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].
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.