L. Perrigo Co.

Trademark Trial and Appeal Board

Sep 15, 1998

No. 74675504 (T.T.A.B. Sep. 15, 1998)

Paper No. 17
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 15, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re L. Perrigo Company
________
Serial No. 74/675,504
_______
Harold Reick of Price, Heneveld, Cooper, DeWitt & Litton
for applicant
Angela Micheli, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney)
_______
Before Seeherman, Hanak and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
L. Perrigo Company has filed an application to
register the mark CONFIRMED RELEASE and design, in the form
reproduced below
Ser. No. 74675504
2
for “dietary supplements”.1
The Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, on
the ground that applicant’s mark is merely descriptive of
applicant’s goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs2, but an oral hearing
was not requested. We reverse.
We note at the outset that the Examining Attorney
originally refused registration under Section 2(e)(1), and
stated that if the mark was determined to be otherwise
registrable, the words “CONFIRMED RELEASE” must be
disclaimed. In applicant’s May 6, 1996 response to the
first Office action, applicant stated that if the mark was
otherwise deemed to be registrable, then applicant would be
willing to disclaim the words “CONFIRMED RELEASE”. On July
17, 1996 the Examining Attorney entered a disclaimer of the
words “CONFIRMED RELEASE” by way of Examiner’s amendment;
and on October 9, 1996 the Examining Attorney refused
registration of the entire mark as merely descriptive,

1 Application Serial No. 74/675,504, filed May 15, 1995, alleging
dates of first use and first use in commerce of July 18, 1994.
2 Applicant submitted photocopies of registrations with its reply
brief which were not previously made of record in this case.
Ser. No. 74675504
3
noting that the disclaimer had been entered. Although
applicant had originally offered the disclaimer of
‘CONFIRMED RELEASE’ conditionally, applicant never
challenged the entry of the disclaimer. Therefore, we deem
applicant to have disclaimed exclusive rights to the words
per se.
The question before the Board is not whether the words
“CONFIRMED RELEASE” per se are merely descriptive, because
the record includes a disclaimer thereof. See Kellogg Co.
v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, at footnote 10
(TTAB 1990); and In re Pollio Dairy Products Corp., 8
USPQ2d 2012, at footnote 4 (TTAB 1988). Rather, the issue
before the Board is whether the mark as a whole, including
the special type and the design, is merely descriptive.
It is the Examining Attorney’s position that neither
the stylization of the lettering for the words, nor the
“simple oval shape” or the “incomplete oval” (even if
viewed as described by applicant as “arches”) create a
commercial impression apart from the descriptive wording;
that the design is a background feature or a carrier for
the descriptive wording; and that the mark is not

Pursuant to Trademark Rule 2.142(d) this material is not properly
before the Board on appeal, and it has not been considered.
Ser. No. 74675504
4
distinctive, but rather is merely descriptive of
applicant’s goods.
Applicant maintains that the stacked words ‘CONFIRMED
RELEASE’ are printed in a distinctive type including the
letters ‘C’ and ‘D’ being enlarged; that both the words and
the two enlarged letters are integrated into the “reflected
(or ‘mirrored’) tapered arch design”; that applicant’s arch
design is not a common geometric shape such as a square,
rectangle, triangle, circle or oval, but rather is an
arbitrary unique and distinctive element of the mark; and
that the mark is arbitrary and protectable as inherently
distinctive.
It has been held that if the background display of a
mark is distinctive or unique enough to create a commercial
impression separate and apart from the disclaimed matter,
the mark as a whole may be registered without any showing
of secondary meaning; and conversely, if the design is mere
background material which does not create a separate
commercial impression, the mark as a whole may be
registered only upon proof of secondary meaning. It is
also settled that common basic shapes such as circles,
ovals, triangles, diamonds, stars, and other geometric
designs, when used as vehicles for the display of word or
letter marks, are not regarded as indicia of origin for the
Ser. No. 74675504
5
goods to which they are applied in the absence of a showing
of secondary meaning in the design alone. See In re E. J.
Brach & Sons, 118 USPQ 308 (CCPA 1958); and In re Haggar
Co., 217 USPQ 81 (TTAB 1982).
In the instant case, we are not persuaded by the
Examining Attorney’s argument that the design feature is a
“simple oval shape”, or is mere background for the word
portion of the mark. The design portion of the mark is not
a straight-forward oval design, enclosing two words.
Rather, because portions of the words are capped with the
“oval” or “tapered arch” design, with the letters ‘C’ and
‘D’ depicted in larger size outside of the line design, the
design is not a mere background. As a result, the mark as
a whole is distinctive despite the fact that it includes
the descriptive words ‘CONFIRMED RELEASE’.
Decision: The refusal to register under Section
2(e)(1) is reversed.
E. J. Seeherman
E. W. Hanak
Ser. No. 74675504
6
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board