Mailed: January 22, 2003
Paper No. 9
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re John M. Beaman
________
Serial No. 76/113,622
Serial No. 76/113,623
Serial No. 76/113,624
_______
Edwin D. Schindler of the Michael I. Kroll Law Office for
John M. Beaman.
John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
The three applications involved herein were filed on
August 21, 2000 by John M. Beaman (a United States citizen)
to register on the Principal Register the marks PAC
(application Serial No. 76/113,622), PAK (application
Serial No. 76/113,623) and PACK (application Serial No.
76/113,624), all for “prepackaged medication” in
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76/113622, 76/113623 & 76/113624
2
International Class 5. Applicant asserts a bona fide
intention to use the mark in commerce in each application.
The Examining Attorney has refused registration in
each application under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s
mark (PAC or PAK or PACK), when used on applicant’s goods,
is merely descriptive thereof.
There is a second basis for refusal in each of the
three applications. Specifically, registration has been
refused based on applicant’s failure to comply with a
requirement for a more definite identification of goods.
When the requirement for a more definite
identification of goods and the refusal to register were
made final, applicant appealed in each application. Both
applicant and the Examining Attorney have filed briefs.
Applicant did not request an oral hearing.
In view of the common questions of law and fact which
are involved in these three applications, and in the
interests of judicial economy, we have consolidated the
applications for purposes of final decision. Thus, we have
issued this single opinion.
Turning first to the question of the identification of
goods, the Examining Attorney did not accept the original
identification of goods “prepackaged medication,” and
Ser. Nos. 76/113622, 76/113623 & 76/113624
3
suggested applicant adopt the following identification, if
accurate: “prepackaged medication for use in the treatment
of [indicate condition/illness the goods are used to treat,
e.g., hypertension].”
Applicant contends that “prepackaged medication” is
not in and of itself an indefinite phrase; that because the
Examining Attorney found no prior registration or pending
application which might conflict with applicant’s marks the
suggested limitation is unnecessary and unduly restrictive;
and that because each application is based on a bona fide
intention to use the mark and the scope of the goods is
still unclear, if applicant is required to enter the
limitation it would undermine the “intent-to-use” provision
of the Trademark Act.
The Examining Attorney explained that the specific
information about the condition or illness medications are
used to treat is required for all pharmaceuticals,
medications and therapeutic agents; that the particular use
and nature of the medications is crucial in determining
whether a likelihood of confusion exists, particularly with
regard to how the goods will be used, for what purpose, and
the channels of trade in which they will travel; that
“medications” must therefore be identified with specificity
in order to avoid the issuance of unnecessary refusals
Ser. Nos. 76/113622, 76/113623 & 76/113624
4
under Section 2(d) of the Trademark Act; and that the more
specific identification required by the Examining Attorney
follows United States Patent and Trademark Office (USPTO or
Office) policy as reflected in the “Acceptable
Identification of Goods and Services Manual” (available at
the uspto.gov website).1
Section 1(b)(2) of the Trademark Act, 15 U.S.C.
§1051(b)(2), requires that the written application specify
the goods or services on or in connection with which
applicant intends to use the mark. Trademark Rule
2.32(a)(6) requires, in relevant part, that a trademark
application must set forth “the particular goods or
services” with which the mark is or will be used. See
also, Trademark Rule 2.33(b)(2). Further, the TMEP
§1402.01 (Third Edition 2002) states that the
identification of goods or services must be specific and
definite. See analogously, TMEP §1402.03(d) (Third Edition
2002) (regarding specificity required with regard to
“computer programs”).
It is within the discretion of the USPTO to require
that the goods or services be specified with particularity.
1 The Examining Attorney’s request that the Board take judicial
notice of this “ID Manual” is granted, but said request is
actually unnecessary as the Board is free to consider (if not
obligated to review and consider) such formalized official
statements and codifications of Office policy.
Ser. Nos. 76/113622, 76/113623 & 76/113624
5
See In re Societe Generale des Eaux Minerales de Vittel
S.A., 1 USPQ2d 1296, 1298 (TTAB 1986), rev’d on other
grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1998).
As stated in TMEP §1402.01 (Third Edition 2002): “To
‘specify’ means to name in an explicit manner. ... The
identification of goods or services must be specific,
definite, clear, accurate and concise. ...” The above-
mentioned USPTO “ID Manual” includes examples of acceptable
identifications of goods such as “pharmaceutical
preparations, namely,...,” “pharmaceutical preparations for
the treatment of ...,” “allergy medications,” “pain relief
medications,” and “burn relief medications.”
The Office requirement for a specific identification
of goods (or services) is not curtailed or minimized
because a party files an intent-to-use application. In
fact, in light of intent-to-use based applications, there
is a particular need for all entities to be aware of the
precise goods and/or services covered by the marks applied
for by applicants. Likewise, the fact that the scope of
applicant’s involved medications is not yet known, does not
obviate the Office’s requirement for a specific
identification in all such applications.2 Particularly with
2 In the first Office action, the Examining Attorney requested
(in each case) informational materials such as promotional and
Ser. Nos. 76/113622, 76/113623 & 76/113624
6
regard to applications for goods such as “pharmaceuticals”
and “medications” it is clear that the specific use of the
medication is required so that the applicant is not
accorded greater rights than those to which he is entitled.
The use of a mark for a particular medication is not
necessarily likely to cause confusion with the use of a
similar mark for other medications. However, if applicant
were to obtain a registration for medications without any
limitation as to their nature, such a registration could
prevent the registration of a third-party’s mark even
though the respective medications were substantially
different.
Thus, the problem with applicant’s identification of
goods is that it does not identify applicant’s “prepackaged
medications” with any specificity (i.e., “prepackaged
medications, for the treatment of ...). While it is true
that the word “medications” is not unclear in the sense of
its commonly understood English meaning, it is however also
true that the term is unclear and imprecise in the context
of the identification of goods in a trademark application.
advertising materials. Applicant responded (in each case) that
his attorney would determine if such materials existed and if so,
they would be filed “in the near future.” No such materials were
ever submitted in any of these three applications. However,
because the Examining Attorney never repeated this requirement,
it is not an issue in these appeals.
Ser. Nos. 76/113622, 76/113623 & 76/113624
7
See In re Societe Generale des Eaux Minerales de Vittel
S.A., supra.
The Examining Attorney’s requirement for a more
definite identification of goods is proper.
Turning to the issue of mere descriptiveness, it is
the Examining Attorney’s position that the terms PAC, PAK
and PACK each connote a significant characteristic or
feature of the goods, namely, that the medication is sold
in a pack in prepackaged form; and that it is immediately
clear to consumers that “applicant has arranged his
individual component medications into a prepackaged unit
which is sold in a pack” (brief, p. 8). With regard to the
terms PAC and PAK, the Examining Attorney specifically
contends that these are simply misspellings or novel
spellings of the descriptive word PACK; and that these
misspellings or novel spellings do not alter how purchasers
would perceive the terms in relation to the identified
goods.
In support of the descriptiveness refusals, the
Examining Attorney has made of record (in each case) the
following dictionary definitions of “pack”:
(1) noun ... 3. a small package
containing a standard number of
identical or similar items: a pack
of matches, The American Heritage
Ser. Nos. 76/113622, 76/113623 & 76/113624
8
Dictionary (Fourth Edition 2000);
and
(2) noun 1. ... c.(1) a number of
individual components packaged as
a unit
.
(2) container, Merriam Webster’s
Collegiate Dictionary (Online
2001).
In addition, the Board takes judicial notice of the
following dictionary definitions from The Random House
Dictionary Unabridged (Second Edition 1987):
(1) pac: n. pack;
(2) pak: n. pack; package; and
(3) pack: n. ... 2. a definite
quantity or standard measure of
something wrapped up or otherwise
assembled for merchandising ... .
The Examining Attorney also submitted photocopies of
excerpted stories retrieved from the Nexis database to show
that consumers understand the term “pack” (and the
equivalents “pac” and “pak”) to refer to a type of
medication packaging or container. Examples of these
materials are reproduced below:
Headline: The Need To Know Drives
Pharma Labeling Market
Package inserts/outserts have become a
legal requirement with the move toward
dispensing patient packs of medication.
“Paper, Film & Foil Converter,” January
2001;
Ser. Nos. 76/113622, 76/113623 & 76/113624
9
Headline: Errors Put on Trial;
Meeting’s Focus Is Patient Safety,
Medical Mistakes
... Drugs come in different strengths
even though studies show prepackaged
blister-pack medications reduce errors.
... “The Richmond Times Dispatch,”
April 21, 2001;
Headline: Prescribing Update; New
Prescription Drugs
... Monistat 3 Combination Pack
(Medication)..., “Patient Care,” May
15, 2001; and
Headline: District Municipal
Corporations Asked to Generate Maximum
Revenue
... It was decided that henceforth all
medicines will be purchased directly
from the companies concerned. The
packs of medicines will carry the name
of KMC. “Business Recorder, July 11,
2001.
Applicant urges reversal arguing that the marks (PAC,
PAK and PACK) are suggestive or even arbitrary “inasmuch as
an extremely wide-range of goods throughout the economy are
‘prepackaged’ and upon hearing or seeing the mark [PAC or
PAK or PACK], one would not otherwise be aware as to what
was ‘packaged,’ let alone what was packaged was medication”
(brief, p. 6 -- emphasis in original); that consumers would
have to engage in a multi-step reasoning process, and they
would have to devote a reasonable measure of thought,
conjecture and speculation in order to be able to guess
what goods are offered under these trademarks; that the
Ser. Nos. 76/113622, 76/113623 & 76/113624
10
Examining Attorney found no conflicting pending or
registered marks, thus supporting an inference that
competitors do not use and do not need to use these marks
in order to market their goods; and that any doubt is to be
resolved in applicant’s favor. Further, applicant argues
that neither PAC nor PAK is a word in the English language;
and that PAC is often an abbreviation for “political action
committees.”
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc. 24 USPQ2d 1757 (TTAB 1992); and In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). A mark does
not have to describe every quality, characteristic,
function, ingredient, attribute or feature of the goods or
services in order to be found merely descriptive; it is
sufficient for the purpose if the mark describes a single
significant quality, feature, function, etc. thereof.
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract or
Ser. Nos. 76/113622, 76/113623 & 76/113624
11
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Consequently, “[w]hether consumers could guess what the
product [or service] is from consideration of the mark
alone is not the test.” In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
We agree with the Examining Attorney that the asserted
marks, PAC, PAK and PACK, each immediately describes a
significant characteristic or feature of the goods on which
applicant intends to use his marks. Each term immediately
informs consumers that applicant’s goods, “prepackaged
medication,” are sold with the component medications
already arranged into a prepackaged unit which is sold as a
pack.
Ser. Nos. 76/113622, 76/113623 & 76/113624
12
The dictionary listings for the words establish their
meanings in the English language. Not only are the terms
“pac” and “pak” the phonetic equivalent of the word “pack,
but both “pac” and “pak” appear in the dictionary, and both
are defined as “pack.” Consumers would understand these
two terms to be the equivalent of “pack” and its normally
understood meaning relating to a container or a package
which contains a number of similar units assembled into one
package. See In re Omaha National Corporation, 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Quik-Print Copy
Shop, Inc., 616 F.2d 523, 205 USPQ 505, footnote 9 (CCPA
1980); In re State Chemical Manufacturing Co., 225 USPQ 687
(TTAB 1985); and In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982).
Moreover, the Nexis evidence show that there is a
particular recognized meaning for “pack” (or “pac” or
“pak”) with relation to medications. Thus, the record
establishes that consumers will view the terms “pac,” “pak”
and “pack” as descriptive of prepackaged medication. The
fact that many types of goods are prepackaged does not
negate the descriptive meaning of the terms in relation to
medication.
Purchasers and prospective purchasers of applicant’s
prepackaged medication, upon consideration of the terms
Ser. Nos. 76/113622, 76/113623 & 76/113624
13
“pac,” “pak,” or “pack” used in connection therewith, will
immediately know a significant feature of his product,
i.e., that it is medication sold prepackaged in units.
Such purchasers or prospective purchasers will not need to
engage in even the slightest degree of cogitation or
reasoning to understand the significance of these terms
when used in conjunction with the product. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Omaha National Corporation, supra; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); and In re
Time Solutions, Inc., 33 USPQ2d 1156 (TTAB 1994).
Inasmuch as the record establishes that each of these
terms, PAC, PAK and PACK, unquestionably projects a merely
descriptive connotation with regard to prepackaged
medication, we believe that competitors have a competitive
need to use these terms. See In re Tekdyne Inc., 33 USPQ2d
1949, 1953 (TTAB 1994); and 2 J. Thomas McCarthy, McCarthy
on Trademarks and Unfair Competition, §11:18 (4th ed.
2001).
Decision: The requirement for a more definite
identification of goods, and the refusal to register under
Section 2(e)(1) are affirmed in each application.
