TTAB Reverses 2(d) Refusal of "ORPHAN & Design," Emasculates Cited "ORPHAN MEDICAL" Registrations

According the registered mark ORPHAN MEDICAL virtually no scope of protection, the Board reversed a Section 2(d) refusal of the mark ORPHAN & Design (shown immediately below) ["ORPHAN" disclaimed] for "pharmaceuticals for the treatment of rare diseases" (class 5) and for research and development of drugs (class 42), finding it not likely to cause confusion with the marks ORPHAN MEDICAL for mail order services for prescription drugs, and the mark ORPHAN MEDICAL & Design for "research and development of prescription and over the counter drugs for others" ["MEDICAL" disclaimed in both registrations, owned by the same entity.] In re Orphan Pharmaceuticals, U.S.A., Inc., Serial No. 76207867 (July 14, 2006) [not citable].

The Board first found that ORPHAN is a "clear 'term of art'" in the pharmaceutical industry [an "orphan drug" is one that treats a rare disease affecting fewer than 200,000 Americans], and it therefore ruled that ORPHAN MEDICAL & Design is a weak mark entitled only to a narrow scope of protection. The Board then concluded that "the marks are more dissimilar than similar." Moreover, the "sophisticated and knowledgeable purchasers are not likely to be confused as to the source of the respective Class 42 services [research and development] rendered by applicant and registrant." As to Applicant's goods, they would be marketed in different trade channels and to different classes of purchasers than Registrant's services (i.e., ordinary consumers and doctors versus pharmaceutical companies).


Turning to the ORPHAN MEDICAL registration, although Applicant's goods would be marketed to the same classes of purchasers as Registrant's mail order services, "the scope of protection to be afforded to the cited registered ORPHAN MEDICAL mark is simply too narrow to warrant a finding of likelihood of confusion with applicant's dissimilar ORPHAN and globe design mark." As to Applicant's services (research and development), they would be offered in different trade channels to different purchasers than Registrant's mail order services.

Thus by affording the cited registrations virtually no scope of protection, the TTAB was able to reverse this refusal to register.


TTABlog comment: How did the ORPHAN MEDICAL registrations get through in the first place? The Board, by eviscerating the registrations and allowing the ORPHAN & Design mark to register (with "ORPHAN" disclaimed), may have solved that problem. But isn't the Board's approach akin to an attack on a registered mark, which is supposed to take place only in the context of a cancellation proceeding?

Will the owner of the registrations bring an opposition? It appears that Orphan Medical, Inc. has merged into Jazz Pharmaceuticals, Inc., so maybe not.

Text Copyright John L. Welch 2006.