Apotex Tech-nologies Inc.

Trademark Trial and Appeal Board

Jan 29, 2007

No. 78429952 (T.T.A.B. Jan. 29, 2007)

Hearing: Mailed:
November 7, 2006 January 29, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Apotex Technologies Inc.
________

Serial Nos. 76449597 and 78429952
_______

Carla C. Calcagno of Holland & Knight LLP for Apotex
Technologies Inc.

John M. Gartner, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Hohein, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Apotex Technologies Inc., a Canadian corporation,
seeks registration on the Principal Register of the mark
IPHARMACIST (in typed or standard character formats) for goods
and services identified in the application, as amended, as
follows:
“pre-recorded video tapes featuring training in
the use of personal digital assistants
preprogrammed with pharmaceutical information and
handheld personal digital assistant computers
preprogrammed with computer database software
containing pharmacy and pharmaceutical-related
proprietary and publicly available information,
both of which are intended for use by pharmacists
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 76449597 and 78429952
- 2 -
and pharmacy technicians in the practice of
pharmacy” in International Class 9;

“printed matter containing pharmacy and
pharmaceutical-related information, namely,
books, fliers, brochures, manuals, guides,
pamphlets and trade journals” in International
Class 16; and

“custom design for others of personal digital
assistant software programs for use by a
pharmacist or pharmacy technician in the practice
of pharmacy, not including Internet access
software” in International Class 42;1

and the same mark IPHARMACIST for substantially
the same goods and services.2

These consolidated cases are now before the Board on
appeal from the final refusal of the Trademark Examining
Attorney to register this designation under Section 2(e)(1)
of the Trademark Act based upon the ground that the mark,
IPHARMACIST, when considered in relation to applicant’s
identified goods and services, immediately describes their

1 Application Serial No. 76449597 was filed on September 9,
2002 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
2 Application Serial No. 78429952 was filed on June 4, 2004
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce (Section 1(b) of the Act) and under Section
44(e) of the Act, based upon Canadian Registration No. TMA-
604,501, which issued on March 9, 2004. This later-filed
application now contains exactly the same identification of goods
and recitation of services as the earlier filed application
except that it adds “multimedia software recorded on CD-ROM
featuring pharmaceutical information for use by pharmacists and
pharmacy technicians in the practice of pharmacy” to the ending
of the identification of goods in International Class 9.

Serial Nos. 76449597 and 78429952
- 3 -
nature. Specifically, the Office argues that the letter
“I” refers to the Internet, which in turn is a significant
feature of applicant’s personal digital assistants (PDAs),
supporting literature and software, as well as the service
of custom designing the PDAs for use by pharmacists.
Both applicant and the Trademark Examining Attorney
have fully briefed this appeal, and both appeared at an
oral hearing before a video-conferenced panel of the Board.
We reverse the consolidated refusals to register.
Refusal under Section 2(e)(1) of the Act
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes
or uses of the goods or services with which it is used or
is intended to be used. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) [GASBADGE
merely descriptive of a “gas monitoring badge”]. See also
In re MBNA America Bank N. A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA
CARD merely descriptive of “credit card services.” The
Serial Nos. 76449597 and 78429952
- 4 -
Court found that a “mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
or characteristic of the product or service”]. Hence, the
ultimate question before us is whether the term
IPHARMACIST conveys information about a significant
feature or characteristic of applicant’s goods and services
with the immediacy and particularity required by the
Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987) [APPLE PIE merely descriptive of
potpourri mixture: “Whether a given mark is suggestive or
merely descriptive depends on whether the mark ‘immediately
conveys … knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted)].
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
Serial Nos. 76449597 and 78429952
- 5 -
we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can
guess what applicant’s goods are after seeing applicant’s
mark alone. In re Abcor, supra at 218 [“Appellant’s
abstract test is deficient – not only in denying
consideration of evidence of the advertising materials
directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”]; In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990) [NEW HOME BUYER’S
GUIDE merely descriptive of
“real estate advertisement
services”]; and In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985) [APRICOT is merely descriptive of
apricot-scented dolls]. Rather, the proper test in
determining whether a term is merely descriptive is to
consider the alleged mark in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the significance that the mark
is likely to have on the average purchaser encountering the
goods or services in the marketplace. See In re Omaha
Serial Nos. 76449597 and 78429952
- 6 -
National Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987)
[the term “first tier” describes a class of banks]; In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) [MULTI-VIS
is merely descriptive of “multiple viscosity motor oil”];
In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986)
[DESIGN GRAPHIX merely descriptive of computer graphics
programs]; and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979) [COASTER-CARDS merely descriptive of a coaster
suitable for direct mailing].
The Trademark Examining Attorney herein argues that
the letter “I” refers to the Internet, and the word
“Pharmacist” refers to the users of the goods and services,
and furthermore, that when these two descriptive terms are
combined into IPHARMACIST, the components retain their
descriptive meanings. He argues from an initialism
dictionary and applicant’s own website that IPHARMACIST
immediately describes the nature of applicant’s goods and
services, i.e., that applicant’s PDAs, as well as the
service of custom designing the PDAs, and the supporting
literature and software, are for use by pharmacists who in
turn utilize the Internet as a feature of the goods.
Serial Nos. 76449597 and 78429952
- 7 -
By contrast, applicant contends that the Office has
failed to prove that IPHARMACIST merely describes any
feature or characteristic of applicant’s goods or services,
summarizing its arguments as follows:
1. The initial letter “I” has meanings other than
“Internet,” including “interactive” and
“information” – connotations more applicable
to applicant’s goods than the suggested term
“Internet”;

2. “Internet pharmacist” is a common, ordinary
English-language phrase meaning a person who
dispenses drugs based upon orders placed
over the Internet; and

3. “Internet pharmacists,” as defined above, are
not the targeted users for applicant’s goods
and services.

Evidence of Record:
We begin our analysis by looking at the evidence of
record in this case. The Trademark Examining Attorney
argues that it is significant that in advertising the
IPHARMACIST goods and services on its website, applicant
points out that Internet access is a feature of its goods
and services, in that customers can automatically update
the software and obtain technical support:
Serial Nos. 76449597 and 78429952
- 8 -
3
and
4
The originally-assigned Trademark Examining Attorney
had placed into the record entries from the online “Acronym
Finder” for the letter “I” that included an entry for
“Internet,”5 as well as an entry containing a dictionary
definition of “pharmacist” as meaning “a person trained in
pharmacy; a druggist.”6
Analysis:
We turn then to look at this evidence in light of the
mark that applicant seeks to register, IPHARMACIST.
Is the letter “I” in applicant’s mark synonymous with “Internet”?

3 http://www.ipharmacist.ca/public/technology.xml
4 http://www.ipharmacist.ca/public/support.xml
5 http://www.acronymfinder.com/. Applicant has not
questioned the reliability of this website.
6 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (3rd Ed.
1992).
Serial Nos. 76449597 and 78429952
- 9 -
As noted above, the Office argues from the “Acronym
Finder” that the leading letter “I” in applicant’s mark
will be viewed as a shorthand for “Internet.” In response,
applicant notes that the most commonly-used meanings of the
letter “I,” sorted by decreasing rank, are One (the Roman
Numeral), interest, incomplete (school) and italic.
Further down the list are meanings arguably more closely
related to the current goods and services, such as
“information,” “international,” “Internet,” “interactive,”
“informative,” and “instructional.”7 For example, given
that applicant’s goods are interactive devices (e.g., PDAs)
designed to provide information to the pharmacist so that
she can check into possible drug interactions for her
patient, applicant argues that entries such as
“interactive,” “information” or “interactions” would
arguably be better fits here – grammatically and content
wise – than the word “Internet.”
Nonetheless, the Trademark Examining Attorney
maintains that the meaning of the letter “I” as used in

7 Of course, as applicant also points out, the forty-two
meanings other than “Internet” suggested by the “Acronym Finder”
for the letter “I” included terms having absolutely no readily-
seen connections to applicant’s goods or services, such as
“indoor.”

Serial Nos. 76449597 and 78429952
- 10 -
applicant’s mark is made clear from the context of the
goods and services. As indicated by the entire record
herein, including applicant’s website, the Trademark
Examining Attorney argues that access to the Internet is a
significant feature of applicant’s goods and services. He
contends that when IPHARMACIST is used in connection with
software and PDAs for pharmacists, software design and
related literature, it is clear that users of the goods and
services would readily understand that the letter “I” in
this case refers to the Internet.
We agree with the general point proffered by the
Trademark Examining Attorney at oral argument that in
making our determination, we are not required to turn a
blind eye to the reality of what is being offered on
applicant’s website, thereby artificially restricting our
purview solely to the description of goods and services in
the application itself. See In re DNI Holdings Ltd., 77
USPQ2d 1435, 1438 (TTAB 2005) [SPORTSBETTING.COM is generic
for sports wagering services and provision of information
regarding sports and betting], citing to Magic Wand Inc. v.
RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir.
1991); and In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420 (Fed. Cir. 2005).
Serial Nos. 76449597 and 78429952
- 11 -
On the other hand, we agree with applicant that under
the rule enunciated in Modern Optics, Incorporated v. The
Univis Lens Company, 234 F.2d 504, 110 USPQ 293, 295 (CCPA
1956) [initial letters CV not merely descriptive for
trifocal lenses known as “Continuous Vision lenses”: “ …
as a general rule, initials cannot be considered
descriptive unless they have become so generally understood
as representing descriptive words as to be accepted as
substantially synonymous therewith … ”], there is
insufficient probative evidence that the relevant
purchasers of applicant’s goods and services would
understand that the Trademark Examining Attorney’s
suggested meaning (i.e., that the initial letter “I” means
“Internet”) is the one that will immediately come to mind
when these consumers encounter the involved mark.
If “I” is synonymous with “Internet,” is the word INTERNET alone
merely descriptive of these goods and services?
It is a fact that access to the Internet by way of a
personal computer does permit pharmacists who are
applicant’s customers to update the software on their PDAs
and to obtain technical support from applicant.
Nonetheless, the issue remains whether these features are
so significant that the word “Internet” alone would have to
Serial Nos. 76449597 and 78429952
- 12 -
be considered to be merely descriptive of the named goods
and services. The Office argues that these are significant
features. By contrast, applicant contends they are nothing
more than incidental features of its products and services:
Indeed, when taken to its logic and extreme,
would the undersigned be considered an “Internet
lawyer” because she researches cases on LEXIS?
Given that using the Internet to obtain
information is ubiquitous, virtually any
professional in the country could be termed an
“Internet doctor” or “Internet farmer,” under the
Examiners’ argument, were that professional to
rely on the Internet in any significant way for
the practice of the profession.

Applicant’s appeal brief, pp. 3 – 4.
As the Trademark Examining Attorney points out, the
term Internet is certainly capable of being analyzed in the
context of these goods and services. However, that fact
alone is not sufficient to determine that the word Internet
is descriptive of these goods and services. See In re The
Rank Organization Limited, 222 USPQ 324, 326 (TTAB 1984)
[The “fact that the term ‘LASER’ is capable of being
analyzed does not render the term merely descriptive”].
Even taking into consideration the marketplace realities
gleaned from applicant’s website – the involved PDAs “hot
sync” with data files contained on the disk drive of ones
PC, and participating pharmacists can ask for technical
Serial Nos. 76449597 and 78429952
- 13 -
support over the web – we find that the evidence in the
record before us does not support the conclusion that the
term “Internet” alone, when used in connection with
applicant’s products, merely describes a significant
feature of applicant’s goods or services.
The word “Pharmacist” alone for these goods and services:
Applicant’s identification of goods and recital of
services are replete with words like “pharmacy,”
“pharmaceutical,” and even “pharmacist.” Arguably, then,
as the targeted uses of these products, the term
“Pharmacist” alone must be considered to be merely
descriptive for its PDA-related goods and services. See In
re Hunter Publishing, 204 USPQ 957 (TTAB 1979) [JOBBER AND
WAREHOUSE EXECUTIVE merely descriptive for trade magazine
directed to jobber and warehouse managers or executives in
the automotive aftermarket]; and In re Camel Manufacturing
Co., 222 USPQ 1031 (TTAB 1984) [MOUNTAIN CAMPER merely
descriptive of retail and mail order services in field of
outdoor equipment and apparel].
The term “Internet Pharmacist”
The Trademark Examining Attorney has submitted
excerpts from the web demonstrating that the term,
Serial Nos. 76449597 and 78429952
- 14 -
“Internet Pharmacist,” has a readily understood meaning to
health care patients seeking pharmaceutical products
online. In fact, applicant does not deny that “Internet
Pharmacist” is a term of art describing someone who
dispenses drugs through prescriptions or orders placed over
the Internet:
Applicant readily concedes that the mark INTERNET
PHARMACIST might be merely descriptive of one who
dispenses drugs over the Internet, but Applicant
is not applying for these services.

Applicant’s brief, p. 3. In this context, we note that the
three classes of goods and services in this application are
training videotapes and PDAs in class 9, related printed
matter in class 16, and services involving the custom
design of PDAs in class 42.
The term “Internet Pharmacist” may well be merely
descriptive, if not generic, for a hypothetical recitation
of services such as “online retail store services featuring
pharmaceuticals.” Similarly, the term “Internet
Pharmacist” may well be merely descriptive for goods or
services specifically directed to pharmacists who dispense
drugs over the Internet. However, those are not the
involved goods and services herein.
Serial Nos. 76449597 and 78429952
- 15 -
As applied to products and services designed to
provide up-to-date information on possible drug
interactions to one's local druggist, we agree with
applicant that the combined term “Internet Pharmacist” is
just too nebulous in meaning and non-specific in nature for
consumers to immediately associate it with a quality or
characteristic of the involved products or services. See
In re Sundown Technology Inc., 1 USPQ2d 1927, 1928 (TTAB
1986) [“[W]e find that ‘GOVERNOR’ applied to applicant’s
[controls used to modulate the output of a musical
amplifier] is nebulous in meaning”]; In re WSI Corporation,
1 USPQ2d 1570, 1572 (TTAB 1986) [SUPERSAT is suggestive of
services involving weather information services inasmuch as
the SAT element might well suggest satellite involvement,
but still requires imagination, perception or reflection on
the part of potential customers]; and In re TMS Corp. of
the Americas, 200 USPQ 57, 59 (TTAB 1978) [THE MONEY SERVICE
falls short of describing applicant’s financial services
with the requisite degree of particularity].
In his brief, the Trademark Examining Attorney takes
the position that the term “Internet Pharmacist” could
include the pharmacist in one's local brick-and-mortar drug
Serial Nos. 76449597 and 78429952
- 16 -
store who uses the Internet in any significant way in
connection with her pharmaceutical practice. We disagree.
There is nothing in the record to demonstrate that the term
“Internet Pharmacist” would be interpreted in this manner.
See In re Harrington, 219 USPQ 854, 856 (TTAB 1983) [COLLEGE
ACADEMY “is at most suggestive of special summer learning
programs for gifted and talented children in grades 4 to
8”].
The term “IPHARMACIST”
The actual mark before us is IPHARMACIST (in typed or
standard character formats). We have seen in applicant’s
specimens actual use of “iPharmacist” (a lower case letter
“i” followed by upper case letter “P”). In any case, we
assume that prospective customers of applicant’s goods and
services will undoubtedly view this coined mark as a run-
together combination of the letter “I” and the word
“Pharmacist.”
We have already determined that it is unlikely that
the letter “I” will be seen as synonymous with the word
“Internet,” and if it is, the word “Internet” would be
suggestive, at most, of the involved products. While
arguably the term “Pharmacist” alone may be merely
Serial Nos. 76449597 and 78429952
- 17 -
descriptive for applicant's PDA-related goods and services,
there is no evidence in the record before us that the
phrases “iPharmacist” describes a feature of applicant’s
goods or services.
In support of his position, the Trademark Examining
Attorney has cited to the case of In re Zanova, Inc., 59
USPQ2d 1300, 1304 (TTAB 2000) [ITOOL merely descriptive of
computer software for use in creating web pages and custom
designing websites for others]. However, this Board
pointed out that the record in that case was “clear that
‘Internet tool[s]’ is a commonly used term and can refer to
a wide variety of computer programs or computer-based
services relating to the Internet.” (emphasis supplied)
The Board found that “it is abundantly clear that the term
‘Internet tools’ not only describes a wide array of
software and related services, but also aptly describes
applicant’s goods and services.” (emphasis supplied) By
contrast, in this case, while acknowledging that the term
“Internet Pharmacist” is a term of art, we have explicitly
found that it does not describe applicant’s goods and
services.
When making a refusal under Section 2(e)(1) of the
Act, the Examining Attorney has the burden of establishing
Serial Nos. 76449597 and 78429952
- 18 -
that the mark is merely descriptive. In the instant case,
we find that burden has not been met. In re Remacle,
66 USPQ2d 1222 (TTAB 2002) [BIO-CD is not merely descriptive
of, inter alia, modified compact discs used to test
biological matter and related equipment and services]. It
is not at all apparent that the Trademark Examining
Attorney’s interpretation of the mark will immediately come
to mind when prospective purchasers encounter the term
IPHARMACIST used in association with applicant’s goods and
services. In re The Rank Organization Limited, supra at
326. In view of the foregoing, we cannot conclude that the
term IPHARMACIST possesses a merely descriptive
significance in connection with the identified goods and
services.
Finally, the Board has noted many times that any doubt
we may have in reaching a conclusion about the “merely
descriptive” character of a mark must be resolved in favor
of the applicant – that is to say, in such cases we are
required to reverse the refusal to register and allow
publication of the mark for opposition so that any affected
third party may file an opposition and develop a more
comprehensive record. See In re Atavio, 25 USPQ2d 1361,
Serial Nos. 76449597 and 78429952
- 19 -
1363 (TTAB 1992); In re The Rank Organization Ltd., supra
at 326, and cases cited therein; and In re Morton-Norwich
Products, Inc., 209 USPQ 791, 791 (TTAB 1981).
Decision: The refusal to register under Section
2(e)(1) of the Lanham Act is hereby reversed.