Monday, June 09, 2008

Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal

Finding that the mark fails to function as a service mark, the Board affirmed a refusal to register LIQUIDADVANTAGE, in standard character form, for "custom manufacturing of pharmaceuticals featuring liquid fill and finish technology." In the specimen of use, the term was used to refer to Applicant DSM's proprietary software but not to the recited services. In re DSM Pharmaceuticals, Inc., 87 USPQ2d 1623 (TTAB 2008) [precedential].

The Board perused the specimen one-page brochure submitted by the Applicant (see page 4 of the decision), and found it wanting:

"As the examining attorney observed, the term LIQUIDADVANTAGE in this specimen clearly refers to a proprietary software by that name. Nowhere does the specimen show a direct association between use of the proposed LIQUIDADVANTAGE mark and 'custom manufacturing of pharmaceuticals featuring liquid fill and finish technology.'"

In reaching a total of eight pages in this rather straightforward ruling, the Board cited and distinguished a number of prior decisions, eventually making this final point:

"As explained by the CCPA in In re Universal Oil Products Co., 177 USPQ at 457, it is insufficient for an applicant to use the desired mark in connection with the advertisement of a process where applicant seeks to register that mark in connection with a service even though, as here, the brochure may also mention the service apart from the mark. In the words of the CCPA: 'Direct association is the minimum it must show.'"

Text Copyright John L. Welch 2008.


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