Friday, August 28, 2009

Precedential No. 35: Finding Mutilation, TTAB Affirms Refusal of Applicant's Two Bottle Mark

Applicant Pharmavite LLC got nowhere fast in its attempt to register the mark shown to the right (comprising a drawing of two overlapping bottles) for dietary supplements. The Board agreed with Examining Attorney Daneen J. Hetzel that the applied-for mark "is not a substantially exact representation of the mark as shown in applicant's specimen" (immediately below), as required by Trademark Rule 2.51(a). In re Pharmavite LLC, 91 USPQ2d 1778 (TTAB 2009) [precedential].

The Board recognized that the determination in a mutilation case is "somewhat subjective." The essential issue was whether "the alleged mark in applicant's drawing creates a distinct commercial impression separate and apart from the words and designs appearing on the bottles."

The Board observed that the bottle on the left "with applicant's word and design marks is in the shape of a 'generic' dietary supplement bottle. The bottle on the right, with the RX symbol, is in the shape of a 'generic' prescription medicine bottle."

The commercial impression the Two Bottle Design, as shown on the specimen, projects is that of applicant’s own bottle for its dietary supplements with its registered word and design marks and of a prescription bottle, identified by the RX symbol. The Two Bottle Design mark shown in the specimen may suggest some, presumably positive, association between applicant's dietary supplements and prescription medications.

The Board saw no basis for concluding that purchasers "would perceive the 'mark' as shown in the drawing, the mere outlines of the bottles, in the mark shown in the specimen."

We conclude that these indicia, applicant’s word and design marks and the RX symbol, are sufficiently apparent that potential purchasers will see them. More importantly, we conclude that potential purchasers will not only see these elements but that they will perceive them as the defining essence of the Two Bottle Design. That is, applicant’s word and design marks and the RX symbol are essential to the commercial impression of the Two Bottle Design. Therefore, on this record, we conclude that the outline of the two generic bottle shapes shown in the drawing does not create a separate and distinct commercial impression.

And so the Board further concluded that the alleged mark "is not a substantially exact representation of the mark as show in applicant's specimen," and it affirmed the refusal.

TTABlog comment: If these mutilation cases are so subjective, why make this one precedential?

Text Copyright John L. Welch


At 9:53 PM, Anonymous Pittsbrugh Trademark Lawyer said...

Wonder if they would have shown the marks and labels in dotted lines on the drawing if it would have had any subconscious effect on the Examining Attorney or the TTAB and resulted in a different decision.


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