Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE SCHIAPPARELLI SEARLE
Serial No. 74/014,996
March 2, 1993
John M. Wilke for Schiapparelli Searle
Michael A. Szoke
Trademark Examining Attorney
Law Office 3
(Kathryn A. Dobbs Managing Attorney)
Before Rooney, Simms and Hanak
Opinion by Simms
Schiapparelli Searle (applicant), a partnership consisting of a domestic and a foreign corporation, has appealed from a refusal of the Trademark Examining Attorney to register the slogan "THE ACTIVE INGREDIENT IS QUALITY" for pharmaceuticals: namely, laxatives, anti-psychotics, anti-infectives, diuretics, and drugs for the treatment of gastrointestinal maladies, all sold by prescription. [FN1] In the affixation clause of the amended application, it is indicated that the mark is used on brochures and other documents associated with the goods and their sale.
The Examining Attorney has refused registration because the specimens assertedly do not show trademark use of the slogan sought to be registered. More particularly, the Examining Attorney argues that the specimens of record are brochures describing the goods, which are merely advertising and not displays or point-of-sale materials. The Examining Attorney has also rejected applicant's argument, discussed more fully below, that the nature of applicant's goods makes "traditional" trademark use (affixation to labels, containers, displays, etc.) of the mark "impracticable". Rather, the Examining Attorney argues that it appears to be applicant's practice to affix its other trademarks to the goods, containers or labeling:
Applicant's brochures show photographs of some of applicant's products ... These products are packaged in what are traditional looking containers. The photographs show plainly the trademarks "SEARLE" and "SCHIAPPARELLI SEARLE" imprinted on the containers. If these trademarks can be affixed to containers for the goods, then it would seem practicable for the trademark under examination to be affixed in the same manner. It may be that applicant had not properly affixed the mark at the time this application was filed, but there is evidence enough of record that such affixation would not have been impracticable. The examining attorney concludes that the nature of the goods is not such that placement of the mark on the goods, on their containers, or on displays associated therewith, is "impracticable" within the meaning of Section 45 of the Trademark Act.
(Examining Attorney's Action No. 2, mailed December 12, 1990.)
The Examining Attorney states that applicant's pharmaceuticals are not custom-ordered goods or bulk goods whose nature makes them unsuitable for a reasonable method of affixation. Rather, according to the Examining Attorney, applicant's drugs are purchased by pharmacists and are resting on the pharmacist's shelf waiting to be dispensed upon the doctor's prescription. Because applicant's prescription drugs are no less susceptible to trademark affixation than other similar goods, the Examining Attorney argues, his requirement for specimens showing proper trademark use should be sustained. [FN2]
*2 Applicant, on the other hand, takes the position that under the Trademark Law Revision Act of 1988, its mark is being used on its goods in commerce. The revised definition of "use in commerce" (15 U.S.C. § 1127) is:
Use in Commerce. The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--(1) on goods when--(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (B) the goods are sold or transported in commerce ...
Applicant's goods are sold by prescription and their sale is regulated by the Food, Drug and Cosmetic Act, which prohibits them from being dispensed without a doctor's prescription. Because a consumer may not choose the product, any point-of-purchase display, according to applicant, would have no utility as inducement to the sale. Therefore, the practice in the industry, according to applicant, is to promote trademarked goods to doctors in the hope that they will be persuaded to prescribe the product. The specimen brochures are therefore placed in a doctor's office where the prescription is written. While the doctor's office is not technically the point of sale, it is applicant's position that the specimens constitute documents associated with the goods, that these brochures are designed as an inducement to a sale and that the circumstances make the usual placement of the materials at the actual point of sale impracticable. Applicant argues that, due to FDA restrictions on the nature of the information that may be included on labeling for prescription pharmaceuticals, certain marks such as the mark sought to be registered are often not approved by the government. Since the slogan is assertedly prominently used on documents associated with the goods or their sale and because the placement of the brochures in proximity to the goods is made impracticable by "regulatory restrictions and constraints inherent in the marketing of pharmaceuticals products" (applicant's brief, 7), applicant argues that its current use satisfies the statutory requirements for registration.
Applicant agrees that it would be possible to place the mark on packaging for the goods, and understands that the submission of specimens showing use of the mark on packaging would allow the mark to be considered eligible for registration. However, this is not how such marks are used in the pharmaceutical industry. The use suggested by the Examiner would be made only for the purpose of obtaining registration. Requiring Applicant to submit evidence of token use of this kind would violate the plain language of Section 45 which expressly refuses to recognize use "made merely to reserve a right in a mark", and would certainly not be in keeping with the overriding intent of the Trademark Law Revision Act.
*3 (Applicant's brief, 6.)
We agree with the Examining Attorney that the specimen brochures of record distributed to physicians constitute advertising of applicant's goods and are neither displays associated with applicant's goods nor documents associated with the goods or their sale. The brochure in question is given to doctors in order to convince them of the merits of applicant's pharmaceutical products over those of competing products with the expectation that applicant's products will then be prescribed by the doctor. The brochure is similar in nature to advertising which the physician may see in a trade publication. For this reason and because the physician does not purchase the goods, the specimens cannot be equated with the catalogs (i.e., displays associated with the goods) submitted in Lands' End Inc. v. Manbeck, 797 F.Supp. 311, 24 USPQ2d 1314 (E.D.Va.1992). [FN3] In that case, the court held that a mail-order retailer's use of a mark in a catalog together with a picture of the goods, words describing the goods, specifications and options from which a customer might choose, as well as mail-order forms and telephone numbers for phone orders were sufficient use to satisfy the trademark statute. In Lands' End, goods were offered and sales were completed directly from the catalog. No sales are made from applicant's brochures, which bear little resemblance to the mail-order catalog with order forms in Lands' End. See In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990) (use of the mark on specimens in the nature of descriptive literature forming part of a manual from which customers could place orders held not to be trademark use), In re ITT Rayonier Inc., 208 USPQ 86 (TTAB 1980), In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979) and TMEP Sec. 808.05. Cf. In re Griffin Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (CCPA 1975) (use of the mark in descriptive materials distributed to the public in areas where gas-generating apparatus dispenses a mixture of gases is a display associated with the goods), In re Marriott Corporation, 459 F.2d 525, 173 USPQ 799 (CCPA 1972) (menu considered display directly associated with the goods), In re Ancha Electronics Inc., 1 USPQ2d 1318 (TTAB 1986) (informational flyers showing the mark which were distributed at trade shows exhibit considered displays associated with the goods), In re Shipley Co. Inc., 230 USPQ 691 (TTAB 1986) (use of the mark at a trade show booth, where product literature was distributed and orders taken, considered a display associated with the goods) and In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984) (use of the mark on assembly instruction manuals packed with the goods considered trademark use).
*4 Moreover, while applicant has argued that regulatory restrictions may prohibit use of this slogan on labels or packaging, applicant has not submitted a copy of the pertinent regulation or otherwise persuasively demonstrated that this is the case. In any event, the impracticability of which the revised definition in Section 45 of the statute speaks was not intended to encompass a situation where a mark's affixation may be proscribed by law. Rather, it would appear to apply only to those situations where it is difficult for a mark to be physically affixed to the goods or to displays associated therewith. See In re Drilco Industrial Inc., supra ("The legislative history regarding the pertinent amendment to Section 45 indicates that this language was added in order to relax the affixation requirement in the case of bulk goods."). [FN4] What little legislative history there is with respect to the purpose of the language in question demonstrates that the "impracticability" clause was not intended to encompass situations involving regulatory constraints or prohibitions.
Decision: The refusal of registration is affirmed.
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/014,996, filed December 28, 1989, claiming use since November 8, 1989.
FN2. While the Examining Attorney couches his refusal in terms of a requirement for proper specimens, we shall consider this refusal as being based upon the ground that the slogan sought to be registered is not being used as a trademark in commerce, as evidenced by the specimens of record. See Trademark Rule 2.56.
FN3. In Land's End, the District Court reversed an unpublished Board decision holding that applicant's catalog was not an acceptable specimen supporting trademark use. However, a Board decision issued at the same time in a companion application presenting the identical issue was published. See In re Land's End Inc., 21 USPQ2d 1148 (TTAB 1991).
FN4. A Senate report contains the following discussion:
The revised definition also recognizes that strict affixation of a trademark is often impractical in the case of bulk goods. It provides that use in commerce on or in connection with certain products, such as oil, chemicals and grain, can be established when the products are shipped in railroad cars, ships, aircraft, or other vehicles and the mark is used "on documents associated with the goods or their sale."
S.Rep. No. 100-515, 100th Cong., 2d Sess. (1988). See also Remarks, Text, as Introduced, and Section-by-Section Analysis, The Trademark Law Revision Act, S.1833 (DeConcini), 16,553 (1987). ("The definition also is revised to relax the affixation requirement in the case of bulk goods. As redefined, use in commerce does not encompass use in advertisements and promotional materials.")
E. W. Hanak
I concur with the decision of the majority. Applicant concedes, of course, that its mark is not being used on the goods, their containers or tags or labels affixed thereto. Moreover, while not entirely clear from the majority opinion, applicant also concedes that its mark is not being used on displays associated with its goods. Rather, applicant contends that "circumstances make the use of [applicant's] mark in the traditional sense, i.e. on the goods or on their containers or on displays at the point of sale, impracticable." (Applicant's brief p. 5). Thus, In re Lands' End Inc., 21 USPQ2d 1148 (TTAB Sept. 24, 1991) (Hanak, Member, concurring) and Lands' End Inc. v. Manbeck, 24 USPQ2d 1314 (E.D.Va.1992), rev'g Serial No. 74/018,923 (TTAB Sept. 26, 1991) (Hanak, Member, dissenting) are not applicable to this case in that those companion cases dealt with the issue of what constitutes a display associated with the goods.
*5 Instead, the two issues in this case are (1) whether the placement of applicant's mark "on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto ... [is] impracticable," and if so (2) whether applicant's mark is being used "on documents associated with the goods or their sale." Lanham Trademark Act Section 45 (15 USC 1127) (definition of "Use in Commerce") (emphasis added).
Considering the last issue first, I disagree with the majority's determination that applicant's specimen brochures are not documents associated with the goods or their sale. The word "associated" is an extremely broad term that encompasses numerous factual possibilities. Moreover, assuming for the sake of argument that the impracticability hurdle is met, then applicant's specimen brochures would constitute acceptable specimens of use even if they were not associated with applicant's goods, but rather were simply associated with the sale of applicant's goods. There can be no doubt that applicant's specimen brochures are directed to doctors in an effort to promote the sale of applicant's pharmaceuticals by encouraging doctors to prescribe these pharmaceuticals. Thus, even assuming arguendo that applicant's specimen brochures are not actually associated with applicant's pharmaceuticals themselves, the brochures are, at the very least, associated with the sale of applicant's pharmaceuticals.
Turning to the issue of impracticability, neither the Examining Attorney nor the majority has pointed to anything that would preclude laws and regulations from constituting the basis of the impracticability (or indeed, impossibility) of placing the trademark on the goods, their containers, displays associated therewith or on tags or labels affixed thereto. For example, if FDA regulations prohibited the use of laudatory phrases (i.e. certain trademarks) on prescription drugs in manners that they would be seen by patients (e.g. on the drugs, their containers, tags, labels or in-pharmacy displays), then this would, in my opinion, constitute a form of impracticability that would allow the trademark owner to register its mark by making fully lawful use of it on promotional (sales) documents directed to physicians, pharmacists (who purchase the prescription drugs from the trademark owner) and other health care professionals. [FN5]
The reason that I concur with the decision reached by the majority is simply because in this case, applicant has failed to prove that there exist FDA regulations (or other regulations or laws) which make it impracticable for applicant to use its mark THE ACTIVE INGREDIENT IS QUALITY on its goods, their containers, displays associated therewith or on tags or labels affixed thereto. Indeed, not only has applicant failed to prove the existence of such FDA regulations, applicant has merely contended that because of unspecified "FDA restrictions," that "house marks such as THE ACTIVE INGREDIENT IS QUALITY are often not approved for inclusion on product, packaging or labelling." (Applicant's brief p. 2, emphasis added). In short, applicant has failed to prove impracticability, and it is on this basis, that I concur with the result reached by the majority.
FN5. The majority cites In re Drilco Industrial Inc., 15 USPQ2d 1671 (TTAB 1990) for the proposition that "impracticability ... would appear to apply only to those situations where it is difficult for a mark to be physically affixed to the goods or to displays associated therewith [e.g. bulk goods]." However, in Drilco this Board noted that the 1988 amendment to Section 45 "may be broad enough to cover" other situations not enumerated in its scant legislative history. 15 USPQ2d at 1672. There is nothing in this history which, to use the words of the majority, "demonstrates that the 'impracticability' clause was not intended to encompass situations involving regulatory constraints or prohibitions."