Thursday, October 29, 2009

TTAB Reverses "RADIUS" 2(d) Refusal, PTO Read Registrant's Services Too Broadly

The Board reversed a Section 2(d) refusal of the mark RADIUS & Des. for "research services in the fields of pharmaceuticals and medicines," finding it not likely to cause confusion with the registered mark RADIUS for "product design and development services for others." The Examining Attorney maintained that registrant's services presumably encompass the design and development of pharmaceuticals for others and therefore are related to Applicant's research services. Not so fast, said the Board. In re Radius Health, Inc., Serial No. 78797031 (October 27, 2009) [not precedential].

Applicant Radius Health contended that its services are readily distinguishable from those of the cited registration because the latter do not encompass the design and development of pharmaceuticals for others:

"The phrase 'research and development' has a commonly understood meaning when used in the context of commerce. It typically refers to 'future-oriented, longer-term activities in science or technology, using similar techniques to scientific research without predetermined outcomes and with broad forecasts of commercial yield."

On the other hand, registrant "is in the business of designing and developing tangible products. Product design has been defined as 'the idea, generation, concept development, testing and manufacturing of a physical object or service.'"

Applicant submitted several Wikipedia excerpts, and the Board took judicial notice of a definition of "product design" as "[t]he determination and specification of the parts of a product and their interrelationship so that they become a unified whole."

Because the meaning of registrant's recitation of services was unclear, the Board looked to extrinsic evidence to determining its meaning. It concluded that "product design and development" does not appear to include the design and development of pharmaceuticals for others.

"So as to be perfectly clear, we have considered the evidence of record to shed light on the significance of the identification of services in the cited registration; not to improperly limit the scope thereof."

Moreover, the Board concluded that the trade channels and classes of purchasers are distinct, and found it reasonable to assume that the purchasers of Applicant's services would be sophisticated.

And so, even though the marks are "highly similar," the Board found that confusion is not likely due to the differences between the respective services, the differences in trade channels and classes of customers, and the sophistication of the purchasers of applicant's services.

TTABlog comment: A nice example of how to limit the scope of a cited registration without running afoul of the rule that prohibits one from reading limitations into the registration based on the real world evidence of what the registrant is actually doing.

Text Copyright John L. Welch 2009.


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