Prolong Pharmaceuticals, LLC

Trademark Trial and Appeal Board

Jun 5, 2015

No. 86091299 (T.T.A.B. Jun. 5, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Prolong Pharmaceuticals, LLC
_____

Serial Nos. 86091299 and 86091302
_____

Erik M. Pelton of Erik M. Pelton & Associates PLLC for Prolong Pharmaceuticals,
LLC.

Christina Sobral, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
_____

Before Quinn, Kuczma and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Prolong Pharmaceuticals, LLC (“Applicant”) seeks Principal Register
registrations for the proposed marks TREATING COMORBIDITIES and
TREATING THE COMORBIDITIES OF SICKLE CELL DISEASE, both in
standard characters and both for “Custom manufacturing services for others in the
field of pharmaceuticals; manufacturing services in the field of pharmaceuticals to
the order and specification of others; contract manufacturing services in the field of
Serial Nos. 86091299 and 86091302

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pharmaceuticals.”1 The Examining Attorney refused registration on the ground that
Applicant’s proposed marks are merely descriptive of the identified services under
Section 2(e)(1) of the Trademark Act. After the refusals became final, Applicant
appealed and Applicant and the Examining Attorney filed briefs.
Appeals Consolidated
These appeals involve common questions of law and fact and the records are
substantially similar. Accordingly, we consolidate and decide both appeals in this
single decision. See, In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP §
1214 (2014).
Decision
A mark is deemed to be merely descriptive, within the meaning of Section
2(e)(1), if it immediately conveys knowledge of a quality, feature, function,
characteristic or purpose of the services for which it is used. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009)); and In re Abcor Development, 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A mark need not immediately convey an
idea of each and every specific feature of the services in order to be considered
merely descriptive; rather, it is sufficient that the mark describes one significant
attribute, function or property of the services. In re Chamber of Commerce of the
United States of America, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012);
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180

1 Application Serial Nos. 86091299 and 86091302, respectively, each filed October 15, 2013
based on an intent to use each mark in commerce under Section 1(b) of the Trademark Act.
Serial Nos. 86091299 and 86091302

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USPQ 338 (TTAB 1973). Whether a mark is merely descriptive is determined not in
the abstract, but in relation to the services for which registration is sought, the
context in which it is being used on or in connection with the services, and the
possible significance that the mark would have to the average purchaser of the
services because of the manner of its use. 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 or services are will
understand the mark to convey information about them.” In re Tower Tech Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on
whether the combination of terms evokes a new and unique commercial impression.
If each component retains its merely descriptive significance in relation to the
services, the combination results in a composite that is itself merely descriptive. See
e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
2004) (PATENTS.COM merely descriptive of computer software for managing a
database of records that could include patents, and for tracking the status of the
records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332
(TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re
Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of
real estate brokerage, real estate consultation and real estate listing services); In re
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Tower Tech, 64 USPQ2d at 1314 (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
developing and deploying application programs); In re Putman Publishing Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
In support of the descriptiveness refusals, the Examining Attorney relies on the
following dictionary definitions and descriptions of the proposed marks’ constituent
terms:
TREAT—

“to deal with (a disease, patient, etc.) in order to relieve or
cure”

and

(Medical Dictionary) “to give medical aid to counteract a
disease or condition”

COMORBIDITY—

“a concomitant but unrelated pathological or disease
process”

“two or more coexisting medical conditions or disease
processes that are additional to an initial diagnosis”

and

“The presence of one or more disorders (e.g. pain or stroke)
in addition to a primary disease (e.g. SCD). It implies
interactions between the illnesses that affect the course and
prognosis of both. Comorbidity is associated with worse
health outcomes, more complex clinical management, and
increased health care costs.
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SICKLE CELL DISEASE—“a group of disorders that affects
hemoglobin, the molecule in red blood cells that delivers oxygen
to cells throughout the body ….”

Office Actions of January 30 and June 9, 2014.2 The Examining Attorney also relies
on the following passages from Applicant’s website:
… [Applicant] is developing products to treat several
diseases and their debilitating comorbidities which
cause reduced quality of life, increased medical costs and
mortality. Comorbidities are a common consequence of
sickle cell disease, chemotherapy, atherosclerosis,
diabetes and many other diseases.

The Company’s lead product, SANGUINATE™, is in
clinical testing, focused on treating the comorbidities
of sickle cell disease and other disorders caused by
ischemia, hypoxia and/or hemolysis.

[Applicant] has a long-acting 3rd generation biologic in
clinical development for the treatment of anemia, a
comorbidity common with chronic kidney disease and
cancer chemotherapy.

Other products are also in development for
comorbidities that result from diseases such as
cardiovascular disorders and cancer.

Office Action of June 9, 2014.
This evidence establishes that Applicant’s proposed marks are merely
descriptive. Applicant’s website reveals that the purpose and end result of its
pharmaceutical manufacturing services is drugs which “treat comorbidities,”
including “comorbidities of sickle cell disease.” It is settled that where marks

2 The definition of “treat” is from “dictionary.com” (Random House Dictionary); the first
two definitions of “comorbidity” are from “thefreedictionary.com” (American Heritage
Medical Dictionary and Mosby’s Medical Dictionary) and the third is from Applicant’s
website; and the description of sickle cell disease is from the National Institutes of Health’s
Genetics Home Reference.
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describe the intended purpose of the services in connection with which they are
used, they are merely descriptive. In re W.A. Sheaffer Pen Co., 158 F.2d 390, 72
USPQ 129, 130 (CCPA 1946) (finding FINELINE merely descriptive of pencils,
because “appellant’s pencil, and the lead therein, when used for its intended
purpose, does produce and include a line which by relative standards of comparison
is properly described or characterized as ‘fine’” and the “mark, if registered, might
hamper others in the free use of the words ‘fine’ and ‘line’”); In re Wells Fargo & Co.,
231 USPQ 95 (TTAB 1986) (finding EXPRESSSERVICE merely descriptive of
banking and trust services); In re National Presto Industries, Inc., 197 USPQ 188
(TTAB 1977) (finding PRESTO BURGER merely descriptive of electrical cooking
utensils because the application “covers … utensils which might be used to cook the
meat portion of a hamburger sandwich, toast the roll portion of the sandwich, or
cook or heat the combination of the meat and roll as a complete sandwich. The fact
that the utensil could conceivably also be used for other purposes is legally
irrelevant.”); In re MBAssociates, 180 USPQ at 339 (finding STUN-GUN merely
descriptive of “a weapon or gun designed to be used to stun or make a person
senseless or unconscious when the need arises”).
Furthermore, in promoting its “lead product,” sold under the trademark
SANGUINATE, Applicant uses the proposed marks not to identify the product or
the manufacturing services which produced it, but instead to describe the product
and its purpose, as the website explains that the drug is focused on “treating the
comorbidities of sickle cell disease.” Elsewhere on its website, Applicant uses the
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individual components of its proposed marks to convey their ordinary meaning, as
its pharmaceutical services result in products which “treat” diseases, specifically
“comorbidities,” including the “comorbidities” of “sickle cell disease.” “Evidence of
the context in which a mark is used on labels, packages, or in advertising material
directed to the goods is probative of the reaction of prospective purchasers to the
mark.” In re Abcor Development, 200 USPQ at 218; In re Promo Ink, 78 USPQ2d
1301, 1303 (TTAB 2006). In short, Applicant’s own use of the proposed mark
TREATING THE COMORBIDITIES OF SICKLE CELL DISEASE, which
essentially encompasses Applicant’s other proposed mark TREATING
COMORBIDITIES, reveals that the proposed marks are merely descriptive. In re
Hunter Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) (“applicant’s own use of the
term ERGONOMIC … highlights the descriptive nature of this term …”).
The evidence of record makes clear that “the mark[s] as a whole, i.e., the
combination of the individual parts,” in this case TREATING COMORBIDITIES
and TREATING THE COMORBIDITIES OF SICKLE CELL DISEASE, do not
convey “any distinctive source-identifying impression contrary to the
descriptiveness of the individual parts.” In re Oppedahl & Larson, 71 USPQ2d at
1372. To the contrary, from “the perspective of a prospective purchaser or user” of
Applicant’s pharmaceutical services, “because … the combination of the terms does
not result in a composite that alters the meaning of [any] of the elements,” and does
not create a double entendre, “refusal on the ground of descriptiveness is
appropriate.” In re Petroglyph Games, at 1341.
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Applicant’s arguments in support of registration are unavailing. While it may
be true that “comorbidity” is a somewhat “vague” term in the abstract, and that a
consumer presented with only the proposed marks may not immediately
understand the nature of Applicant’s pharmaceutical manufacturing services, that
is not the issue. The question we are presented with here is whether someone who
knows what Applicant’s services are will understand the proposed marks to convey
information about them. In re Tower Tech, 64 USPQ2d at 1316-17. Here, consumers
would immediately understand that Applicant’s pharmaceutical manufacturing
services are aimed at developing pharmaceuticals to treat comorbidities, including
comorbidities of sickle cell disease, as Applicant’s website and own use of the terms
reveal. It is not relevant that Applicant’s proposed marks are broad, general and
could also describe other services. In re National Presto Industries, 197 USPQ at
188.
Indeed, it is settled “that so long as any one of the meanings of a term is
descriptive, the term may be considered to be merely descriptive.” In re Chopper
Industries, 222 USPQ 258, 259 (TTAB 1984); see also, In re IP Carrier Consulting
Group, 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest, 204 USPQ at 593.
Therefore, our finding of descriptiveness is further supported by Applicant’s
concession that “[o]ut of all things that TREATING COMORBIDITIES [and
TREATING THE COMORBIDITIES OF SICKLE CELL DISEASE] describes,
Applicant’s custom manufacturing of pharmaceuticals service is only one of them.”
Applicant’s Reply Briefs at 4.
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Conclusion
While Applicant is correct that we must resolve doubt in its favor, here we have
no doubt. On this record, it is clear that consumers familiar with Applicant’s
pharmaceutical services would immediately understand, upon seeing Applicant’s
proposed marks, that the pharmaceuticals resulting from Applicant’s services are
intended to treat comorbidities, including comorbidities of sickle cell disease.
Furthermore, Applicant’s competitors who also focus on comorbidities should, like
Applicant, have the opportunity to use “treating comorbidities” to explain the
purpose of their products or services. See, In re Boston Beer Co. L.P., 47 USPQ2d
1914, 1920-21 (TTAB 1998) (finding THE BEST BEER IN AMERICA to be merely
descriptive and without acquired distinctiveness for beer, stating that “Such claims
of superiority should be freely available to all competitors in any given field to refer
to their products or services ….”), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
1999); In re Abcor Development, 200 USPQ at 217 (“The major reasons for not
protecting [merely descriptive] marks are … to maintain freedom of the public to
use the language involved, thus avoiding the possibility of harassing infringement
suits by the registrant against others who use the mark when advertising or
describing their own products.”).

Decision: The refusals to register Applicant’s proposed marks under Section
2(e)(1) of the Trademark Act are affirmed.