Thursday, February 08, 2007

"IPHARMACIST" Not Merely Descriptive of PDA Software, Says TTAB

The Board reversed two Section 2(e)(1) refusals to register the mark IPHARMACIST, finding it not merely descriptive of training videos concerning use of personal digital assistants preprogrammed with pharmacy-related information, custom design of software for such PDAs, and printed materials containing such information. In re Apotex Technologies, Inc., Serial Nos. 76449597 and 78429952 (January 29, 2007) [not precedential].

The Examining Attorney argued that "I" stands for "Internet," and that Applicant's own website describes Apotex's goods as being for use by pharmacists who utilize the Internet as a feature of the goods. Apotex maintained that "I" has other meanings, including "interactive" and "information," the "Internet pharmacist" has a common, ordinary meaning (a person who dispenses drugs via the Internet), and that "Internet pharmacists" are not the targeted users of the goods.

The Board found the PTO's evidence insufficient. First, it agreed with Apotex that, as a general rule, an abbreviation or initial cannot be considered descriptive unless it has become "so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith." The PTO failed to show that the suggested meaning of "I" as "Internet" is "the one that would immediately come to mind when [relevant] consumers encounter the involved mark."

In any case, the evidence did not support the contention that the term "Internet" merely describes a significant feature of the goods and services. The fact that the PDAs may be hot-synched with data files on the disk drive of one's PC, and that participating pharmacists may ask for support over the web, does not mean that the word Internet is descriptive.

And, as Apotex contended, the term "Internet Pharmacist" is "just too nebulous in meaning and non-specific in nature for consumers to immediately associate it with a quality or characteristic of the involved products or services."

In sum, the Board could not conclude "that the term IPHARMACIST possesses a merely descriptive significance in connection with the identified goods and services."

Text Copyright John L. Welch 2007.


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