Orphan Medical, Inc.

Trademark Trial and Appeal Board

Sep 23, 2004

No. 75781056 (T.T.A.B. Sep. 23, 2004)

Mailed: 9/23/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Orphan Medical, Inc.
________
Serial No. 75781056
_______
Stephen R. Baird and Michael T. Olsen of Winthrop &
Weinstine for applicant.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed to register the mark ORPHAN
MEDICAL for a “housemark for pharmaceutical preparations
for the prevention, treatment, and aiding in the treatment
of human and animal conditions, illnesses and diseases.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
1 Application Serial No. 75781056, filed August 20, 1999,
alleging a date of first use anywhere and a date of first use in
commerce of 1995. Although applicant earlier disclaimed the word
“Medical,” the disclaimer subsequently was withdrawn.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75781056
2
that applicant’s mark, when applied to applicant’s goods,
is merely descriptive.
Applicant, while maintaining that the mark is
inherently distinctive, asserted, in the alternative, a
claim under the provisions of Section 2(f) that its mark
has acquired distinctiveness for its goods in commerce.2
The examining attorney contends that if the mark ORPHAN
MEDICAL is found to be merely descriptive, then the
evidence of acquired distinctiveness is insufficient to
permit registration on the Principal Register.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney submitted briefs.
Applicant requested an oral hearing, but applicant
subsequently withdrew the request.
2 Applicant, in its appeal brief, refers to its claim as an
“alternative” request for registration under Section 2(f). A
review of the specific amendment to claim Section 2(f) in
applicant’s response filed April 27, 2001 reveals that the claim
originally was not made in the alternative. Applicant stated, in
the response (p. 2), that it was amending the application to
claim acquired distinctiveness in order to place the application
in condition for publication. When the examining attorney
indicated that applicant’s Section 2(f) evidence was
insufficient, applicant, in its next response, submitted
additional evidence, and stated that its proposed mark was
suggestive, not merely descriptive, and that “in the alternative”
the mark had become distinctive. Thus, we will treat applicant’s
claim as an alternative one, and not consider the claim as a
concession of mere descriptiveness. See In re Capital Formation
Counselors, Inc., 219 USPQ 916, 918 (TTAB 1983); and TMEP §
1212.02(c) (3d ed. rev. May 2003).
Ser No. 75781056
3
The examining attorney maintains that the terms
“orphan” and “medical” are each descriptive when applied to
applicant’s goods, and that each term retains its
descriptive significance when combined so that the
composite mark is itself descriptive. According to the
examining attorney, the term “orphan” refers to
pharmaceuticals used to treat certain rare diseases or
medical conditions. Although the examining attorney
concedes that there is no dictionary listing for “orphan
medical,” he asserts that the term “orphan drug” is a
commonly understood term in the pharmaceutical field. The
examining attorney views the mark as highly descriptive
and, thus, he finds that the Section 2(f) evidence falls
short of establishing acquired distinctiveness. In
particular, the examining attorney finds that applicant’s
prior registrations do not mandate the issuance of the
registration sought herein. In support of the refusal, the
examining attorney introduced dictionary definitions;
excerpts of articles retrieved from the NEXIS database;
excerpts of web sites (including applicant’s) taken from
the Internet; and copies of third-party registrations.
Applicant contends that the mark sought to be
registered is only suggestive, and that the examining
attorney has failed to establish that the mark is merely
Ser No. 75781056
4
descriptive when applied to applicant’s goods. Applicant
contends that the examining attorney has improperly equated
applicant’s mark ORPHAN MEDICAL with designations such as
“Orphan Drugs,” “Orphan Drug Company” or “Orphan Drug,
Inc.” Applicant states that the term “orphan,” when used
in connection with pharmaceuticals, plays on the generally
understood meaning of the term (“a parentless child”).
Although applicant acknowledges that “a segment of the
scientific community” has adopted the term “orphan” to
refer to drugs for treating rare, uncommon or overlooked
diseases, the term is “witty and clever” when used in
connection with drugs. (Response filed January 21, 2003,
p. 5). Applicant also contends that the term “medical” is
vague, and is not generally connected with pharmaceuticals.
Applicant also points to its ownership of two incontestable
registrations of ORPHAN MEDICAL marks that issued without
resort to Section 2(f). Applicant argues that the
registrations cover services related to the goods involved
herein, and that the examining attorney’s refusal to accord
probative value to them in determining the registrability
issue in the present case constitutes a collateral attack
on these registrations. Applicant owns Registration No.
1843925 for the mark ORPHAN MEDICAL (“MEDICAL” disclaimed),
in typed form, for “mail order services for distribution of
Ser No. 75781056
5
prescription drugs, medical products and authoritative
educational materials to individuals with chronic health
conditions; mail order services for the distribution of
authoritative educational materials to health
professionals.”3 Applicant also owns Registration No.
1906107 for the mark shown below (“MEDICAL” disclaimed)
for “research and development of prescription and over the
counter drugs for others.”4 Even if the mark is considered
to be merely descriptive, applicant claims, in the
alternative, that the mark has acquired distinctiveness.
In support of its arguments, applicant submitted copies of
its registrations; the declaration of John Bullion,
applicant’s chairman of the board and chief executive
officer, accompanied by related exhibits, including product
packaging, and advertising and informational materials;
excerpts of articles retrieved from the NEXIS database;
excerpts of a search of the Internet using GOOGLE;
3 Issued July 5, 1994; renewed.
4 Issued July 18, 1995; Section 8 affidavit accepted, Section 15
affidavit acknowledged.
Ser No. 75781056
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declarations of three individuals knowledgeable about the
pharmaceutical field; and a dictionary excerpt.5
Mere Descriptiveness
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
5 The dictionary evidence accompanied the appeal brief. Although
the record generally should be complete prior to appeal, the
Board may take judicial notice of dictionary evidence.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); and TBMP § 704.12(a) (2d ed. rev. 2004). Thus,
the examining attorney’s objection is overruled and, pursuant to
applicant’s request, we take judicial notice of this evidence.
Ser No. 75781056
7
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). It is settled that
“[t]he question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods and services are will understand the mark to convey
information about them.” In re Tower Tech Inc., 64 USPQ2d
1314, 1316-17 (TTAB 2002); see also In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313 (TTAB 1990); and In re American Greetings Corporation,
226 USPQ 365 (TTAB 1985).
When two or more descriptive terms are combined, the
determination of whether the composite mark also has a
descriptive significance turns on the question of whether
the combination of terms evokes a new and unique commercial
impression. If each component retains its descriptive
significance in relation to the goods or services, the
Ser No. 75781056
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combination results in a composite that is itself
descriptive. See, e.g., In re Tower Tech, Inc., supra
[SMARTTOWER merely descriptive of commercial and industrial
cooling towers]; In re Sun Microsystems Inc., 59 USPQ2d
1084 (TTAB 2001) [AGENTBEANS merely descriptive of computer
programs for use in development and deployment of
application programs]; In re Putnam Publishing Co., 39
USPQ2d 2021 (TTAB 1996) [FOOD & BEVERAGE ONLINE merely
descriptive of news information services for the food
processing industry]; and In re Copytele Inc., 31 USPQ2d
1540 (TTAB 1994) [SCREEN FAX PHONE merely descriptive of
facsimile terminals employing electrophoretic displays].
The term “orphan drug” is defined as follows: “a drug
used to treat a rare disease and for which the manufacturer
receives special tax credits and marketing rights as an
incentive to develop the drug.” (www.logophilia.com).
Another dictionary listing defines “orphan drug” as “a
pharmaceutical that has been abandoned or neglected during
its development because it is seen as having only a limited
potential for profit. Often a drug which only has a
limited target population or which treats a rare disease,
thus limiting its financial potential.” (On-line Medical
Dictionary).
Ser No. 75781056
9
The Food and Drug Administration of the U.S. Federal
Government (“FDA”) has an Office of Orphan Products
Development that administers a clinical research grants
program, whereby researchers compete for funding to conduct
clinical trials to support the approval of drugs for rare
diseases. At the FDA’s web site (www.fda.gov), the
following information is set forth under the heading
“Orphan Drugs”:
The term “orphan drug” refers to a
product that treats a rare disease
affecting fewer than 200,000 Americans.
The Orphan Drug Act was signed into law
on January 4, 1983. Since the Orphan
Drug Act passed, over 100 orphan drugs
and biological products have been
brought to market.
The intent of the Orphan Drug Act is to
stimulate the research, development,
and approval of products that treat
rare diseases. This mission is
accomplished through several
mechanisms:
-Sponsors are granted seven years of
marketing exclusivity after approval of
the orphan drug product.
-Sponsors also are granted tax
incentives for clinical research they
have undertaken.
-FDA’s Office of Orphan Development
coordinates research study design
assistance for sponsors of drugs for
rare diseases.
-The Office of Orphan Products
Development also encourages sponsors to
conduct open protocols, allowing
patients to be added to ongoing
studies.
Ser No. 75781056
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-Grant funding is available to defray
costs of qualified clinical testing
expenses incurred in connection with
the development of orphan products.
The examining attorney also introduced articles
retrieved from the NEXIS database that shed light on the
nature of orphan drugs in the medical field:
In the last 20 years, 238 orphan drugs
have been approved to treat a
population of more than 11 million
rare-disease patients, Marlene Haffner,
director of the US Food and Drug
Administration’s Office of Orphan
Products Development, told the 46th
annual Food & Drug Law Institute
education meeting in Washington, DC.
Incentives involved for developing
orphan drugs, which are defined as
treatments for conditions affecting
fewer than 200,000 persons or which
will not be profitable within seven
years of FDA approval, include....
(Pharma Marketletter, April 11, 2003)
In November 2002, Demegen was awarded
Orphan Drug designation for the P113D
compound for treatment of cystic
fibrosis.
(Drug Week, April 18, 2003)
Still, with plans to continue
aggressively acquiring so-called orphan
drugs--drugs original developers no
longer want--ESP and Thoma Cressey saw
a good fit....
(Daily Deal, April 17, 2003)
Excerpts from applicant’s web site (www.orphan.com)
show use of the designation “Dedicated to Patients with
Uncommon Diseases.” Applicant describes itself as
Ser No. 75781056
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“dedicated to patients with inadequately treated or
uncommon diseases” and states, in a press release, that it
“acquires, develops, and markets pharmaceuticals of high
medical value for inadequately treated and uncommon
diseases.”
Also of record is evidence bearing on the
descriptiveness of the term “medical.” It is noted, at the
outset, that applicant, in its two prior registrations,
disclaimed “Medical” apart from each mark. Moreover,
applicant initially disclaimed the term “medical” in the
present application; when applicant pursued its claim of
acquired distinctiveness, however, applicant withdrew the
disclaimer. In addition, the examining attorney submitted
two third-party registrations of marks including the term
“MEDICAL” as a feature thereof, both covering
pharmaceuticals. In each instance, the term “medical” is
disclaimed. Further, the examining attorney submitted
third-party registrations wherein the term “medical”
appears in the identifications of goods, as for example,
“pharmaceuticals and medical preparations.” The examining
attorney also introduced NEXIS articles showing uses such
as “medical drugs.”
The above evidence convinces us that each of the words
“ORPHAN” and “MEDICAL” is highly descriptive when used in
Ser No. 75781056
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connection with applicant’s pharmaceuticals. As evidenced
by applicant’s web site and mission statement, it
specializes in what the pharmaceutical industry refers to
as “orphan” drugs. The term “orphan” is commonly used and
has a readily understood meaning in the pharmaceutical
field as describing a particular type of drug used to treat
uncommon diseases. Further, the term “medical” is clearly
descriptive when used in connection with pharmaceuticals
used to treat medical conditions. The uses in the
pharmaceutical field of terms such as “medical drugs” and
“medical preparations” show that the term “medical” is
highly descriptive for applicant’s goods.6
Thus, the question now becomes whether these
individual words somehow lose this descriptiveness in the
combination ORPHAN MEDICAL that is sought to be registered.
While a combination of words may be registrable if it
creates a unitary mark with a unique, nondescriptive or
incongruous meaning, in this case each component of
applicant’s mark ORPHAN MEDICAL retains its highly
descriptive significance when used in the combination, and
6 Contrary to applicant’s contention, this situation is different
from the one confronted by the Federal Circuit regarding the term
“technology.” See In re Hutchinson Technology, 852 F.2d 552, 7
USPQ2d 1490 (Fed. Cir. 1988). Notwithstanding the Court’s
finding in that case, the Court still required applicant to
submit a disclaimer of “technology.”
Ser No. 75781056
13
the combination is also highly descriptive of applicant’s
pharmaceuticals. That is, ORPHAN MEDICAL immediately
describes the nature of applicant’s products which are
orphan medical drugs. When the mark ORPHAN MEDICAL is
considered as a whole, as applied to applicant’s goods,
there is absolutely nothing in the mark that is incongruous
or ambiguous, nor is there anything which would require the
exercise of imagination, cogitation or mental processing or
necessitate the gathering of further information in order
for the highly descriptive significance of the mark to be
readily apparent to purchasers of applicant’s
pharmaceuticals.
In finding that ORPHAN MEDICAL is highly descriptive
when used in connection with applicant’s pharmaceuticals,
we recognize, of course, applicant’s ownership of its two
prior registrations. Contrary to applicant’s argument, we
do not view this holding of mere descriptiveness as a
collateral attack or as otherwise inconsistent with the
rights of registration afforded under Sections 7(b) and 15
of the Trademark Act. Applicant’s argument has merit only
in the case where both the marks and the goods and services
are identical. Here, the involved goods obviously are
different from the services listed in the two prior
registrations and, in the case of the logo registration,
Ser No. 75781056
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the marks obviously are different. Ownership of an
incontestable registration does not give the applicant a
right to register the same mark for different goods or
services, even if they are closely related to the goods or
services in the incontestable registration. See In re Save
Venice New York Inc., 259 F.3d 1346, 59 USPQ2d 1778, 1782
(Fed. Cir. 2001) [“[a] registered mark is incontestable
only in the form registered and for the goods or services
claimed.”]; In re Merrill Lynch, Pierce, Fenner & Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); In re
Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865 (Fed.
Cir. 1985); and In re BankAmerica Corp., 231 USPQ 873 (TTAB
1986). See also TMEP § 1216.02 (3d ed. rev. May 2003) and
cases cited therein.
The refusal to register under Section 2(e)(1) on the
ground of mere descriptiveness is affirmed.
Acquired Distinctiveness
In view of our finding that applicant’s mark is merely
descriptive, we turn to applicant’s alternative claim of
acquired distinctiveness under Section 2(f). On the
Section 2(f) issue, applicant has the burden of proving
that its designation has acquired distinctiveness. In re
Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
Ser No. 75781056
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that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha International Corp., supra at 1008. In this case
that standard is difficult to meet in view of the highly
descriptive nature of applicant’s mark.
As noted above, applicant submitted the declaration of
its chief executive officer. Mr. Bullion, in his
declaration, states that applicant is a publicly held
corporation (with a market capitalization of around $111.3
million) that acquires, develops and markets specialty
pharmaceuticals for inadequately treated and uncommon
diseases. Since January 1993, applicant has made
continuous and substantially exclusive use of the mark
ORPHAN MEDICAL in connection with its pharmaceuticals,
educational materials, and related services. According to
Mr. Bullion, applicant uses ORPHAN MEDICAL as a house mark
and, as such, every product package, label and
informational insert for its seven pharmaceuticals bear, in
prominent fashion, the ORPHAN MEDICAL housemark. In this
connection, Mr. Bullion asserts that the prominent display
and emphasis of its housemark is part of applicant’s
conscious effort to associate in the minds of consumers the
ORPHAN MEDICAL mark with applicant’s pharmaceuticals.
Ser No. 75781056
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During the period 1996 to mid-2001, applicant’s sales of
pharmaceuticals bearing the mark exceeded $28 million;
advertising expenditures during the same time period
totaled more than $16 million. It is Mr. Bullion’s belief
that consumers associate the mark ORPHAN MEDICAL with
pharmaceuticals emanating from applicant.
Also of record are three identical declarations of the
following individuals: William Watson, pharmacist,
professor at the University of Texas Health Science Center
at San Antonio, and managing director of the South Texas
Poison Center; Keith Burkhart, associate professor of
medicine and pharmacology at Pennsylvania State University
College of Medicine, and vice president of the American
College of Medical Toxicology; and Jeffrey Brent,
toxicologist and clinical professor at the University of
Colorado Health Sciences Center. Each declaration reads as
follows:
When I encounter the words “ORPHAN
MEDICAL on or in connection with
pharmaceutical preparations, I view the
words as an indication of source and
associate the words solely with Orphan
Medical. I am not aware of any other
pharmaceutical company using the
“ORPHAN MEDICAL” mark on or in
connection with pharmaceutical
preparations. I am also not aware of
any pharmaceutical company using the
word combination “ORPHAN MEDICAL” to
describe the pharmaceutical
Ser No. 75781056
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preparations offered by the company.
In my opinion, the “ORPHAN MEDICAL”
mark distinguishes Orphan Medical’s
pharmaceutical preparations from the
pharmaceutical preparations offered by
other companies.
As part of its claim of acquired distinctiveness,
applicant also relies upon its ownership of its two
previously issued and incontestable registrations.
Given that the mark ORPHAN MEDICAL is so highly
descriptive, we find that the totality of the Section 2(f)
evidence is insufficient to establish acquired
distinctiveness.
Applicant’s total revenues of $28 million over six
years suggests that it has enjoyed some modest degree of
business success. However, it is difficult to more
accurately gauge the level of this success in the
pharmaceutical field in the absence of additional
information such as applicant’s market share or how it
ranks in terms of sales in the industry. Standing alone,
the sales figures would appear to be less than impressive
in the large pharmaceutical industry. In any event, the
sales figures show only the popularity (to the extent that
such even exists) of applicant’s products, not that
relevant customers of such products have come to view
ORPHAN MEDICAL as applicant’s source-identifying mark. In
Ser No. 75781056
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re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d
1727 (Fed. Cir. 1990); and In re Recorded Books Inc., 42
USPQ2d 1275 (TTAB 1997). The news articles about applicant
and its products, and the fact that a GOOGLE search of
“orphan medical” shows that the first fifty articles
retrieved refer solely to applicant, likewise are of little
significance in showing that ORPHAN MEDICAL is perceived as
a source indicator for applicant’s goods. The issue here
is the achievement of distinctiveness, and the evidence
falls short of establishing this.
Likewise, the total advertising expenditures of $16
million do not appear to be out of the ordinary. Moreover,
this figure only suggests the efforts made to acquire
distinctiveness, and do not demonstrate that the efforts
have been successful. In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991).
The declarations of three individuals knowledgeable in
the field are not persuasive of a different result.
Firstly, the pharmaceutical industry is very large, yet the
record contains evidence of only three individuals who
associate ORPHAN MEDICAL with applicant. Secondly, given
the professional standing of these individuals in their
fields, it is likely that they are more knowledgeable about
applicant than are most of the customers for applicant’s
Ser No. 75781056
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pharmaceuticals, namely physicians and pharmacists. We
find that this fact diminishes the probative weight of the
declarations.
As for applicant’s ownership of its two prior
registrations, Trademark Rule 2.41(b) provides that the
examining attorney may accept evidence of acquired
distinctiveness on the basis of applicant’s ownership of
one or more prior registrations of the “same mark” on the
Principal Register. Thus, the fact that there are clear
differences between applicant’s logo mark and the typed
mark involved herein, hinders reliance on Registration No.
1906107. In addition, it would appear that the services
listed in Registration No. 1906107 (research and
development for pharmaceuticals) are directed to different
classes of purchasers than are the pharmaceuticals
themselves (that is, the goods involved herein). Thus, the
value of this registration to applicant’s Section 2(f)
claim is questionable.
In the case of applicant’s prior registration of the
mark ORPHAN MEDICAL in typed form, the marks are identical.
The pharmaceuticals listed in the present application are
related to the mail order services for distributing the
pharmaceuticals listed in Registration No. 1843925; in this
case, the services and the goods would be marketed to the
Ser No. 75781056
20
same classes of purchasers. Although this registration
evidence adds to the weight of applicant’s claim of
acquired distinctiveness, it hardly is enough given the
highly descriptive nature of ORPHAN MEDICAL. See TMEP §
1212.04 (3d ed. rev. May 2003).
Further, as is often stated, each case must be decided
on its own facts. We are not privy to the records in the
files of applicant’s prior registrations and, moreover, the
determination of registrability of particular marks by the
Trademark Examining Groups cannot control the result in
another case involving a different mark for different goods
and/or services. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
We conclude that the totality of evidence is
insufficient to support registration of applicant’s highly
descriptive mark on the Principal Register pursuant to the
provisions of Section 2(f). Given the highly descriptive
nature of ORPHAN MEDICAL for applicant’s pharmaceuticals,
much more evidence (especially in the form of direct
evidence from customers) than what applicant has submitted
would be necessary to show that the mark has become
distinctive of applicant’s goods. That is to say, the
greater the degree of descriptiveness, the greater the
evidentiary burden on the applicant to establish acquired
Ser No. 75781056
21
distinctiveness. Yamaha International Corp. v. Hoshino
Gakki Co., supra; and In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., supra.
Decision: The refusal to register on the ground of
mere descriptiveness is affirmed. The examining attorney’s
finding that applicant failed to establish acquired
distinctiveness is affirmed.