Thursday, September 10, 2009

WYHA? TTAB Affirms Failure-to-Function Refusal of "STRENGTH IN DATA" for Brochures

ImClone Systems sought to register the mark STRENGTH IN DATA for advertising and promotional publications in the health care field. Its specimens of use are shown below. Examining Attorney Fred Carl III refused registration on the ground that the phrase did not function as a trademark for these goods. Would you have appealed? In re ImClone Systems Incorporated, Serial No. 76659576 (September 8, 2009) [not precedential].

(Click on picture for larger view)

The question was whether the phrase, as it appeared on the specimens, "would be recognized/perceived in and of itself, by the cancer specialists, as an indication of origin for these brochures/informational newsletters."

The Board analogized this situation to one involving ornamentation on a t-shirt, where the criteria of "size, location and dominance" are applied to determine the issue.

"Putting ourselves in the position of these brochures' targeted oncologists, we find that visually these brochures uniformly present a nearly imperceptible usage of this tagline, and are clearly not a readily perceived source-indicator for these promotional brochures touting ERBITUX medications."

And so the Board affirmed the refusal.

TTABlog comment: I think this one falls below the WYHA line. What do you think?

Text Copyright John L. Welch 2009.


At 10:28 AM, Anonymous Ron Coleman said...

Isn't it incredibly descriptive anyway?

At 11:37 AM, Anonymous Kurt Koenig said...

The Applicant dropped Class 42 from its application and tried to use the specimen in Class 16. That was a mistake.

You cannot register your own advertising brochure in Class 16. Clearly, this Applicant was not selling brochures, it was offering services.

Notably, Applicant recently filed a new application in Class 42. So the appeal may have been a precaution while the other application was pending approval.

At 2:05 PM, Anonymous Anonymous said...

I wouldn't have appealed, but I would have come up with a better specimen once the Examiner flagged the first one. Not that difficult and certainly not worth the TTAB expense.


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