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 In re Eli Lilly and Company, Serial No. 85183667 (June 18, 2015) [not precedential].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.
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.
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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.