Monday, September 15, 2008

Transferred Distinctiveness Leads TTAB to Reverse Mere Descriptiveness Refusal of "NANOCRYSTAL COLLOIDAL DISPERSION"

The Board reversed a refusal to register the mark NANOCRYSTAL COLLOIDAL DISPERSION under Section 2(f) for "pharmaceutical preparations, namely, adjuvant preparations sold as a component of a full line of pharmaceuticals, and ingredients and components thereof, namely ultra-small particle formulations" [COLLOIDAL DISPERSION disclaimed], finding that the distinctiveness of Applicant's prior registration for the mark NANOCRYSTAL for the same goods will transfer to this new application. In re Elan Pharma Int'l Ltd., Serial No. 78517591 (September 5, 2008) [not precedential].

Rule 2.41(a) provides that ownership of a Principal Registration of "the same mark" may be accepted as prima facie proof of acquired distinctiveness. An applicant who invokes this rule is seeking to "tack" the use of the registered mark to its use of the applied-for mark in order to show that the new mark has acquired distinctiveness.

"Thus, the analysis used to determine whether applicant's present mark is 'the same mark' as its previously registered mark, for purposes of the rule, is the analysis used in tacking cases, i.e., whether the marks are legal equivalents. *** To meet the legal equivalents test, the marks must be indistinguishable from one another or create the same, continuing commercial impression such that the consumer would consider both as the same mark."

The Board observed that Applicant's prior registration for NANOCRYSTAL issued on the Principal Register without a showing of acquired distinctiveness, and that the registration is more than five years old. Furthermore, in the applied for mark the term COLLOIDAL DISPERSION is disclaimed, and from the PTO's evidence that term appears to be highly descriptive. Consequently, the Board concluded that "the mark NANOCRYSTAL COLLOIDAL DISPERSION creates the same, continuing commercial impression as the previously registered NANOCRYSTAL marks such that it is the legal equivalent thereof. Therefore, the marks are 'the same' for purposes of Trademark Rule 2.41(b)."

Moreover, the goods in one of Applicant's two prior registrations for NANOCRYSTAL are identical to those of the instant application. Coupling that with the further evidence that the applied-for mark mark has been in continuous and exclusive use for twelve years, the Board concluded that the new mark has acquired distinctiveness.

Therefore, the Board reversed the refusal to register.

TTABlog comment: So now this Applicant will presumably have a registration for NANOCRYSTAL that is more than five-years old (and thus immune to a descriptiveness attack) and a 2(f) registration for NANOCRYSTAL COLLOIDAL DISPERSION, with COLLOIDAL DISPERSION disclaimed, both registrations being for the same goods. What does the second registration add, if anything, to what Applicant already had in the first registration?

By the way, note the entry for NANOCRYSTAL at Wikipedia. Do you think Applicant Elan Pharma may have had some input into this entry?

Text Copyright John L. Welch 2008.


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