Friday, December 02, 2005

TTAB Reverses Genericness Refusal of "BSS" for Balanced Salt Solutions

Despite its "serious concerns" regarding the genericness of the term BSS, the Board reversed a refusal to register BSS for "intraocular irrigating solutions" and allowed registration under Section 2(f). The Board observed that "[a] different and more complete record, perhaps presented in the context of an inter partes proceeding, may produce a different result." In re Alcon Mfg., Ltd., Serial No. 76219409 (November 18, 2005) [not citable].

The Board first noted that the PTO must make "a substantial showing ... that the matter is in fact generic," one based on "clear evidence of generic use." The Examining Attorney argued that Applicant's product is a "balanced salt solution" and that BSS is a widely used abbreviation for "balanced salt solution" in the opthalmologic research field.

Applicant Alcon challenged virtually all of the PTO's evidence, and managed to exclude Internet printouts that lacked a URL address and/or and indication of date. An entry for the term BSS from the Acronym Finder was successfully challenged because entries in that database are included without regard to possible trademark status, and because the Acronym Finder is not a technical resource that would represent the views of the medical community. The PTO was essentially left with a single dictionary listing, a "handful" of Nexis excerpts, and one example of generic use of BSS by a third party.

According to the Board, the evidence "clearly shows," and Alcon did not dispute, that "balanced salt solution" is "recognized in the medical field as the generic name for a particular formulation of intraocular irrigating solution," and that Alcon's product is a balanced salt solution. The question, then, was whether BSS is itself generic for that product.

The Board found that the PTO's evidence shows generic usage of BSS, but that "applicant has submitted sufficient evidence reflecting recognition of BSS as a trademark for applicant's goods."

"Applicant has presented numerous examples of journal articles and studies showing use of BSS in the manner of a proprietary term rather than a generic term. Applicant has also submitted at least one medical dictionary acknowledging BSS as a trademark. In addition, applicant has provided direct evidence of recognition of BSS as a mark. Applicant has shown that its policing efforts have resulted in acknowledgement by a number of publishers and competitors of applicant's trademark rights in BSS. Applicant has demonstrated that medical professionals view BSS as a mark indicating 'balanced salt solution' emanating solely from applicant."

On the issue of acquired distinctiveness, the Examining Attorney had stated during prosecution that "The applicant has submitted sufficient evidence to support a claim of acquired distinctiveness; however, because the mark is generic, this evidence will not alter the determination that the mark is unregistrable." In her appeal brief, however, the Examining Attorney maintained that her statement accepting the 2(f) evidence was a "typographical error." The Board agreed with Alcon that the PTO's initial position should stand because "it would be prejudicial to applicant to decide the alternative issue of acquired distinctiveness on the merits without any prior notice to applicant that this matter was in issue.

Therefore, the Board ordered that the application proceed to publication under Section 2(f).

Text Copyright John L. Welch 2005


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