Astra Merck Inc.

Trademark Trial and Appeal Board

Dec 23, 1998

No. 74581133 (T.T.A.B. Dec. 23, 1998)

Hearing: Paper No. 19
March 18, 1998 SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 12/23/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Astra Merck Inc.
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Serial No. 74/581,133
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Glenn A. Gundersen of Dechert, Price & Rhoads for Astra
Merck Inc.
Hannah Fisher, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney)
_______
Before Simms, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Astra Merck Inc. has appealed from the final refusal
to register the mark show below
Ser No. 74/581,133
2
for goods described as “a full line of pharmaceuticals” in
Class 5.1 After the statement of use was filed in this
case, the Examining Attorney refused registration for the
following reason:
Applicant’s evidence is insufficient to
support use of the mark on a full line
of products. TMEP 804.03(a).
Applicant’s attorney states that the
mark is used only on the three drugs
for which labels were submitted.
Applicant cannot use the full
line/house mark description of goods in
an effort to avoid future filings.
However, applicant is entitled to amend
the description of goods to reflect
current use. This course of action can
be expedited by examiner amendment.
See Priority Action, issued May 23, 1996. The Examining
Attorney eventually issued a final requirement for an
amended description of goods:
The Manual limits registrations for
house marks to those circumstances in
which broad use of the mark is
demonstrated through catalogues or
similar evidence. Use of the mark on
three products does not fulfill this
requirement.

1 Application Serial No. 74/581,133, filed August 24, 1994. The
original application was filed by Merck & Co., Inc. (d/b/a
Astra/Merck Group), a New Jersey corporation. The current
applicant is the owner of this mark by assignment and change of
name. In the application, it is indicated that the drawing is
lined for the colors purple and yellow. The original application
was filed on the basis of applicant’s bona fide intention to use
the mark in commerce. After the mark was published for
opposition, applicant submitted a statement of use. In the
statement of use, applicant asserts use in commerce at least as
early as January 23, 1995.
Ser No. 74/581,133
3
See Final Refusal issued October 9, 1996. Applicant and
the Examining Attorney have submitted briefs and an oral
hearing was held.
It is applicant’s position that it should not be
required to delete the current description of goods and to
specify the particular pharmaceutical products on which its
mark is used. Applicant notes that it has submitted labels
showing use of the asserted mark on all three of the
pharmaceutical products which it markets (under the marks
PRILOSEC, PLENDIL and TONOCARD). (Applicant notes that,
since the date of filing of the statement of use, it has
begun marketing a fourth pharmaceutical product under the
mark LEXXEL.) Applicant argues that the Trademark Manual
does not require a minimum number of products “for house
mark status,” nor does it require that a mark appear on
every conceivable type of pharmaceutical product in order
to be considered a house mark.
If an applicant demonstrates that all
of its different pharmaceutical
products bear a particular mark in
common, then that mark is obviously
functioning as a house mark for that
product line, regardless of the exact
number of products in that product
line. To hold the opposite, as the
examining attorney has done, is to
favor large companies with large
product lines and to penalize smaller
companies or companies with smaller
Ser No. 74/581,133
4
product lines. This is obviously an
inequitable result… Small companies
should be eligible for house mark
registration as long as they have
multiple products in their product line
and they use the mark throughout the
product line.
Applicant’s appeal brief, 2.
In her appeal brief, the Examining Attorney argues
that, in order to permit registration with such a
description as applicant has here (“a full line of
pharmaceuticals”), applicant must provide support showing
such broad use of the mark or “similar evidence to
substantiate the claim of use as a house mark.” Examining
Attorney’s brief, 2. Greater specificity is required,
according to the Examining Attorney, when an applicant has
identified its goods very broadly but does not use the mark
on a “substantial” number of goods encompassed by the
identification. “Precedent demonstrates that the above
evidence is insufficient to establish use as a house
mark…[I]nequity exists where an applicant receives rights
to a broad identification of goods, if it only uses a mark
on a few items.” Examining Attorney’s appeal brief, 3.
We affirm the refusal of registration. First,
however, we believe that this appeal has been needlessly
complicated by arguments of the attorneys with respect to
Ser No. 74/581,133
5
whether or not applicant’s mark is a house mark. That
issue is irrelevant to our determination. Part of this
confusion may be caused by Section 804.03(a) of the
Trademark Manual of Examining Procedure. That Section
provides, in part:
Under certain limited circumstances, an
applicant may apply to register a mark
as a house mark. In the case of
applications for house marks, the
Office has permitted and will permit
the use of somewhat broader terms than
might otherwise be accepted in an
identification of goods. In such a
case, the identification of goods may
include wording such as “a house mark
for…” or “a full line of…” All such
applications must define the type of
goods with sufficient particularity to
permit proper classification and to
enable the Office to make necessary
determinations under Trademark Act §
2(d), 15 U.S.C. § 1052(d).
In an application to register a mark as
a house mark based on use in commerce,
the Office requires that the applicant
demonstrate that the mark is, in fact,
used as a house mark, in addition to
requiring the usual specimens of use.
The examining attorney should require
that the applicant provide catalogues
showing broad use of the mark or
similar evidence to substantiate this
claim.
Likewise, an intent-to-use applicant
who wishes to register a mark as a
house mark must clearly indicate its
intention to register the mark as a
house mark during initial examination,
and the circumstances must establish
that the applicant’s proposed use of
Ser No. 74/581,133
6
the mark as a house mark is credible.
The nature of the mark and the capacity
of the applicant to use the mark as
asserted should be considered in
determining whether the claim that the
mark is to be used as house mark is
credible. If the applicant indicates
such an intention, the examining
attorney should also advise the
applicant that, upon filing of the
amendment to allege use or the
statement of use, the applicant will be
required to provide evidence to
substantiate use as a house mark. If
the applicant cannot do so, the
applicant will be required to amend the
identification of goods to conform to
the usual standards for specificity.2
It appears that both applicant’s attorney and the
Examining Attorney have focused, in their briefs and at the
oral hearing, on whether or not the asserted mark functions
as a house mark. Because applicant consistently uses its
mark on each and every one of its pharmaceuticals, the
asserted mark is, by definition, a house mark. However,
the critical inquiry in this case is whether an applicant,
who applies its mark to only three pharmaceutical products,
should be able to register this mark for a description
which states “a full line of pharmaceuticals.” We do not
believe that an applicant should.

2 In this case, the Examining Attorney approved the intent-to-use
application for publication but did not advise applicant that it
will have to provide evidence of “broad use of the mark” upon the
filing of the statement of use, as indicated in this section of
the Manual.
Ser No. 74/581,133
7
Although this record is devoid of evidence relating to
the pharmaceutical industry, a casual review of the
Physicians’ Desk Reference (1995) and other PDR
publications, of which we take judicial notice, reveals
that there are literally thousands of prescription and non-
prescription drugs. The variety and scope of
pharmaceutical products is astounding.
The TMEP does not indicate (nor should it) the minimum
number of goods or services required in order for an
applicant to register a mark for a full line of those goods
or services. Suffice it to say that an application to
register a mark for a full line of pharmaceuticals based
upon use on only three products does not justify such a
broad description.3

3 While the TMEP does not specifically note the reason for this
practice, it is clear that the policy derives from the theory
that an applicant who does not in fact use a particular mark on a
sufficient number or variety of goods or services in its line,
should not be able to procure a registration which potentially
may bar the registration of another applicant who uses a similar
mark on different products. In this case, for example,
applicant, who according to counsel’s statements at the oral
hearing, is using its asserted mark on a gastrointestinal drug, a
cardiovascular drug and a drug to treat hypertension, who obtains
a registration for “a full line of pharmaceuticals” but is only
using its mark on a very few, could conceivably prevent the
registration of a similar mark for a completely unrelated
pharmaceutical product.
Ser No. 74/581,133
8
Decision: The requirement of the Examining Attorney
for a revised description of goods is affirmed.
R. L. Simms
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board