SmithKline Beecham Corp.

Trademark Trial and Appeal Board

Oct 13, 1998

No. 75134262 (T.T.A.B. Oct. 13, 1998)

Paper No. 16
BAC
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT OF
THE TTAB OCT. 13, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SmithKline Beecham Corporation
________
Serial No. 75/134,262
_______
Gary Krugman of Sughrue, Mion, Zinn, MacPeak & Seas, PLLC
for SmithKline Beecham Corporation
Adam Striegel, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney)
_______
Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
SmithKline Beecham Corporation has filed an
application to register the mark TIMEPILLS for
“pharmaceutical preparations for the alleviation of the
symptoms of the common cold and allergies”.1

1 Appl. Ser. No. 75/134,262, filed July 15, 1996, alleging a bona
fide intention to use the mark. The application, as originally
filed, included a claim of ownership of Reg. No. 1,684,264 for
Ser. No. 75-134262
2
Registration has been refused under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used on applicant’s goods, the mark is merely
descriptive of them. The Examining Attorney also refused
registration because applicant’s claim of distinctiveness
is inappropriate in an intent-to-use application, and the
claim of distinctiveness, based solely on applicant’s claim
of ownership of Registration No. 1,684,264, is
insufficient. Finally, the Examining Attorney twice
required additional information about applicant’s goods
pursuant to Trademark Rule 2.61(b), to which applicant
never responded.
Applicant has appealed.2 Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
The issues before the Board are (1) whether
applicant’s mark TIMEPILLS is merely descriptive when
applied to its goods; (2) if the mark is merely
descriptive, whether applicant’s mark has acquired
distinctiveness under Section 2(f) based solely on
applicant’s prior registration; and (3) whether the

the mark TINY TIME PILLS; as well as a claim of distinctiveness
under Section 2(f) based on the prior registration.
2 This appeal is not from a final Office Action, but rather arose
from the second refusal on the requirements and refusals listed
above. See Trademark Rule 2.141.
Ser. No. 75-134262
3
Examining Attorney’s requirement for additional information
regarding the goods is proper.
Turning first to the question of descriptiveness under
Section 2(e)(1) of the Trademark Act, it is the Examining
Attorney’s position that the mark merely describes the main
feature and characteristic of the goods (time) and the form
of the goods (pills); and that the mark is no more than a
combination of two merely descriptive terms, with the
composite mark remaining merely descriptive. Specifically,
the Examining Attorney asserts that the term TIMEPILLS
merely describes pharmaceutical tablets which release
medicine over time into a person’s body.
In support of this refusal the Examining Attorney
submitted definitions from Webster’s II New Riverside
University Dictionary of the word “time” as “designed so as
to operate at a particular moment”, and of the word “pill”
as “a small, often coated tablet or pellet of medicine,
taken by swallowing whole or chewing”; and excerpts from 62
of 180 articles3 retrieved from a LEXIS/NEXIS database
search of the phrase “time pill(s)”.

3 We must comment that the Board finds such a wholesale
submission of 62 excerpts to be burdensome to the applicant and
the Board. While we have in the past criticized Examining
Attorneys for submitting an insufficient number of excerpted
articles, this has been in situations where only one or two
excerpts have been submitted, although the search shows a very
large number of articles were retrieved. However, we have never
Ser. No. 75-134262
4
Applicant contends, in urging reversal of the refusal,
that the mark is at most suggestive because it requires
“mature thought or analysis” (brief, p. 6) to understand
the characteristic or feature of the goods; and that the
Examining Attorney has not met his burden of making a prima
facie showing of descriptiveness. Specifically, applicant
argues that the dictionary definitions do not lead to the
conclusion that the term TIMEPILLS is merely descriptive;
and that the LEXIS/NEXIS evidence is a jumble of evidence
most of which is not proof of the descriptiveness of the
term TIMEPILLS.
In analyzing the LEXIS/NEXIS evidence it is clear that
most of the 62 excerpted articles refer to the words “tiny
time pills”, and not “time pills” or “timepills”. Also, a
few of the excerpted stories are from foreign newspapers or
news services and are thus irrelevant here [see In re
Hines, 31 USPQ2d 1685, footnote 4 (TTAB 1994)]; some of the
stories may be a misuse of applicant’s trademark TINY TIME
PILLS; and some of the LEXIS/NEXIS stories refer to matters
completely unrelated to pharmaceutical products (for
example, there are book reviews, a story about a

suggested that Examining Attorneys must submit dozens and dozens
or all such articles retrieved in a search. Rather, the Board
has consistently stated that a representative selection of the
relevant articles are sufficient, as long as the Examining
Attorney indicates that the articles are representative.
Ser. No. 75-134262
5
photography exhibit, and a story about synthetic soil.)
Many of the stories in fact refer to applicant and
applicant’s previously registered trademark TINY TIME
PILLS, as shown by the examples below:
“...Contac’s tiny time pills sell just as heavily in
Japan as they do in the United States. Jeremy
Heysfeld, spokesman for the manufacturer,
Philadelphia-based...” (January 9, 1992 article from
The San Diego Union-Tribune)
“...commercial for SmithKline Beecham’s Contac. The
veteran sitcom actors work in Contac’s pitch about ‘600
tiny time pills’. They also introduce a selling point:
‘There’s a whole day’s work in every Contac’. But the
ad is mostly Conway and...” (November 26, 1990 article
from ADWEEK)
“For years, the SmithKline Beecham Corporation aired a
successful television commercial that showed ‘hundreds
of tiny time pills’ spilling from an opened Contac
capsule.
No drug company would air that type of commercial now.
Today, the thought of capsules...” (August 17, 1986
article from The New York Times).
There are, however, stories relating to the death of
the scientist who apparently developed slow-release time
pills. Specifically, an excerpt from The New York Times
dated March 27, 1987 states the following:
“...chemistry and pharmacuetics, dies [sic] underwent
cardiovascular bypass surgery March 18.
Among his scientific accomplishments was the
development of slow-release time pills, such as those
used in nonprescription cold medicines and certain
prescription drugs, including an antiglaucoma compound
and a contraceptive used...”
Ser. No. 75-134262
6
Section 2(e)(1) of the Trademark Act precludes
registration of a mark on the Principal Register if it
“consists of a mark which, when used on or in connection
with the goods of the applicant is merely descriptive or
deceptively misdescriptive of them”. It is well settled
that a term is considered merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
immediately describes an ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that the term describe all of the
properties or functions of the goods or services in order
for the term to be considered merely descriptive thereof;
rather it is sufficient if the term describes a significant
attribute or idea about them. And, of course, whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought and the possible significance
that the term may have to the average purchaser of the
goods or services because of the manner of its use. See In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). See
also, In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB
Ser. No. 75-134262
7
1995); and In re Pennzoil Products Co., 20 USPQ2d 1753
(TTAB 1991).
As stated in the case of In re Gould Paper
Corporation, 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987),
the Patent and Trademark Office may satisfy its evidentiary
burden by means of dictionary definitions showing that the
“separate words joined to form a compound have a meaning
identical to the meaning common usage would ascribe to
those words as a compound”. In the case now before the
Board, the Examining Attorney has provided dictionary
definitions of the terms ‘time’ and ‘pill’. These two
ordinary words have a commonly understood meaning, and when
used in connection with pharmaceutical preparations for
alleviation of the symptoms of the common cold and
allergies, the public would understand the words to mean a
pill which releases medicine into the body over some amount
of time. That is, the public would understand that
applicant’s product is a time-release pill. Moreover, we
note that applicant’s prior registration for the mark TINY
TIME PILLS registered under Section 2(f) of the Trademark
Act, and included a disclaimer of the term PILLS. Thus, at
the time that registration issued applicant had conceded
that its mark TINY TIME PILLS was descriptive, and that the
term PILLS was generic. We find that when considered in
Ser. No. 75-134262
8
relation to its use on applicant’s goods, the term
TIMEPILLS would be readily perceived by purchasers as
identifying pills which release medicine over time into the
body.
Applicant asserts that the Examining Attorney’s
refusal to register TIMEPILLS as merely descriptive is an
impermissible collateral attack on applicant’s prior
incontestable registration for the mark TINY TIME PILLS for
pharmaceutical preparations for the alleviation of the
symptoms of the common cold, flu and allergies, citing the
case of In re American Sail Training Association, 230 USPQ
879 (TTAB 1986). In the cited case, that applicant applied
to register the mark RETURN OF THE TALL SHIPS, and the
Examining Attorney required a disclaimer of the words TALL
SHIPS apart from the mark despite the fact that the
applicant owned a prior incontestable registration for the
mark TALL SHIPS for the identical services.
We find the American Sail case, supra, is not
applicable in the case now before the Board because
applicant’s prior registration for TINY TIME PILLS issued
under Section 2(f) and included a disclaimer of the generic
term ‘pills’. While the public may recognize applicant’s
registered mark TINY TIME PILLS as identifying applicant,
there is no indication in this record as to how the public
Ser. No. 75-134262
9
will understand the term TIMEPILLS based solely on their
knowledge of the mark TINY TIME PILLS. Moreover, each
application for registration of a mark must be separately
evaluated. See In re Loew’s Theaters, Inc., 769 F.2d 764,
226 USPQ 865 (Fed. Cir. 1985); In re Stanbel Inc., 16
USPQ2d 1469 (TTAB 1990); and In re Bank America Corp., 231
USPQ 873 (TTAB 1986). The Examining Attorney’s refusal to
register applicant’s mark TIMEPILLS under Section 2(e)(1)
is not a collateral attack on applicant’s prior
registration of the mark TINY TIME PILLS.
In view of the foregoing, we find that TIMEPILLS is
merely descriptive as applied to applicant’s goods.
Turning next to the alternative issue of acquired
distinctiveness, we will first address the question of
whether applicant may “clarify” its Section 2(f) claim.
The original application included a claim of ownership of
Registration No. 1,684,264, and the following statement:
“The word ‘TIMEPILLS’ has become distinctive under Section
2(f) of the Trademark Act based on prior U.S. Registration
No. 1,684,264 for TINY TIME PILLS.” The Examining Attorney
has pointed to this statement as a concession by applicant
that its mark is not inherently distinctive. Applicant,
however, asserts that by its April 30, 1997 response to the
first Office action applicant made it “clear and
Ser. No. 75-134262
10
unequivocal” (brief, p. 3) that the Section 2(f) claim was
made in the alternative only. We agree with the Examining
Attorney that there was nothing in the original application
to indicate the Section 2(f) claim was an alternative
position. However, to prevent applicant from “clarifying”
its alternative position is simply too technical.4 Treating
applicant’s claim under Section 2(f) as an alternative
claim, such a position by applicant is not deemed as
applicant’s concession or admission of the descriptiveness
of the mark.5
Turning now to the merits of applicant’s alternative
position that its mark TIMEPILLS has acquired
distinctiveness on the basis of a prior registration for
the mark TINY TIME PILLS, applicant has the burden of
establishing that its mark has become distinctive. See

4 We would point out that the Board allows withdrawals of
disclaimers which were offered only in anticipation of avoiding a
problem.
5 A second matter regarding the claim of distinctiveness involves
the applicability of TMEP §1212 to this case. In the first Office
action, the Examining Attorney stated (1) that since applicant
has filed an intent-to-use application and applicant has not
alleged use of the mark in commerce in either an amendment to
allege use or a statement of use, “the claim of distinctiveness
under Section 2(f) is inappropriate and must be deleted”, citing
TMEP §1212.09(a); and (2) that applicant’s claim of acquired
distinctiveness is based on a prior registration which is not for
the “same” mark for purposes of acquired distinctiveness, and the
claim of acquired distinctiveness is “both premature and
insufficient”, citing TMEP §1212.04(b).
The Examining Attorney’s first statement is incorrect. Clearly,
TMEP Section 1212.09(a) and (b) provides for the filing of a
claim of distinctiveness in an intent-to-use application.
Ser. No. 75-134262
11
Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475
(TTAB 1988).
Applicant’s prior registration is for a different
mark, TINY TIME PILLS. Even though the prior registration
includes the current mark within it, the applied-for mark,
TIMEPILLS, does not include the word TINY, and depicts
TIMEPILLS as one word. The public’s association of the
mark TINY TIME PILLS with applicant does not mean that the
mark TIMEPILLS will automatically be seen by the public as
also indicating source in applicant; and applicant has
provided no evidence at all as to the public perception of
the applied-for mark. Applicant’s claim under Section 2(f)
falls far short of a showing that the mark TIMEPILLS has
acquired distinctiveness.
Finally, we turn to the third issue before us, whether
the Examining Attorney’s requirement for additional
information was proper.
In the first Office action the Examining Attorney’s
requirement for information referred to the “nature of the
goods” and the “proper identification and classification of
the goods”. The Examining Attorney also went on to explain
and require that if materials on applicant’s goods were not
available, then “applicant must submit a photograph of
similar goods and must describe the nature, purpose and
Ser. No. 75-134262
12
channels of trade of the goods on which the applicant has
asserted a bona fide intent to use the mark.” In response
to the first Office action, applicant offered an amendment
to the identification of goods but made no comment or
argument as to the requirement for information.
The Examining Attorney continued the requirement in
the second Office action, noting that applicant had failed
to respond to the requirement. He did not include a
reference to the identification and classification of the
goods; but the Examining Attorney used the same language
regarding a requirement for a photograph and a description
of the nature, purpose and channels of trade of applicant’s
goods. In response to the second Office action, applicant
offered a second proposed amendment to the identification
of goods (which was accepted by the Examining Attorney),
and again made no response whatsoever as to the requirement
for additional information.
Applicant has, for the first time in its brief, argued
the merits of the impropriety of the requirement.
It is applicant’s position that the Examining
Attorney’s requirement for additional information referred
only to the identification and classification of the goods.
This argument is disingenuous. If applicant felt the
requirement was not valid, applicant should have so stated
Ser. No. 75-134262
13
and supported its position in response to the requirement.
Instead, applicant chose to ignore the request until filing
its brief on appeal. See In re Babies Beat Inc., 13 USPQ2d
1729 (TTAB 1990).
Trademark Rule 2.61(b) provides that the Examining
Attorney “may require the applicant to furnish such
information and exhibits as may be reasonably necessary to
the proper examination of the application”. TMEP §1105.02
provides, in part, that the Examining Attorney’s request
must be “reasonable and pertinent”; and that the Examining
Attorney “should state why the information is needed, if
the reason is not obvious".
We find that the requirement was proper both in the
first Office action, and in the second (repeated) Office
action. In both the original and second requests for
additional information, there were reasons set forth by the
Examining Attorney. And, even if the Examining Attorney
had cited no specific reason for the requested information,
it was “obvious” in this case that the requirement related
to the refusal to register the mark as merely descriptive.
The Examining Attorney’s requirement for information under
Trademark Rule 2.61(b) was not arbitrary or otherwise
without basis.
Ser. No. 75-134262
14
Decision: The refusal to register and the requirement
for additional information is affirmed.
E. J. Seeherman
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board