Intellipharmaceutics Corp.Download PDFTrademark Trial and Appeal BoardMay 29, 2015No. 85360467 (T.T.A.B. May. 29, 2015) Copy Citation This Opinion is not a Precedent of the TTAB Hearing: May 19, 2015 Mailed: May 29, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Intellipharmaceutics Corp. _____ Serial No. 85360467 _____ Erik M. Pelton of Erik M. Pelton & Associates, PLLC for Intellipharmaceutics Corp. Barney L. Charlon, Trademark Examining Attorney, Law Office 104, Chris Doninger, Managing Attorney. _____ Before Seeherman, Adlin and Hightower, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Intellipharmaceutics Corp. (“Applicant”) seeks registration on the Principal Register of the mark DRUG DELIVERY ENGINE (in standard characters), with DRUG DELIVERY disclaimed, for Drug delivery systems, namely, tablets, capsules, and pellets that provide controlled timed release and/or targeted release of the active ingredients of a wide variety of pharmaceutical preparations for humans; drug delivery systems, namely, oral solid dose tablets or capsules that provide controlled timed release and/or targeted release of the active ingredients of a wide variety of pharmaceutical preparations for humans; pharmaceutical preparations, namely, tablets, capsules, and pellets for humans that provide controlled timed Serial No. 85360467 release and/or targeted release of the active ingredients of pharmaceutical preparations, all sold as an integral component of pharmaceutical preparations for use in the treatment of attention deficit disorders, central nervous system disorders, depression, diabetes, epilepsy, gastric disorders, gastro-intestinal tract disorders, hypertension, infection, inflammation, pain, rheumatoid arthritis and rhinitis, in Class 5; and Research and development services for others in the pharmaceutical sciences, namely, the development and application of drug delivery technologies in the field of controlled, timed release and/or targeted release pharmaceutical preparations, in Class 42.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of its identified goods and services. After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. The appeal has been fully briefed, and an oral hearing was held on May 19, 2015.2 Section 2(e)(1) prohibits the registration of a mark which, when used on or in connection with the goods, is merely descriptive of them. Section 3 extends this prohibition to service marks. A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the products or services it identifies. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1 Application Serial No. 85360467, filed June 30, 2011, claiming a priority filing date of January 25, 2011, based on Canadian application No. 1496406. As amended, the U.S. application is based on Section 44(e) of the Trademark Act, based on Canadian Registration No. TMA871071, issued February 11, 2014. 2 In its appeal brief the Examining Attorney requested that the Board take judicial notice of the definitions of “engine” in two additional dictionaries, and Applicant requested we take judicial notice of a definition of “engine” in a third dictionary. We grant these requests. - 2 - Serial No. 85360467 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Determining the descriptiveness of a mark is done in relation to an applicant’s identified goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831. In other words, the question is whether someone who knows what the services or products are will understand the mark immediately to convey information about them. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). There is no dispute that the term DRUG DELIVERY is descriptive of Applicant’s goods and services. In response to the Examining Attorney’s initial refusal of registration on the ground of mere descriptiveness, Applicant offered a disclaimer of DRUG DELIVERY. Both Applicant and the Examining Attorney have focused their briefs on whether ENGINE is descriptive. Applicant’s position is that its mark is suggestive because of the use of the term ENGINE, Applicant’s brief, 4 TTABVUE 14, and the Examining Attorney has characterized the issue as whether ENGINE is descriptive when used in the context of the mark. 6 TTABVUE 4. In support of the refusal, the Examining Attorney has submitted dictionary definitions for “engine,” showing that this word can mean, inter alia: From the Oxford Dictionaries, http://oxforddictionaries.com: - 3 - Serial No. 85360467 1. a machine with moving parts that converts power into motion. ∙ a thing that is the agent or instrument of a particular process: exports used to be the engine of growth; 2. a railroad locomotive. ∙ short for FIRE ENGINE ∙ historical a mechanical device or instrument, especially one used in warfare; a siege engine3 From The American Heritage Dictionary of the English Language, www.ahdictionary.com: 1. a. A machine that converts energy into mechanical force or motion. b. Such a machine distinguished from an electric, spring-driven, or hydraulic motor by its use of a fuel. 2. a. A mechanical appliance, instrument, or tool; engines of war. b. An agent, instrument, or means of accomplishment. 3. A locomotive. 4. A fire engine. 5. Computers. A search engine.4 In addition, the Examining Attorney has submitted articles and materials from several websites in which “engine” is used in connection with drug delivery systems or medication, including the following: …the drug works well not only due to the pain-relief technology, but because of the engine that drive it for extended period of time. … The drug-delivery engine that drives Opana ER is ….5 AVI BioPharma Presents Advantages of CytoPorter for Improved Transdermal Drug Delivery At the American Association of Pharmaceutical Scientists (title) …This paper focuses on AVI’s unique, proprietary drug delivery engine, CytoPorter™, combined with skin penetration methodology, to enhance transdermal drug delivery results. Dr. Iversen stated, “These important studies will allow us to expand AVI’s CytoPorter drug delivery engine beyond its original intracellular applications…. 3 October 25, 2011 Office action, p. 6. 4 Submitted with Examining Attorney’s brief. 5 www.fiercedrugdelivery.com, October 25, 2011 Office action, p. 8. - 4 - Serial No. 85360467 …products for the treatment of life-threatening diseases suing three platform technologies: immunotherapy for cancer, gene-targeted drugs and intracellular drug delivery engines. (November 19, 1998)6 Silicon Investor AntiVirals is a pioneer company …. The Company’s drug development program has two areas of near term focus: … CYTOPORTER drug delivery engines for enhanced delivery of FDA-approved drugs with delivery problems. (Web discussion started July 2, 1997)7 Occoris™ inhaler engine (title) The global pulmonary drug delivery market is set to double over the next four years…. The simple, non-electromechanical powered technology is tiny in size compared to standard inhaled drug delivery technologies. The drug delivery engine itself is around the size of a pea…. David Harris and Philip Canner talk about Occoris inhaler engine (caption for picture of video link)8 About Respira Therapeutics, Inc. (title) … The company realized seed capitalization from the Cottonwood Technology Fund on October 2010 for scientific development and commercialization of its patent pending technology for passive dry powder inhalers (DPI), consisting of a unique drug delivery engine with a novel, patent pending mechanism of action for lung delivery and therapy. (Copyright 2012)9 Applicant, in support of its position, has submitted the entry from Dictionary.com Unabridged, based on the Random House Dictionary, in which the definitions of “engine” as “means of accomplishment,” “something used to effect a purpose; AGENT, INSTRUMENT” do not appear: 6 www.thefreelibrary.com, October 25, 2011 Office action, p. 11-12. 7 www.siliconinvestor.com, October 25, 2011 Office action, p. 15. 8 www.team-consulting.com, March 15, 2014 Office action, pp. 2-3 9 www.respiratherapeutics.com, March 15, 2015 Office action, p. 4. - 5 - Serial No. 85360467 1. a machine for converting thermal energy into mechanical energy or power to produce force and motion. 2. a railroad locomotive. 3. a fire engine. 4. any machine or instrument used in warfare, as a battering ram, catapult, or piece of artillery.10 Applicant has also submitted pages from The Firefly Visual Dictionary (2002) that have pictures of “types of engines” such as a “turbo-compressor engine” and a “gasoline engine.”11 Based on this evidence, Applicant argues that consumers understand the term ENGINE to “primarily refer to a mechanical apparatus that creates motive force” and describes a “hulking machine.” Reply brief, 7 TTABVUE 4. As a result, it argues that the term is incongruous when it is used in connection with Applicant’s tiny pills and research and development services. We are not persuaded by this argument. As stated above, the descriptiveness of a mark is determined in relation to an applicant’s identified goods and/or services, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. Here, the mark is intended to be used with tablets, capsules and pellets that deliver drugs, and research and development services in the field of drug delivery technologies. In the context in which the mark is used, consumers would not ascribe the “hulking machine”/“mechanical apparatus” meaning to the word ENGINE. 10 Response filed April 23, 2012, p. 7. 11 Submitted with Applicant’s reply brief. - 6 - Serial No. 85360467 Applicant also argues that ENGINE, as it appears in the mark, is a metaphor, and is therefore only suggestive. In support of this argument, Applicant points to the following articles: Jobs & The Economy: Putting America Back To Work (title) … Small businesses are the engines of job creation and essential to strengthening our national economy.12 Why Failure Is The Engine Of Success (title) (Forbes, January 11, 2012)13 Given the dictionary meaning of “engine” as “the agent or instrument of a particular process” and “an agent, instrument, or means of accomplishment,” we question whether “engine” would be viewed as a metaphor even in the articles provided by Applicant. Rather, the example used for this definition, “exports used to be the engine of growth” uses “engine” in the same manner as these articles. However, we need not get involved in a discussion of whether “engine” might in general be a metaphor. The record herein shows that, in the context of drug delivery systems and research and development regarding such systems, “engine” has a clearly understood meaning. In fact, not only do these articles and postings show that “engine” has an actual meaning when used in connection with these goods and services, but the exact phrase DRUG DELIVERY ENGINE that comprises Applicant’s mark is frequently used to describe such systems in general. In view of the foregoing, we have no doubt that relevant consumers, upon seeing DRUG DELIVERY ENGINE used on or in connection with the identified 12 Business in America│The White House, www.whitehouse.gov, Response filed April 23, 2012, p. 10. 13 www.forbes.com, Response filed April 23, 2012, p. 13. - 7 - Serial No. 85360467 goods or services, will immediately understand that these goods are or contain a drug delivery engine, and that drug delivery engines are the subject of the research and development services. Decision: The refusal to register Applicant’s mark DRUG DELIVERY ENGINE is affirmed. - 8 - Copy with citationCopy as parenthetical citation