Super-Pharm (Israel) Limited

Trademark Trial and Appeal Board

Dec 23, 2013

No. 85521587 (T.T.A.B. Dec. 23, 2013)

Mailed:
December 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Super-Pharm (Israel) Limited
________

Serial No. 85521587

_______

Joel Karni Schmidt of Cowan Liebowitz & Latman PC, for
Super-Pharm (Israel) Limited.

Edward Nelson, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Kuhlke, Ritchie, and Masiello, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Super-Pharm (Israel), Limited, applicant herein
(“applicant”), seeks registration on the Principal Register
of the mark “SUPER-PHARM,” and design1 as shown below:

1 Serial No. 85521587, filed on January 20, 2012, under Trademark
Act Section 44(e).
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 85521587
2

for the services identified as:
1. International Class 35: Retail store services and
retail drug store services, and retail store services
via online electronic communications featuring a wide
variety of consumer products, cosmetics, personal care
products, hygiene products, food and beverages,
clothing, footwear, headgear, underwear, eye glasses,
contact lenses, sunglasses, toys, household care
products, cleaning products, pharmaceutical products,
vitamins, nutritional and dietary supplements,
batteries, small home appliances, lighting and
electrical supplies, consumer electronics, custom
jewelry, hair accessories, watches, perfumery,
toiletries, baby products, bags and cases, CDs and
DVDs; retail pharmacy services and pharmacies; and

2. International Class 44: Preparation of pharmaceutical,
medical and natural preparations for the treatment of
various physical and mental conditions, according to a
given prescription or formula; counseling services in
the fields of pharmaceutics, medical and natural
preparations for the treatment of various physical and
mental conditions, according to a given prescription or
formula and nutrition; optometry services; hearing
tests; medical examination.

The trademark examining attorney made final a requirement
that applicant disclaim the term “Super-Pharm” apart from
the mark as shown on the ground that it is merely
descriptive of the identified services pursuant to Section
6 of the Trademark Act and within the meaning of Trademark
Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1).
Ser. No. 85521587
3
Both applicant and the examining attorney filed
briefs, and applicant filed a reply brief.
Disclaimer Requirement
A term must be disclaimed apart from the mark as shown
if it is deemed to be merely descriptive of the subject
goods or services. See In re Grass GmbH, 79 USPQ2d 1600,
1603 (TTAB 2006); Trademark Manual of Examining Procedure
§1213.08(b) (8th ed. 2011) (TMEP Oct. 2013). A term is
deemed to be merely descriptive of goods or services,
within the meaning of 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, In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012), citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); see also In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). 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, the context in which it is
being 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. That a term may have
Ser. No. 85521587
4
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). A
composite term consisting of merely descriptive terms is
registrable only if as a unitary mark it has a separate,
non-descriptive meaning. In re Colonial Stores, Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR & SPICE
not merely descriptive of bakery products).
The determination of descriptiveness for the formation
of “SUPER” + [term] has been discussed by various Board
cases, including the recent case of In re Positec Group
Ltd., 108 USPQ2d 1161, 1172 (TTAB 2013). Applying the
guidance set forth in In re Phillips-Van Heusen Corp., 63
USPQ2d 1047, 1052 (TTAB 2002), the Board noted:
A general proposition which may be distilled from
the foregoing cases is that if the word “super”
is combined with a word which names the goods or
services, or a principal component, grade or size
thereof, then the composite term is considered
merely descriptive of the goods or services, but
if such is not strictly true, then the composite
mark is regarded as suggestive of the products or
services.

Our task thus is to determine whether the term “PHARM”
is descriptive. There are two relevant dictionary
definitions of “pharm” of record:
pharm. Or Phar. Or pharm. Or Pharm.: abbreviation
for 1. pharmaceutical 2. pharmacist 3.
pharmacopoeia 4. Pharmacy. Collins Dictionaries
Ser. No. 85521587
5
(2011); www.collindictionary.com. (Attached to
May 4, 2012 Office Action, p.2).

Pharm: abbr; pharmaceutical; pharmacology;
pharmacopoeia; pharmacy. New Oxford American
Dictionary. (6/6/01) (Attached to Ex. B-13 of
Butters decl.).

There are also two definitions as follows:
pharM: abbr. Masters of Pharmacology; New Oxford
American Dictionary. (6/6/01) (Attached to Ex.
B-13 to Butters decl.).

pharma: a pharmaceutical company. Merriam-Webster
Unabridged Medical Dictionary. (12/6/12)
(Attached to Ex. B-14 to Butters decl.).

The examining attorney submitted a copy of one U.S.
service mark registration with “PHARM” disclaimed:
WEST RIVER PHARM, disclaiming PHARM, for
“wholesale pharmacy services.” Registration No.
3894284.2

Applicant argues that the term is not merely
descriptive as applied to its services. Applicant
submitted the declaration of expert witness, Professor

2 We note that both the examining attorney and applicant
submitted competing registrations with “super” either disclaimed
or not, and either on the Principal or the Supplemental Register.
Given the case law, we do not find these to be relevant to our
analysis. As the Board in Positec noted, we are faced with a
task of deciding the descriptiveness (or not) of the term that
follows “SUPER.” To the extent the third party registrations do
not meet this level of consistency, they are not relevant. In re
Positec Group Ltd., 108 USPQ2d 1161, 1172, ftnt. 54 (TTAB 2013),
citing In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001).

Ser. No. 85521587
6
Ronald R. Butters, Ph.D., dated February 7, 2013. Dr.
Butters states that his “field of expertise includes the
structure of modern English and present-day usage; the
history of the English language; and linguistics.”
(Butters decl., at para 5). Dr. Butters testified that the
term “pharm” does not appear in any “established
dictionaries” as an abbreviation for “pharmacy” or
“pharmaceutical” (Butters decl. at para. 17), except for
some “primarily older” dictionaries. (Id., at para. 19).
However, Dr. Butters’ conclusions are belied by the record,
including some of his own exhibits, as noted in the
definitions above. Second, applicant argues that the term
“PHARM” has been registered without disclaimer on the
Principal Register for numerous third-party registrations
for goods and services similar to those that applicant
seeks.3 Third, applicant argues that it has established a
degree of fame in Israel, where it is based. See Reitblatt
decl. at para. 5, et. al. The fact that applicant has
established fame in Israel is not relevant to our
determination, which concerns consumer perception in the
United States. Moreover, even if applicant’s sales and

3 Although there are a number of examples in the record of
instances where the Office has not required a disclaimer of the
term “PHARM” for goods or services similar to those sought by
applicant in the current application, as we have noted in the
prior footnote, these actions are not binding on the Board.
Ser. No. 85521587
7
fame were in the United States it would only be relevant to
a determination of acquired distinctiveness (which
applicant has not sought in this case). See Yamaha Intern.
Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d
1001 (Fed. Cir. 1988); see also In re Steelbuilding.com,
415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005).
Finally, applicant argues that it has shown via two
surveys conducted by Empirica Research PTY Ltd. (“Empirica
Research”) that consumers do not consider SUPER-PHARM to be
“merely descriptive” for “drugstore retail,” the category
tested. To this end, applicant commissioned Empirica
Research to conduct a Teflon-style survey. The survey was
a double-blind process, conducted online, between January 8
and 14, 2013. (Empirica report p.2). In order to qualify,
consumers “needed to indicate that they bought from retail
drugstores at least once every two months. In addition,
they needed to indicate it was at least somewhat likely
that they would buy from a retail drugstore in the next two
months.” Id. at p.2. To further qualify, in line with a
Teflon-style survey, participants were told the difference
between a brand and a “merely descriptive” term as follows:
A MERELY DESCRIPTIVE TERM describes an
ingredient, quality, characteristic, function,
feature, purpose, or use of products or services
without identifying one company in particular.

Ser. No. 85521587
8
Examples were given of TARGET as a brand and FOOD AND
BEVERAGE ONLINE as merely descriptive. Id. at 7
In the Teflon-style format, participants were given a
mini-test, to see if they understood what merely
descriptive means. Only those who correctly identified THE
GAP (for clothing) as a brand and LOOSE FIT JEANS (for
clothing) as a merely descriptive term proceeded with the
survey. Participants were then asked about nine terms in
relation to specific goods or services and asked whether
they were a “Brand name,” “Merely Descriptive term,” or
“I’m not Sure.” The results are as follows:

TERM: Brand Merely Descr. Don’t
Know
J&R (electronics) 76.4% 7.2% 16.5%
ACTIVISION (video game 75.1% 13.1% 11.8%
publishing)
MACY’s (general retail) 97.0% 2.1% 0.8%
SUPER-PHARM 45.1% 35.4% 19.4%
(drugstore retail)
PERSONAL CARE 1.3% 96.6% 2.1%
(banking services)
HOME SAVINGS 14.3% 78.5% 7.2%
(banking services)
Ser. No. 85521587
9
DUANE READE 73.0% 6.8% 20.3%
(drugstore retail)
BED & BREAKFAST REGISTRY 13.9% 79.3% 6.8%
(lodging reservation services)
SECURITY CENTER 3.4% 89.9% 6.8%
(storage services)
From this data, the report concluded that “the most
common conclusion reached by consumers is that ‘SUPER-PHARM
is a brand name.” (Empirica report at p. 4).
Empirica Research conducted a second consumer survey
whereby potential consumers were asked to come up with
their own “open ended” ideas of descriptive terms for
drugstore services. Specifically, participants were tasked
as follows:
We’d like you to think for a moment about one
particular industry – retail drugstores.
Imagine that someone you know asks you for a
recommendation about a retail drugstore they
could use. You make a recommendation for a
particular store, such as CVS, Rite Aid or
Walgreens, etc.
Your task is to come up with a two-word phrase
that DESCRIBES THE DRUGSTORE’S PRODUCTS/SERVICES
IN A POSITIVE WAY to your friend. Your phrase
needs to make clear, in a general way, what
products or services the drugstore sells. Please
do not name the actual store in your response –
just describe its products/services in a positive
way to your friend.

Due to the extremely open-ended nature of the survey
and the innumerable possible answers, we do not give any
Ser. No. 85521587
10
weight to this open-ended survey. Indeed, although no
consumers came up with the term “SUPER-PHARM” in response
to the question, that does not at all indicate that it is
not merely descriptive of any of applicant’s services;
indeed, the survey did not set forth before the
participants all of the services for which applicant seeks
registration.
The Director and Founding Partner of Empirica
Research, Dr. David T. Neal, Ph.D., opined, based on the
two surveys, that “The term ‘SUPER-PHARM’ (in relation to
retail drugstore products and services) is substantially
more likely to be perceived by consumers as a brand name
than a merely descriptive term.” (Neal decl. at para.
7(a)).
As noted above, we give no probative value to the
open-ended survey. Further, we give little to no
probative value to the Teflon-style survey. First, while a
Teflon survey, typically used in the context of a
genericness inquiry, may be of assistance in determining
whether a term has acquired distinctiveness, it is less
certain what relevance, if any, it may have for purposes of
establishing inherent distinctiveness. In re Country Music
Association, Inc., 100 USPQ2d 1824, 1834 (TTAB 2011). As
noted above, applicant does not seek to register its mark
Ser. No. 85521587
11
under Trademark Act § 2(f) based on acquired
distinctiveness, and the question before the Board is
whether the term PHARM used in connection with these
services is merely descriptive, not whether it has acquired
distinctiveness. We expect that the average consumer is
not an expert in parsing through the legal nuances of mere
descriptiveness, including those of “SUPER” + [term] at
issue with applicant’s proposed mark. Indeed, mere
descriptiveness is a legal conclusion, one which an average
person is not competent to determine. To that extent, the
survey results are not a reliable guide in reaching a
legally correct decision in this case in accordance with
applicable law and precedents.
However, to the extent the Teflon-style survey has any
probative value, less than half the participants thought
SUPER-PHARM to be a drugstore brand, compared with 73% for
competitor DUANE READE. Taken together with the
definitions of “pharm” as abbreviations for “pharmacy,”
“pharmacist,” or “pharmaceutical,” we find that, looking at
the entirety of the record, there is no doubt that a
consumer would understand SUPER-PHARM in relation to
applicant’s services as conveying information about them.
Ser. No. 85521587
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See In re Abcor, 200 USPQ at 217-218. The requirement to
disclaim the term “SUPER-PHARM” for services in both
International Class 35 and 44 is affirmed.

Decision: We affirm the requirement for a disclaimer of
the term “SUPER-PHARM,” as well as the refusal to register
in absence of a disclaimer. However, if applicant submits
the required disclaimer to the Board within two months of
the mailing date of this decision, then the decision will
be set aside, and the application will proceed to
publication.