BioCryst Pharmaceuticals, Inc.

Trademark Trial and Appeal Board

Feb 8, 2013

No. 77131316 (T.T.A.B. Feb. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re BioCryst Pharmaceuticals, Inc.
_____

Serial No. 77131316
_____

Nicholas J. Landau of Bradley Arant Boult Cummings, LLP for BioCryst
Pharmaceuticals, Inc.

Brian P. Callaghan, Trademark Examining Attorney, Law Office 108 (Andrew
Lawrence, Managing Attorney).
_____

Before Bergsman, Kuczma and Masiello, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
BioCryst Pharmaceuticals, Inc. (“applicant”) filed an intent-to-use application
for the mark FODOZAN, in standard character form, for the following goods:
Pharmaceutical products, namely, preparations and
substances for the treatment of cancers and
immunological diseases and disorders, namely, cancers of
the immune system such as T-Cell and B-Cell leukemias
and lymphomas and immunological disorders such as
transplant rejection, in Class 5.
After publication, applicant filed a statement of use. For its specimen of use,
applicant submitted a copy of a report which displayed use of the mark FODOSINE.
Serial No. 77131316

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Applicant asserted that the report was a display associated with the goods.
Subsequently, applicant submitted a substitute specimen consisting of a label
displaying the mark FORODESINE.
The Trademark Examining Attorney refused to register applicant’s mark
because neither specimen displayed the mark sought to be registered as required by
Sections 1 and 45 of the Trademark of 1946, 15 U.S.C. §§ 1051 and 1127. See also
Trademark Rule 2.51(b). Applicant appealed the refusal to register, as well the
Trademark Examining Attorney’s refusal to accept applicant’s 2006 report as an
acceptable specimen, pursuant to Sections 1 and 45 of the Trademark of 1946, 15
U.S.C. §§ 1051 and 1127. See also Trademark Rules 2.56(a) and 2.88(b)(2).
A. Whether either of the marks displayed on the specimens, FODOSINE and
FORODESINE, is a substantially exact representation of FODOZAN, the
mark sought to be registered?
Section 1 of the Trademark Act requires that a trademark application include
a drawing of the mark; in this case, FODOZAN. Trademark Rule 2.51(b) provides
that “the drawing of the mark must be a substantially exact representation of the
mark as intended to be used on or in connection with the goods … specified in the
application …” and that once the statement of use is filed “the drawing of the mark
must be a substantially exact representation of the mark as used on or in
connection with the goods.”
Before the mark in an intent-to-use application may register, the applicant
must file an allegation of use that includes one specimen for each class of goods or
services. Trademark Rules 2.56(a), 2.76(b) and 2.88(b)(2). The rules provide that
the specimen must “show the mark as used on or in connection with the goods.”
Serial No. 77131316

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The regulation’s term ‘substantially” permits only inconsequential variation
from the mark as it appears on the drawing (e.g., nonmaterial informational
matter). In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed.
Cir. 1997). See also In re Yale Sportswear Corp., 88 USPQ2d 1121 (TTAB 2008)
(UPPER 90° is not a substantially exact representation of UPPER 90 because it
changes the meaning of “90”); In re Roberts, 87 USPQ2d 1474 (TTAB 2008)
(“restmycase” is not an exact representation of “irestmycase”); In re Larios S.A. 35
USPQ2d 1214 (TTAB 1995) (GRAN VINO MALAGA LARIOS is not a substantially
exact representation of VINO DE MALAGA LARIOS). Compare In re ECCS Inc., 94
F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996) (EXAMODULE is a substantially exact
representation of the mark EXA and MODULE appearing on different lines, one
above the other); In re Innovative Companies LLC, 88 USPQ2d 1095 (TTAB 2008)
(FREEDOMSTONE and FREEDOM STONE create the same commercial
impression); In re Finlay Fine Jewelry Corp., 41 USPQ2d 1152 (TTAB 1996) (NY
JEWELRY OUTLET is a substantially exact representation of NEW YORK
JEWELRY OUTLET); Humble Oil & Refining Co. v. Sekisui Chemical Co. Ltd. of
Japan, 165 USPQ 597 (TTAB 1970) (S-LON and ESLON are and would be
recognized as the same mark).
As shown on the specimens of record, applicant is using the marks
FODOSINE and FORODESINE, although it seeks to register the mark FODOZAN.
The question is whether applicant’s use supports such a registration. To put it
succinctly, “[i]t all boils down to a judgment as to whether that designation for
Serial No. 77131316

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which registration is sought comprises a separate and distinct ‘trademark’ in and of
itself.” Institut des Appellations d'Origine v. Vintner's Int'l Co., Inc., 958 F.2d 1574,
22 USPQ2d 1190, 1197 (Fed. Cir. 1992). See also Chem. Dynamics, 839 F.2d 1569, 5
USPQ2d 1828, 1829-30 (Fed. Cir. 1988). Thus we must consider whether
FODOZAN makes a “separate and distinct commercial impression” from
FODOSINE and FORODESINE as they appear in the specimens. See also
Trademark Rule 2.72(a)(2) (an applicant may amend its mark if the proposed mark
does not materially alter the mark); Visa International Service Ass’n v. Life-Code
Systems, Inc., 240 USPQ 740, 743 (TTAB 1983) (“The modified mark must contain
what is the essence of the original mark, and the new form must create the
impression of being essentially the same mark.”) (Emphasis in the original).
We find that applicant’s use of the mark FODOSINE is not a substantially
exact representation of the mark FODOZAN, the mark sought to be registered.
While the first two syllables are the same, the suffixes – SINE and ZAN – are
distinctly different in appearance and pronunciation. While it is settled, at least in
the likelihood of confusion context, that there is no “correct” pronunciation of a
trademark, FODOSINE is likely to be pronounced as FŌ DŌ SĪN (as in “sign”) or
FŌ DŌ SĒN (as in “seen”) and FODOZAN is likely to be pronounced as FŌ DŌ ZĂN
(as in “san”). We accordingly conclude that FODOSINE and FODOZAN are
dissimilar visually and phonetically and these dissimilarities preclude finding that
the two terms are essentially the same marks.
Serial No. 77131316

5

Likewise, FORODESINE is not a substantially exact representation of the
mark FODOZAN. FORODESINE is even more dissimilar to FODOZAN than
FODOSINE because even if we were to assume the suffixes SINE and ZAN were
substantially similar, the prefixes FODO and FORODE are different visually and
phonetically. Accordingly, FORODESINE and FODOZAN are not essentially the
same marks.
According to applicant, the suffixes SINE and ZAN are phonetic equivalents
because the letters Z and S are often substituted for one another in English words
ending in “AN” and, thus, “ZAN” and “SAN” are interchangeable.1 However, the
suffixes at issue are “ZAN” and “SINE.”
In view of the foregoing, FODOSINE and FORODESINE shown on the
specimens are not substantially exact representations of the mark FODOZAN, the
mark sought to be registered.
B. Whether applicant’s report is an acceptable specimen for a pharmaceutical
product?
Another issue in this appeal is whether the specimen submitted by applicant
with its statement of use is acceptable to show use of the mark in connection with
the identified goods.
Trademark Rule 2.56 provides, in part:
§2.56 Specimens

(a) An application under section 1(a) of the Act, an
amendment to allege use under §2.76, and a statement of
use under §2.88 must each include one specimen showing

1 Applicant’s brief, p. 5.
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Serial No. 77131316

8

re Shipley Co. Inc., 230 USPQ 691, 694 (TTAB 1986). The starting point for this
analysis is the specimen submitted to show use of the mark.
A crucial factor in the analysis is if the use of an alleged
mark is at a point of sale location. A point of sale location
provides a customer with the opportunity to look to the
displayed mark as a means of identifying and
distinguishing the source of the goods.
Land’s End Inc. v. Manbeck, 24 USPQ2d at 1316, citing In re Shipley Co. Inc., 230
USPQ at 694.
In the above-noted cases, the determinative factor was that the mark was
used at the point of sale (i.e., the location where the goods could be ordered). In
Land’s End, the specimen of trademark use at issue was a mail order catalog that
featured an order form and a telephone number so that a customer could order a
product directly from the catalog.
The Shipley case involved a mark prominently displayed at a trade show
booth where orders for products were taken. The Board likened the trade show
booth to a sales counter and concluded that since the mark was prominently
displayed, the customer would associate the mark with the products in deciding
whether to buy the products.
Hydron involved an infomercial aired on QVC, a cable television channel
devoted to shopping. Programming on this channel consists of advertising products
and offering to send them to viewers who call and order them by telephone. In the
infomercial at issue, the mark was displayed three times followed by photographic
representations of the products. A telephone number was displayed during the
infomercial for placing an order for the products.
Serial No. 77131316

9

There is no offer for sale in the report, nor is there any information informing
a potential customer how to order the pharmaceutical products identified by the
mark. The report submitted by applicant is similar to an annual report which
would be published and distributed by any corporation as generally required under
securities laws. Applicant’s report does not constitute a display in association with
the goods because the report is not associated with an offer of sale or any means for
ordering the goods.
In view of the foregoing, applicant’s report is not an acceptable specimen.
Decision: The refusals to register are affirmed and registration to applicant
is refused.