicant’s marks. Although applicant
has submitted a definition of “peptide” and argues that
peptides are “not pills...do not take a shape or form...,”
applicant’s goods are not peptides. Applicant’s goods, as
applicant describes them, are biochemical preparations and
delivery agents to be used either with or in the
manufacturing of peptides. Without any further evidence,
we are not able to accept applicant’s contention that its
goods are of such a nature that traditional trademark use
is not practical. In re Settec, Inc., 80 USPQ2d 1185 (TTAB
2006) (A mere assertion of impracticability does not
suffice to establish that traditional trademark use is
impracticable).
In summary, we conclude that the specimen submitted by
applicant with its statements of use is not acceptable to
show use of the mark in connection with the identified
goods in all three applications. Contrary to applicant’s
contention, we find that the specimen is not a display
associated with the goods. Moreover, applicant has not
demonstrated that its goods are of such a type that it is
not possible for applicant to make trademark use by placing
the mark packaging or displays associated with the goods.
Serial Nos. 78679380, 78679390, and 78679397
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Decision: The refusal of registration in all three
applications is affirmed.