The Board affirmed a refusal to register the proposed mark A CHANCE TO LIVE LONGER in the stylized form below, for "Printed matter, namely, brochures and pamphlets in the field of cancer" and for "Medical information services," because Applicant Bristol-Myers refused to disclaim the phrase. The Board agreed with the USPTO that the phrase fails to function as a source indicator, and therefore must be disclaimed under Trademark Rule 6(a). In re Bristol-Myers Squibb Company, Serial No. 90536031 (September 6, 2024) [not precedential] (Opinion by Judge Robert H. Coggins).
Examining Attorney David Collier maintained that the phrase is unregistrable matter under Trademark Act Sections 1, 2, 3, and 45 because “it is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment and would not be perceived as distinguishing the goods and/or services and identifying their source." The Board agreed.
The Examining Attorney submitted evidence from more than twenty varied sources showing use of A CHANCE TO LIVER LONGER (with or without the initial “a”) in the medical context, and particularly for cancer-related information. He argued that people would understand the wording merely to mean that the medical information provided by the applicant will give people with cancer a chance to live longer than they might without the applicant’s pharmaceuticals. In addition, he submitted applicant’s press release in which "one medical professional is quoted using the exact wording of the proposed mark in a way that merely imparts information about Applicant’s pharmaceutical goods, and two other medical professionals advance the same idea with similar language."
Bristol-Myers contended that the USPTO registered “the identical phrase A CHANCE TO LIVE LONGER” to a third party, thereby demonstrating that the phrase is capable of serving as a trademark. It asserted that the phrase A CHANCE TO LIVE LONGER is not a commonplace message and is suggestive and aspirational, pointing to 50 registrations that cover similar aspirational slogans. And it argued that it uses A CHANCE TO LIVE LONGER in a manner that projects trademark and service mark significance because the "specimen shows that the slogan A CHANCE TO LIVE LONGER is presented in the same stylization and colors, and with the same embedded diagonal-streak design element, as the pharmaceutical brand name to which it relates."
The Board concluded, however, that the specimens show that prospective consumers of Bristol-Myers' goods and services will understand the phrase A CHANCE TO LIVE LONGER to refer to the possibility that cancer patients may live longer when using certain treatments that Applicant describes as “FDA approved” and have been demonstrated to “reduce[] the risk of dying.”
The Internet evidence made of record by the Examining Attorney demonstrates common use of the phrase A CHANCE TO LIVE LONGER in context with information about medicine and cancer, and shows that the same meaning of this phrase (i.e., the possibility of living longer) always attaches when informing consumers about pharmaceutical products and procedures related to cancer.
As to third-party registrations, the Board observed once again that it must assess registrability in each case on its own evidentiary record. "Here, our analysis must focus on the particular wording in Applicant’s proposed mark and its use in the marketplace rather than on registrations for other marks conveying different messages, especially when the evidence demonstrates that the phrase A CHANCE TO LIVE LONGER is commonly used in the marketplace to convey a particular informational message."
Accordingly, we find that the existence of these third-party registrations (and uses) for different “aspirational” marks for sometimes different services lacks probative force as to consumer perception of A CHANCE TO LIVE LONGER for the applied-for goods and services in light of the specific evidentiary record in this case.
Finally, the Board dismissed applicant's argument about the particular display of the phrase, noting that the issue was "whether the proposed phrase is such a commonplace expression that it would not be perceived a source indicator, not the particular mode or manner in which the mark is presented." In fact, the proposed mark has sufficient stylization to qualify for registration, if the phrase is disclaimed.
And so, the Board affirmed the refusal.
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TTABlogger comment: Is this a WYHA?
Text Copyright John L. Welch 2024.
An understandable decision. In Australian parlance, "The phrase has meaning in the context of the goods and is one which other traders in the goods would legitimately wish to use."
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