Tuesday, June 23, 2015

TTAB Reverses Rejection of TRULICITY Specimen of Use: Display in Ordinary Text Enough

The Board reversed a refusal to register the mark TRULICITY for "pharmaceutical preparations for the treatment of diabetes, finding that applicant's specimen "demonstrates use of the mark that Applicant seeks to register with the meaning of the Trademark Act. In re Eli Lilly and Company, Serial No. 85183667 (June 18, 2015) [not precedential].

The examining attorney maintained that the specimen of use (shown below) "shows the proposed mark as part of [a] logically connected and continuous sentence ...." He noted that the word TRULICITY is in the same size and style of font as the surrounding wording and is not "set out from the surrounding text." One viewing the specimen of use, he contended, would have to search through the text even to find the mark.

(Click on photo for larger picture)

Applicant pointed out that TRULICITY is the only coined term on the specimen, appearing just before the generic name of the goods. It has an initial capital "T" and is accompanied by the "TM" designation. The Board, applicant argued, should not apply a mechanical test but instead should consider the commercial impression made by the mark.

The Board observed that "a trademark ... need not be displayed in any particular size or degree of prominence." The key question is whether it will be understood as indicating the origin of the goods. The Board paraphrased the specimen as stating: "This package contains either Trulicity brand dulaglutide or a placebo." This conveys "exactly the message that a trademark is supposed to convey, i.e., that the package contains Trulicity brand goods." [The Board noted that goods bearing this particular label are delivered to highly sophisticated users, i.e., medical or scientific professionals and subjects under their care.]

Cases cited by the examining concerned whether a mark was in "use" at all, or concerned descriptive or highly suggestive wording that might be perceived as informational. TRULICITY, the Board pointed out, is a fanciful, coined term.

Even though it may be embedded in other text, there is no danger that this coined term will be interpreted as merely descriptive or informational matter. It is also the only coined designation in the text of the label, and is set out with a “TM” symbol, further indicating it is a trademark. As such, its only purpose is to provide a unique identifier to a product that is otherwise identified only by a generic name and technical, explanatory information. Its placement on the product label is sufficient to “make it known to purchasers,” and its placement immediately adjacent to the generic name of the goods allows customers to “associate it with the goods.”

The Board concluded that TRULICITY, as used, meets the statutory definition of a trademark. Although display of the mark may be understated, it is up to applicant to decide how it wishes to display the mark to customers in the scientific research field.

Read comments and post your comment here

TTABlog comment: I don't particularly like this decision. I think a trademark should stand out from surrounding text. According to this decision, a TM symbol and an initial cap may be enough. I would require bold font and all caps.

Text Copyright John L. Welch 2015.


At 8:27 AM, Blogger Frank said...

Keep in mind that this was not an over-the-counter drug specimen. The label was produced during drug trials where the label content is strictly regulated and restricted by the FDA.

At 8:42 AM, Anonymous Roberto Ledesma said...

I don't like this decision either. The Applicant could have just submitted the image at the top of your post as a substitute specimen -- it would have sufficed and it clearly demonstrates trademark use. Perhaps they didn't because it wasn't in use at the time of filing the SOU, which may be why they re-filed for the exact same mark/goods and fought this to a decision.

At 10:32 AM, Anonymous Anonymous said...

John, you don't use "TTABlog" in all caps. ; - )

At 11:23 AM, Anonymous Anonymous said...

Yes, but he does set "TTABlog" off from all of the informational wording in the blog in a different font size and color -- he doesn't bury it in text and then slap a "TM" designation next to it.


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