Taro Pharmaceuticals U.S.A., Inc.

Trademark Trial and Appeal Board

May 13, 2013

No. 85366190 (T.T.A.B. May. 13, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: May 13, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Taro Pharmaceuticals U.S.A., Inc.
________

Serial No. 85366190
_______

Mark. B. Harrison of Venable LLP for Taro Pharmaceuticals
U.S.A., Inc.

Leslie Richards, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Cataldo and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Taro Pharmaceuticals U.S.A., Inc., seeks
registration on the Principal Register of the standard
character mark NONSPIL as “a house mark for a full line of
pharmaceutical preparations including preparations for the
treatment of fever, pain, cough, allergies, and congestion”
in International Class 5.1

1 Based on the allegation of a bona fide intent to use the mark
in commerce.
Ser. No. 85366190
2
Applicant appeals from the final refusal of
registration on the ground that the mark is merely
descriptive of the identified goods. Trademark Act
§ 2(e)(1); 15 U.S.C. § 1052(e)(1). Applicant and the
examining attorney filed main briefs on the issue under
appeal.
We affirm.
I. Applicable Law
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods or services with
which it is used. See, e.g., In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009-10 (Fed. Cir. 1987).
Whether a particular term is merely descriptive is
determined in relation to the goods or services for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); and In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
In other words, the issue is whether someone who knows what
the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v.
Ser. No. 85366190
3
Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002); In re Patent & Trademark
Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); and In re
Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990). “On the other hand, if one must exercise
mature thought or follow a multi-stage reasoning process in
order to determine what product or service characteristics
the term indicates, the term is suggestive rather than
merely descriptive.” In re MBNA America Bank N.A., 340
F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978);
and In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983).
It has long been acknowledged that there is a thin
line between terms that are merely descriptive and those
that are suggestive. See In re Atavio Inc., 25 USPQ2d 1361
(TTAB 1992).
II. Discussion
We begin our determination by considering the applied-
for mark and the recited goods. Applicant’s mark is
NONSPIL, identifying “a house mark for a full line of
pharmaceutical preparations including preparations for the
treatment of fever, pain, cough, allergies, and
congestion.” In her first Office Action, the examining
Ser. No. 85366190
4
attorney, pursuant to Trademark Rule 2.61(b), 37 C.F.R. §
2.61(b), requested additional information regarding the
goods, and specifically required applicant to state
“whether ‘non spill’ has any significance in relation to
its goods and whether its goods will be packaged in ‘non
spill’ containers.”2 In response, applicant indicated that:
It is not anticipated that the goods will be
packaged in “non spill” containers. The term
“non spill” has no significance in relation to
the goods other than to suggest to consumers that
the goods are comprised of spill-resistant
formulations.3

Applicant further indicates that its goods “may utilize a
‘highly shear, [sic] pressure-sensitive semi-liquid
formulation allow[ing] for ease of pouring, leveling on the
spoon, and spill resistance.’”4 Applicant also submitted an
example, reproduced below, of packaging for its goods
touting the “Spill Resistant!” quality thereof.5

2 September 13, 2011 Office action.
3 Applicant’s March 6, 2012 communication.
4 Id.
5 Id.
Ser. No. 85366190
5

In support of the refusal to register, the examining
attorney made of record the following dictionary
definitions:
non – no; and
spill – to be spilled from a container, overflow, run
out.6 In addition, the examining attorney made of record
the following evidence retrieved from the internet:
NON-SPILL MEDICINE SPOON
Price: $0.45
(deluxegm.com);

Children’s Nonspill Acetaminophen
How does Children’s Nonspill Acetaminophen work?

6 Both definitions were accessed at yourdictionary.com on
September 13, 2011, retrieved from Webster’s New World College
Dictionary, (2010), and attached to the first Office action of
the same date.
Ser. No. 85366190
6
It works quickly to relieve pain caused by
conditions such as headache and osteoarthritis,
and to reduce fever caused by infection. …
This medication is available as 160mg/6mL syrup.
(chealth.canoe.ca – a Canadian website);

Taro’s non-spill medicines receive Good
Housekeeping award
The Good Buy Awards are for “innovative solutions
that save consumers time, money and aggravation.”
Taro Pharmaceutical Industries Ltd. today
announced that its ElixSure line of spill-
resistant children’s medicines have received a
2003 Good Buy Award from the Good Housekeeping
Institute. …
(globes.co – an Israeli website);

Taro Falters after years of growth
… In any event, Taro’s operating profit was hit
hardest, although this item was also affected by
heavy investment in developing over the counter
(OTC) proprietary non-spill treatments for colds
and flu. Taro can use non-spill technology to
make gel or solid versions of liquid treatments.
Taro launched its first non-spill drug six months
ago, and has launched a few more since. But non-
spill drugs meanwhile are a burden on the
company’s current results.
(globes.co – the same Israeli website);

Taro Vit Sales Up 29% in 1992 to $26.6
… On March 25, the firm reported that it had
filed a U.S. patent application for “a novel oral
delivery system for pharmaceutical and related
products.” The delivery system “is expected to
be able to incorporate a wide range of liquid
prescription and over-the-counter products into
easily administered, oral, non-spill
pharmaceutical formulations for systemic use.” …
(elsevierbi.com); and

Lubrizol
Pharmaceutical Ingredients
Ser. No. 85366190
7
Oral Liquids
Rheology modifiers for oral liquids and
suspensions. Ideally suited for non-spill
pediatric formulations and can mask the taste of
certain bitter tasting drugs.
(Lubrizol.com).7

We turn then to the question of whether NONSPIL (which
is equivalent to “non spill”) is descriptive of applicant’s
recited pharmaceutical preparations. We observe initially
that the novel spelling of a mark that is the phonetic
equivalent of a merely descriptive word or term is also
merely descriptive if purchasers would perceive the
different spelling as the equivalent of the descriptive
word or term. See In re Hercules Fasteners, Inc., 203 F.2d
753, 97 USPQ 355 (C.C.P.A. 1953) (holding “FASTIE,”
phonetic spelling of “fast tie,” merely descriptive of tube
sealing machines); In re Carlson, 91 USPQ2d 1198 (TTAB
2009) (holding “URBANHOUZING” phonetic spelling of “urban”
and “housing,” merely descriptive of real estate services);
and In re State Chem. Mfg. Co., 225 USPQ 687 (TTAB 1985)

7 We observe that, with its brief on appeal, applicant submitted
a screenshot of another webpage from this website and requests
that we consider such evidence in our determination herein. We
observe, however, that applicant had an opportunity to submit
this evidence with a request for reconsideration of the examining
attorney’s final refusal of registration, but made no such
filing. Accordingly, and further because it is not determinative
of the outcome herein, applicant’s request to accept the evidence
submitted as part of its brief is denied.

Ser. No. 85366190
8
(holding “FOM,” phonetic spelling of “foam,” merely
descriptive of foam rug shampoo).
As noted above, the examining attorney has made of
record dictionary definitions of the salient terms
comprising the applied-for mark. Based upon these
dictionary definitions, we find that applicant’s mark
merely describes a feature or characteristic of applicant’s
goods, namely, that they are spill-resistant, i.e., non-
spill, formulations. It is settled that “evidence [that a
term is merely descriptive] may be obtained from any
competent source, such as dictionaries, newspapers, or
surveys.” See In re Stereotaxis, Inc., 429 F.3d 1039, 77
USPQ2d 1087, (Fed. Cir. 2005); and In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986).
We note that applicant does not dispute these
definitions of the wording comprising its mark, but argues
that the combination thereof in its mark is not descriptive
of its goods. However, applicant’s argument is
contradicted by its own evidence and statements. As
reproduced above, applicant’s packaging displays
pharmaceuticals in liquid form that are described as
“spill-resistant!” Further, applicant acknowledges that
its goods may utilize a semi-liquid formulation allowing
for, inter alia, spill resistance. Thus, according to
Ser. No. 85366190
9
information supplied by applicant, its goods include as a
feature a spill-resistant or non-spill formulation.
Thus, the evidence made of record by the examining
attorney and the information supplied by applicant support
a finding that, as applied to applicant’s goods, the term
NONSPIL would immediately describe, without conjecture or
speculation, a significant characteristic or feature of the
goods. Prospective purchasers, upon confronting the term
NONSPIL for applicant’s goods, would immediately perceive
that the goods are so formulated as to not spill.
III. Conclusion
We have carefully considered all of the evidence and
argument of record. We conclude that applicant’s mark,
NONSPIL is merely descriptive of its identified goods.
Trademark Act § 2(e)(1).
Decision: The refusal to register is AFFIRMED and
registration to applicant is refused.