Pharmaceutical Tech-nologies, Inc.

Trademark Trial and Appeal Board

Jul 10, 2002

No. 75662682 (T.T.A.B. Jul. 10, 2002)

Hearing: Paper No. 18
March 26, 2002 DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pharmaceutical Technologies, Inc.
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Serial No. 75/662,682
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James R. Menker and Paul W. Kruse of Pillsbury Winthrop LLP
for Pharmaceutical Technologies, Inc.
Michael W. Baird, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Bucher, Bottorff and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Pharmaceutical Technologies, Inc. sought to register
the term PHARMACY SMARTCARD on the Principal Register when
used in conjunction with services recited, as amended, as
“prescription drug buying clubs incorporating non-
electronically encoded membership cards” in International
Class 35.1
1 Application Serial No. 75/662,682 was filed on March 18,
1999, based upon applicant’s claim of use in commerce at least as
early as 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/662,682
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Registration was finally refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s mark is deceptively
misdescriptive of the recited services.
Applicant and the Trademark Examining Attorney have
filed briefs, and both appeared at an oral hearing before
the Board.
We affirm the refusal to register.
The test for deceptive misdescriptiveness has two
parts. First, it must be determined if the matter sought
to be registered misdescribes the goods or services. If
so, it must be determined whether it is also deceptive,
that is, if anyone is likely to believe the
misrepresentation. In re Quady Winery Inc., 221 USPQ 1213,
1214 (TTAB 1984).
It is the Trademark Examining Attorney’s position that
the term PHARMACY SMARTCARD clearly misdescribes
applicant’s prescription drug buying services where
applicant has specifically excluded reliance on smart cards
from its recital of services. Furthermore, based upon this
entire record, the Trademark Examining Attorney contends
that consumers are likely to believe the misrepresentation.
By contrast, applicant argues that its mark does not
misdescribe the recited services. Moreover, even assuming
Serial No. 75/662,682
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arguendo, that it does misdescribe the services, applicant
argues that consumers and prospective consumers who
encounter this terminology within its explanatory brochures
and attached cards will not believe these services
incorporate a “smart card.”
The record is replete with references to the growing,
myriad ways in which smart card technology is applied, and
especially ways in which smart cards are uniquely suited
for applications in the health care, medical and
pharmaceutical areas [emphasis supplied]:
… The smart card-based SmartRec product
allows health care consumers to carry vital
medical and demographic information on a
personalized smart card, which can be
accessed by providers at hospitals, clinics,
emergency rooms, pharmacies and other points
of care. The Minneapolis Star Tribune,
(February 23, 1999).
A plastic card with a chip inside could
promote change in the way Americans do
business… [M]agnetic strip cards (like
regular credit cards) are sometimes
erroneously referred to as “smart cards.”
That’s the bad news. The good news: mag
strips can hold more information now, and
companies from Rite-Aid Drug to Ruth Chris
Steak House are finding all kinds of new
uses for them… Vero Beach Press Journal
(July 12, 1999).
Precis, an Oklahoma City based company,
develops and markets smart cards, which look
similar to credit cards but can serve many
functions. Precis’ latest project is an
emergency smart card that contains a
Serial No. 75/662,682
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person’s medical information… The Daily
Oklahoman (March 23, 2000).
Similarly, the various dictionary entries corroborate
the detailed Lexis/Nexis stories about what kind of
features make a “smart card”: a credit card-sized plastic
card capable of storing and processing relatively large
amounts of information in imbedded microprocessors.
However, applicant contends that in reality, its
underlying card functions as nothing more than any other
club card or membership card. It is not a smart card
inasmuch as it contains neither a magnetic strip nor
microchips. To the contrary, applicant’s thin plastic card
is not a smart card inasmuch as it comes prepackaged inside
an explanatory brochure. After activation of one’s
membership and the use of one’s card at a local,
participating pharmacy, information is simply archived on
the pharmacist’s computer or related network servers.
However, many key passages in the specimens of record
that were highlighted by the Trademark Examining Attorney
create a misleading impression of how the services
associated with this card actually work:
By using your PTI Pharmacy SmartCard at our PTI
Pharmacy SmartCard network stores you can be assured
that you and your family are consistently receiving
Protection from high drug costs, Protection from life
threatening drug interactions… … the CareMax network
Serial No. 75/662,682
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of stores have committed to competitive pricing and are
passing the savings to you instantly through the on-line
real time SmartCard technologies…. Coupled with this
network of stores, the technologies available to our
SmartCard members will include drug-to-drug
interaction, drug to disease checking, drug dose and
duration checking, allergy pattern checking and duplicate
therapy checking… When activating your card with NPS
you will be asked to provide your allergy patterns and
any disease codes you would like the on-line real time
technologies to check against to protect you and your
family members… …we want to protect you with our
PTI Pharmacy SmartCard technologies anywhere in
America.
Despite applicant’s representations that it does not
intend to mislead potential consumers into believing that
its PHARMACY SMARTCARD is really a “smart card,” the above
referenced brochure contains repeated passages such as
“activating your card,” “network,” “on-line, real time,
SmartCard technologies,” “drug-to-drug interaction, drug to
disease checking, drug dose and duration checking, allergy
pattern checking and duplicate therapy checking,” etc.
Moreover, this astonishing array of benefits supposedly
derived from applicant’s services associated with its
PHARMACY SMARTCARD are totally consistent with the benefits
being touted in the Lexis/Nexis articles about smart cards
currently available in the medical, pharmaceutical and
health care fields generally.
Serial No. 75/662,682
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Hence, under the first query of In re Quady Winery
Inc., we find that the term PHARMACY SMARTCARD indeed
misdescribes buying club services where the featured
membership card cannot function as a “smart card.”
We turn then to the second query posed by Quady
Winery, namely, whether PHARMACY SMARTCARD is also
deceptive, that is, if anyone is likely to believe the
misdescription.
The record demonstrates that consumers are being
conditioned by technological advances in the marketplace to
believe that all kinds of smart cards are poised for
widespread usage. As seen from the Lexis/Nexis excerpts,
the health care field is one of the first areas mentioned
when discussing future demands for smart card technology
(e.g., storage of personal patient data and medical history
on a card). Applicant’s own specimens suggest that
applicant is willing to use this growing knowledge on the
part of consumers to its advantage. On reviewing the
specimens of record, one can conclude that here is a health
care service using the latest smart card technologies to
provide prescription drugs cheaply, easily, simply, safely
and securely.
Nonetheless, applicant repeatedly raises several
counter arguments, which we will discuss briefly:
Serial No. 75/662,682
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This is just an inexpensive, money-saving buyer’s
club: Applicant tries to contrast its own prescription
drug buying club services with an actual smart card that
might well be used by other health care providers for the
distribution of goods sold by pharmacies. This simply
confirms that it is quite plausible that applicant would
use smart card technology in the performance of its
PHARMACY SMARTCARD services.
Sophistication of consumers: As to whether the
prospective consumers will be deceived, applicant argues
that its services are “… almost exclusively marketed to
administrators of large health care benefit programs.”
However, as noted above, the specimens are written in a way
that makes it clear they are directed to individual,
average consumers, not to sophisticated health care or
business professionals.
Single word versus two words: Applicant claims that
the single word SMARTCARD, as it appears in its drawing of
record, is fanciful. Applicant contrasts this compound
word with the generic term, where it is more frequently
presented as two words (smart card). However, deleting
this space is a de minimus difference in presentation that
will be overlooked by most consumers. It is hornbook law
that the use of a slight misspelling of a misdescriptive
Serial No. 75/662,682
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term that would be perceived by purchasers as the
equivalent of the misdescriptive term is subject to the
same proscription of Section 2(e)(1) as the misdescriptive
term itself. See In Re Organik Technologies, Inc., 41
USPQ2d 1680 (TTAB 1997) [Applicant’s mark ORGANIK, the
phonetic equivalent of the term “organic,” is
misdescriptive of applicant's cotton textiles and
clothing].
Moreover, as noted by the Trademark Examining
Attorney, this alleged difference in spelling or
presentation becomes even more inconsequential in light of
the special form in which applicant usually uses this term
on its advertisements. Specifically, SmartCard, having two
capital letters, actually accentuates the origin of this
term as two words, thereby retaining the exact connotation
of this apt, descriptive terminology.
Proper trademark usage: Applicant argues that it
always uses the term “Pharmacy SmartCard” in a proper
trademark manner. However, we note that the front of the
specimens of record say “A Nationwide PHARMACY SMARTCARD.”
It goes on to suggest that after ‘activating the card,”
prescription drug users simply “present your card” to a
participating pharmacy. In this context, the article “A”
precedes the descriptive term “Nationwide,” and both modify
Serial No. 75/662,682
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the word PHARMACY (“a place where drugs are sold; a
drugstore”) used to describe the generic noun, “SMARTCARD.”
The total connotation of this phrase is of a plastic card
embedded with microprocessors which card is capable of
storing and processing large amounts of pharmaceutical
information. Other than the fact that the term PHARMACY
SMARTCARD is capitalized, within this precise phrase, there
is no inherently distinctive, source-identifying matter for
the recited services contained within this alleged mark.
“Smart” means “savvy”: Applicant points to the text
of one of its promotional materials that uses the term
“smart” throughout to refer to savvy or intelligent
consumers of pharmacy products. We agree with applicant
that the term “smart” is indeed used repeatedly in this one
promotional piece as a synonym for the savvy or intelligent
consumer of prescription pharmaceuticals. Nonetheless,
this repeated connotation of “smart” as meaning savvy in
one promotional piece can hardly detract from the
misdescriptive usage in the specimens of record where smart
appears repeatedly as part of phrases such as “Pharmacy
SmartCard technology.”
Finally, we agree with the Trademark Examining
Attorney that merely because the true nature of the
services is revealed by some other matter in the
Serial No. 75/662,682
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advertisement does not preclude a determination that a mark
is deceptively misdescriptive of such services. R. Neumann
& Co. v. Overseas Shipments, Inc., 326 F.2d 786, 140 USPQ
276 (CCPA 1964).
Decision: The refusal to register is affirmed on the
ground that applicant’s mark is deceptively misdescriptive
of the recited services.