Glaxo Group Ltd.

Trademark Trial and Appeal Board

Mar 12, 2001

No. 75977595 (T.T.A.B. Mar. 12, 2001)

Hearing: 03/12/01 Paper No. 32
September 19, 2000 RLS/tdc
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Glaxo Group Limited
________
Serial No. 75/977,595
_______
Thomas J. Moore of Bacon & Thomas for Glaxo Group Limited.
Teresa Rupp, Trademark Examining Attorney, Law Office 110
(Chris Pedersen, Managing Attorney).
_______
Before Simms, Hanak and Rogers, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Glaxo Group Limited (applicant), a corporation of the
United Kingdom, has appealed from the final refusal of the
Trademark Examining Attorney to register the asserted mark
shown below
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/977,595
2
for pharmaceutical preparations and substances for use in
medical inhaler devices, in Class 5.1
On November 22, 1994, applicant filed an application
(Serial No. 74/602,027) on the basis of its bona fide
intention to use the mark in commerce, under Section 1(b)
of the Act, 15 USC §1051(b), for goods in Classes 5 and 10.
Various amendments were submitted including a description
of applicant’s mark, as follows:
The mark consists of the colors light green and
dark green which cover the entire surface of the
goods. The configuration shown in dotted lines
is used the show the positioning of the mark and
no claim is made to it.2
That application was published for opposition, and a notice
of allowance was eventually issued. Applicant then filed a
statement of use asserting use of the mark since March 31,
1994, on goods in both classes. The Examining Attorney
then issued a refusal to register applicant’s mark under
Sections 1, 2 and 45 of the Act, 15 USC §§1051, 1052 and
1127, because the mark was considered mere ornamentation
which did not function as a mark. Applicant argued that
1 Application No. 75/977,595, created as a divisional (“child”)
application as a result of applicant’s request to divide filed
April 6, 1998, in application Ser. No. 74/602,027 (“parent”).
2 If applicant should prevail on appeal, the description of the
mark should be amended to reflect that the colors are applied to
the inhaler by which the goods are dispensed rather than the
goods themselves.
Ser. No. 75/977,595
3
its mark had acquired distinctiveness, although applicant
did not formally amend this application to one under
Section 2(f) of the Act, 15 USC §1052(f). After the
Examining Attorney required applicant to make a formal
amendment to proceed under Section 2(f), applicant argued
that its mark was inherently distinctive or, in the
alternative, had acquired distinctiveness.
Applicant subsequently filed a request to divide this
application, and this appeal concerns only applicant’s
attempt to seek registration, under Section 2(f) of the
Act, of its asserted mark for pharmaceutical preparations
and substances for use in medical inhalers. With respect
to applicant’s attempt to register the same mark for
medical inhalers for use in conjunction with an aerosol
can, in Class 10, the Board on February 9, 2000, affirmed
the Examining Attorney’s refusal of registration, holding
that the mark was not inherently distinctive. That
decision is reported as In re Glaxo Group Ltd., 53 USPQ2d
1920 (TTAB 2000).
It is the Examining Attorney’s position in this case
that the use of two colors or two shades of the same color
on inhalers is a relatively common practice in the trade.
This the applicant does not dispute. Because of the
existence of various other colored inhalers, the Examining
Ser. No. 75/977,595
4
Attorney argues that, in accordance with In re Owens-
Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed.
Cir. 1985), applicant has a heavy burden to establish
public recognition of its colors as a trademark. It is the
Examining Attorney’s position that applicant’s evidence of
sales and advertising (1998 sales of over $288 million and
promotional expenses of $30 million) is not sufficient to
support applicant’s claim of acquired distinctiveness.
Among other things, the Examining Attorney observes that
applicant’s advertisements do not direct the purchaser’s
attention to the colors as a trademark for applicant’s
pharmaceutical preparations. There is little or no attempt
to promote the color combination as a trademark for
applicant’s goods, according to the Examining Attorney.
The Examining Attorney also argues that the apparent
success of applicant’s product could arise from a number of
reasons including the effectiveness of applicant’s goods,
and that the sales and advertising figures may have nothing
to do with the recognition of applicant’s asserted mark as
a trademark. Also, the Examining Attorney finds irrelevant
and unpersuasive applicant’s argument that it has
successfully registered other similar marks in use since
1981 (for the colors light and dark blue and light and dark
brown) based on evidence of acquired distinctiveness, such
Ser. No. 75/977,595
5
evidence not being present in this case to demonstrate that
this mark has acquired distinctiveness. Applicant must
show that this asserted mark has acquired distinctiveness,
according to the Examining Attorney.
Although one of applicant’s promotional pieces notes,
in small print, that “The Green-on-Green Inhaler Color
Scheme is a trademark of the Glaxo Wellcome group of
companies,” it is the Examining Attorney’s position that
this statement does not rise to the level of promotion of
color as a mark sufficient to permit registration under
Section 2(f) of the Act. Such promotion is frequently
referred to as “look-for” advertising.
Concerning the common use of color on inhalers, the
Examining Attorney notes that there are at least two other
entities which have used a light color/dark color
combination on their inhalers (Proventil Inhalation
Aerosol—-light and dark yellow or orange, and Vanceril
Inhaler—-pink and red) and that others, according to pages
from the Physicians’ Desk Reference (51st ed. 1997),
submitted by applicant, show use of the following color
combinations:
Rhinocourt Nasal Inhaler -- purple and white
Alupent Inhalation Aerosol -- blue and white
Atroven Inhalation Aerosol -- green and white
Brethaire Inhaler -- yellow and white
Ser. No. 75/977,595
6
Aerobid Inhaler System -- purple and white
Aerobid-M Inhalation System -- green and white
Intal Inhaler -- blue and white.
Because of the use by others of light and dark color
combinations, the Examining Attorney argues that it is not
reasonable to assume that purchasers recognize all light
and dark color combinations as emanating from a single
source. Finally, the Examining Attorney contends that
there is no evidence that the doctors who prescribe,
pharmacists who dispense or the patients and purchasing
public who use applicant’s goods, recognize applicant’s
color combination as a trademark.
It is applicant’s position, on the other hand, that,
in accordance with Wal-Mart Stores, Inc. v. Samara
Brothers, Inc, 529 US ___, 54 USPQ2d 1065 (2000), product
packaging, including applicant’s inhalers (packaging) for
the containers of pharmaceuticals preparations which are
placed into the inhalers, may be inherently distinctive.3
Applicant analogizes its color combination mark to the
orange and blue colors applied to Tide detergent bottles,
alluded to by the U.S. Supreme Court in the Wal-Mart case.
According to applicant, therefore, since its mark is only
3 At the oral hearing, applicant’s counsel argued that we must
consider whether applicant’s mark is registrable as inherently
distinctive. However, applicant’s appeal brief only presents the
question of whether applicant’s asserted mark has acquired
distinctiveness.
Ser. No. 75/977,595
7
“weakly non-distinctive,” it need only show slight evidence
of acquired distinctiveness. In this connection, applicant
points to what it regards as the substantially exclusive
and continuous use of its asserted mark since March 1994,
as well as its annual sales and advertising figures.
Applicant notes that it already owns registrations covering
goods in Classes 5 and 10 for the light blue/dark blue and
light brown/dark brown color combinations. It is
applicant’s position that these registrations help
establish a family of light color/dark color trademarks for
inhalers and pharmaceutical preparations used therein.4
Applicant also notes that its brochures are often green in
color and frequently depict the goods in two shades of
green. With respect to the common trade practice for
applicant and competitors to use two-color trade dress
(brief, 9, 10, 11, 14-15) on their inhalers,5 applicant
regards that as evidence that consumers are likely to view
these differences as indications of origin or trademarks.
Applicant also states that the Physicians’ Desk Reference
4 With respect to these registrations, the Examining Attorney
argues that, although those registrations do not on their face
reflect registration under Section 2(f), there were showings of
acquired distinctiveness in those records. See TMEP
§1212.03(b)(iv) for a recent change in Office policy in this
regard.
5 According to applicant, six companies use two colors for nine
different inhalers.
Ser. No. 75/977,595
8
(PDR) prints a claim that the “appearance of this inhaler
is a trademark of Glaxo Wellcome.”
At the oral hearing, applicant acknowledged that
refills of the canisters containing the goods
(pharmaceutical preparations) may, in a significant number
of instances, be purchased without the inhaler. To the
extent that this happens, the medical inhaler would not be
functioning as product packaging for the goods because it
would not be sold with the preparations with which it is
designed to be used. However, as the Examining Attorney
has not stressed this as a possible reason for refusal, we
merely note this fact.
Upon careful consideration of this record and the
arguments, we conclude that applicant’s showing of acquired
distinctiveness is insufficient to permit registration
under Section 2(f) of the Act. The Court of Appeals for
the Federal Circuit stated in In re Owens-Corning Fiberglas
Corp., 227 USPQ at 422:
An evidentiary showing of a secondary
meaning, adequate to show that a mark has
acquired distinctiveness indicating the origin of
the goods, includes evidence of the trademark
owner’s method of using the mark, supplemented by
evidence of the effectiveness of such use to
cause the purchasing public to identify the mark
with the source of the product.
Ser. No. 75/977,595
9
Acquired distinctiveness in this case means that an
asserted mark’s primary significance is a designation of
origin rather than simply ornamentation. This means that
applicant’s use of the colors light green and dark green on
its inhalers must have come to be recognized as a trademark
for the pharmaceutical preparations dispensed by the
inhaler.
As we have noted, this record (including applicant’s
admissions) shows that it is common for companies to use
two colors or two tones of a color on their inhalers. In
this regard, the practices in the trade may be relevant in
assessing applicant’s burden of proving that its mark has
become distinctive. Typically, more evidence is required
if the proposed mark is a type of ornamental matter
frequently used in that industry so that consumers may be
less apt to perceive source-indicating significance from
these uses. See TMEP § 1202.04(b). In view of the fairly
ordinary nature of the color scheme used by applicant, we
believe that a commensurately greater amount of evidence is
required to establish that this particular color scheme has
acquired distinctiveness for applicant’s inhalers. See In
re Boston Beer Co. Ltd. Partnership, 198 F.3d 1370, 1373,
53 USPQ2d 1056, 1058 (Fed. Cir. 1999)(use of similar marks
by others helps show that a mark has not acquired
Ser. No. 75/977,595
10
distinctiveness); Levi Strauss & Co. vs. Genesco, Inc., 742
F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the
record shows that purchasers are confronted with more than
one (let alone numerous) independent users of a term or
device, an application for registration under Section 2(f)
cannot be successful, for distinctiveness on which
purchasers may rely is lacking under such circumstances.”);
Goodyear Tire and Rubber Co. v. Interco Tire Corp., 49
USPQ2d 1705, 1719-21 (TTAB 1998)(applicant did not show
that the difference in appearance of its tire tread design
is source-indicating, tire tread design being a mere
refinement of common basic designs; purchasers of
applicant’s goods would regard pictures of the goods in ads
as nothing more than illustrations of the product being
offered for sale); In re Benetton Group S.p.A., 48 USPQ2d
1214, 1217 (TTAB 1998)(use by others of a green background
design); In re Howard S. Leight and Associates Inc., 39
USPQ2d 1058, 1060 (TTAB 1996)(“This record demonstrates
that earplugs come in many colors. In fact, applicant also
makes earplugs in blue and green. Where the use of colors
is common in a field, an applicant has a difficult burden
in demonstrating distinctiveness of its claimed color.”);
Edward Weck Inc. v. IM Inc., 17 USPQ2d 1142, 1145 (TTAB
1990)(“[W]e note that the record supports the statement
Ser. No. 75/977,595
11
that it is relatively common in this field to use various
colors for plastic medical and surgical instruments.
Because of this fact, we believe that more evidence than
applicant has submitted is necessary to show that green has
become applicant’s trademark. A difficult burden is
usually present in demonstrating distinctiveness of a color
mark under these circumstances… Since others have used this
same color, albeit a different shade of the color green,
the relevant public is less likely to view the color as an
indicator of origin than as mere ornamentation lacking in
trademark function.”); and In re Sandberg & Sikorski
Diamond Corp., 42 USPQ2d 1544 (TTAB 1996)(because ring
designs are ordinary in nature, applicant has heavy burden
to establish that designs have acquired distinctiveness and
would not be regarded merely as ordinary arrangement of
gems).
We agree with the Examining Attorney that, although it
appears that applicant’s color combination is slightly
different from others used for inhalers, this record is
insufficient to demonstrate that consumers now recognize
applicant’s asserted mark as an indication of origin.
Concerning applicant’s sales and advertising figures,
we agree with the Examining Attorney that, in the absence
of persuasive promotion of applicant’s two-toned green
Ser. No. 75/977,595
12
inhaler as a mark for the canister containing the
pharmaceutical preparations, applicant’s mere use since
1994 and introduction of sales and promotional figures fail
to show that the purchasing public has come to regard
applicant’s colored inhaler as a mark. Commercial success
or popularity does not, without more, demonstrate acquired
distinctiveness. See, e.g., In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1729 (Fed.
Cir. 1990)(growth in sales may be indicative of popularity
of product itself rather than recognition as denoting
origin); In re Sunburst Products Inc., 51 USPQ2d 1843, 1848
(TTAB 1999); Goodyear Tire and Rubber Co. v. Interco Tire
Corp., supra; In re Howard S. Leight and Associates Inc.,
supra, at 1060; In re Semel, 189 USPQ 285, 288 (TTAB
1975)(“…in evaluating the significance of advertising
figures… it is necessary to consider not only the extent of
advertising but also whether the use of the designation [or
design] therein has been of such a nature as to create in
the minds of the purchasing public an association of the
designation [or design] with the user and/or his goods”).
We also note that some of the sales and advertising
figures do not necessarily pertain to the L-shaped inhaler
configuration shown in dotted lines on the application
drawing. There is no evidence as to what portion of these
Ser. No. 75/977,595
13
figures is attributable to the L-shaped inhaler, as opposed
to the more recently introduced disc-shaped inhaler bearing
these same two tones of the color green.6
There is simply no evidence concerning the
effectiveness of applicant’s efforts to make this color
scheme its trademark. See, e.g., In re Sunburst Products
Inc., supra. Nor is there persuasive evidence of the
promotion of applicant’s asserted mark as a mark. In this
regard, this case is not unlike In re Pingel Enterprise
6 At the oral hearing, applicant’s counsel argued that
registration of the mark shown in the drawing would allow
applicant to claim rights in marks which would consist of the two
shades of green, in varying proportions, on inhalers of either of
these shapes, as well as other shapes. (But see In re
International Flavors & Fragrances, Inc., 183 F.3d 1361, 51
USPQ2d 1513 (Fed. Cir. 1999).) We disagree. The mark
description clearly includes a statement that the configuration
of applicant's inhaler shows "the positioning of the mark."
Based on the description, "the mark" must be considered to be two
shades of green, in particular proportions, applied to an L-
shaped inhaler, as shown by the drawing.
The declaration attesting to sales and promotional figures
references the mark as "DESIGN (Color only, Inhaler in Light
Green and Dark Green)" and asserts that the figures are "for
goods sold under the present mark." But for counsel's arguments
at the oral hearing, we might have read this declaration to refer
solely to the mark set forth in the drawing and description of
record, i.e., that all sales and promotional figures were
attributable to the two color mark on an L-shaped inhaler.
However, in view of counsel's arguments at the oral hearing, and
the evidence of record which shows that the disc-shaped inhaler
was being sold during the last two of the six years covered by
the sales and promotional figures, we now must read counsel's
declaration as encompassing sales and promotion figures for both
types of inhalers. Thus, counsel’s failure to distinguish
between the percentages of sales and promotional figures
attributable to its different inhaler designs undercuts the
probative value of the figures of record as evidence of acquired
distinctiveness for the inhaler design shown in the drawing.
Ser. No. 75/977,595
14
Inc., 46 USPQ2d 1811, 1822 (TTAB 1998), where the Board
observed:
[T]he sole indications which we have been
able to find in which applicant refers to and
arguably promotes the design or appearance of
its product as a trademark are contained in the
statement, appearing in fine print on the back of
the packaging for its petcock, that “The
appearance of this valve is a trademark of Pingel
Enterprise, Inc.”…
…Even as to the so-called logo use of such
design, purchasers and prospective consumers
would regard the depiction of applicant’s petcock
configuration as nothing more than a graphical
representation of applicant’s product.
Furthermore, absent any advertising or other uses
which promote the asserted trademark significance
of applicant’s petcock configuration, it is
unlikely that purchasers and prospective
consumers would even take notice of or appreciate
the statements on applicant’s packaging and
installation instructions which claim that the
appearance of its product is a trademark for a
motorcycle fuel valve and filter.
Finally, with respect to the statement in small print
under the picture of applicant’s inhaler in the Product
Identification Guide part of the PDR noting that the
“appearance” of the inhaler is a trademark of applicant, we
observe first that the word “appearance” is somewhat
ambiguous and may be construed to refer to the
configuration or product design of the inhaler rather than
to its two-toned green color. Moreover, the Guide states
that “This section is made possible through the courtesy of
the manufacturers whose products appear on the following
Ser. No. 75/977,595
15
pages.” Further, the Foreword to the 54th edition (2000) of
the PDR, of which we take judicial notice, notes that the
book is published by Medical Economics Company in
cooperation with participating manufacturers and that the
function of the publisher is to compile, organize and
distribute information. In addition, the Foreword states:
Each product description has been prepared
by the manufacturer, and edited and approved
by the manufacturer’s medical department,
medical director, and/or medical consultant…
Physicians’ Desk Reference does not assume,
and expressly disclaims, any obligation to
obtain and include any information other than
that provided to it by the manufacturer.
Suffice it to say that it appears that the claim of
trademark rights in the “appearance” of the inhaler was
placed by applicant and not by the publisher as some kind
of independent acknowledgment of trademark rights in
applicant.
We conclude that applicant has not shown that its mark
has become recognized as an indication of origin.
Decision: The refusal of registration is
affirmed.