Friday, July 02, 2010

Precedential No. 26: "OSMODEX" Specimens Fail to Show Use as Service Mark, TTAB Rules

In yet another specimen-of-use case, this one precedential, the Board affirmed a refusal to register the mark OSMODEX for "consultation services regarding controlled release drug delivery technology for pharmaceutical companies," on the ground that the mark does not function as a service mark. The Board agreed with Examining Attorney Lourdes D. Ayala that, although Applicant's specimens include the word OSMODEX "and purportedly make reference to applicant's consulting services, ... the mark would be perceived by the relevant public as identifying only applicant's drug delivery technology, and not as identifying consulting services." In re Osmotica Holdings Corporation, 96 USPQ2d 1669 (TTAB 2010) [precedential].

(click on photo for larger view
The Examining Attorney maintained that the mark OSMOTICA is used in connection with the only reference to "consulting" and that OSMODEX merely refers to one of Applicant's many technologies. Applicant feebly argued to the contrary. The Board observed that:

It is not enough that the mark and a reference to the services both appear in the same specimen. In order to create the required “direct association,” the specimen must not only contain a reference to the service, but also the mark must be used on the specimen to identify the service and its source. See In re Aerospace Optics Inc., 78 USPQ2d, 1861, 1862 (TTAB 2006).

The Board found that OSMODEX is clearly used to identify Applicant's technologies. The question, then, was whether it also identified the recited services. The answer was no.

The statement referenced by applicant on the web page, as well as the web page statement that we highlighted in the web page reproduction, are at most oblique references to consulting services and would only be so construed if the reader already knew that applicant offered such services. Certainly, this is not the required direct association between OSMODEX and applicant’s consulting services.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2010.


At 10:47 AM, Anonymous Anonymous said...

why is this decision precedential?

At 1:39 PM, Anonymous Doug said...

Isn't that a picture of a Doctor consulting with a patient that I see right next to the mark?

At 7:53 PM, Anonymous Orrin A. Falby said...

Doug, I don't think these guys see patients. The description of services in the application is specifically limited to pharmacetical companies. This is a no brainer. The services are not described in the specimen. While the exact nature of the services does not need to be specified in the specimen, there must be something that creates in the mind of the purchaser and association between the mark and the service activity. See TMEP § 1301.04(b). There is nothing in the specimen here, that makes such an association. I have written responses and have won below on a similar refusal in an application for book publishing services, where the specimen was a book showing the applied for mark. I would not have filed this specimen, much less file an appeal. I would have filed an extension if the client could not have provided an appropriate specimen , i.e., if another extension was available. Not sure why some practitioners go through these obviously losing battles. I understand that some clients want to try, no matter what, but this specimen issue could have been easily remedied with some counseling. I am not an attorney, but I have been a paralegal for over 20 years, and I have seen time and time again attorneys and paralegals make assumptions about what the rule or law is. It does not take much to look this stuff up. Trademark law is so unique, that assuptions would almost always get you into trouble. For what its worth, thats my two cents.


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