Friday, December 27, 2013

Test Your TTAB Judge-Ability: Is SUPER-PHARM Merely Descriptive of Drug Store Services?

In its recent precedential decision in In re Positec Group Limited, 108 USPQ2d 1161 (TTAB 2013)(now on appeal to the CAFC), the Board found the mark SUPERJAWS to be merely descriptive of machine tools and hand tools, including jaws and metal vice jaws. The Board applied the following rule: "[I]f the word "super" is combined with a word which names the goods or services, or a principal component, grade or size thereof, then the composite term is considered merely descriptive of the goods or services, but if such is not strictly true, then the composite mark is regarded as suggestive of the products or services." Here, Examining Attorney Edward Nelson refused registration of the mark shown below, for retail drug store services and for the preparation of pharmaceuticals, absent a disclaimer of the term SUPER-PHARM. Applicant appealed. How do you think this came out? In re Super-Pharm (Israel) Limited, Serial No. 85521587 (December 23, 2013) [not precedential].

In light of Positec, the Board's focus was on the meaning of PHARM. The Examining Attorney relied on two dictionary definitions of "pharm," not surprisingly denoting the term as an abbreviation for "pharmaceutical" and for "pharmaceutical company," and one registration in the pharmacy field, with the word PHARM disclaimed.

Applicant relied on two surveys, an expert witness, third-party registrations of PHARM marks without disclaimer, and the fame of the applied-for mark in Israel.

The expert's testimony, that PHARM does not appear in established dictionaries as an abbreviation for "pharmacy" or "pharmaceutical," was belied by the record. As to the registrations, the Board is not bound by decisions in other applications. And, of course, the alleged fame of the mark in Israel is irrelevant.

As to the two surveys, the first was a "Teflon-style" on-line survey, to which the Board gave "little or no" probative value. While this type of survey may assist in a determination of acquired distinctiveness, applicant did not seek the benefit of Section 2(f), and so the Board was uncertain of the survey's relevance in the context of inherent distinctiveness. In any event, less than half of the survey participants thought SUPER-PHARM to be a drugstore brand, compared with 73% for DUANE READE.

The other survey was "open-ended." Participants were asked to come up with a two-word phrase that describes the products or services of retail drugstores. None came up with SUPER-PHARM. The Board gave this survey no weight, given the innumerable possible answers.

The Board had no doubt, based on the definitions of record, that PHARM is descriptive of applicant's services and must be disclaimed. And so it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: So how did you do?

Text Copyright John L. Welch 2013.


At 6:04 PM, Anonymous Rebeccah Gan said...

My absolute favorite drugstore world-over! What an interesting case. I just don't know that we can read "SUPER-PHARM" the same way we read "SUPER PHARMACY. As a frequent SUPER-PHARM shopper, I always viewed SUPER-PHARM as a combination SUPER MARKET AND PHARMACY - since it's really like a CVS mixed with a grocery, and oddly high end cosmetics. There is also the slangy construction of SUPER with a hyphen - e.g., SUPER-COOL or SUPER-FUN. For me, I would have thought this could be a narrow suggestive/ because of the hyphen no disclaimer.


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