Application of Searle & Co.
Citation | 360 F.2d 650,149 USPQ 619 |
Decision Date | 12 May 1966 |
Docket Number | Patent Appeal No. 7604. |
Parties | Application of G. D. SEARLE & CO. |
Court | United States Court of Customs and Patent Appeals |
Walter C. Ramm, Chicago, Ill., for appellant.
Joseph Schimmel, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for Commissioner of Patents.
Before RICH, Acting Chief Judge, MARTIN, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.*
This is an appeal from a decision of the Trademark Trial and Appeal Board (143 USPQ 220) affirming the examiner's refusal to register the following term:
Registration of the above term is sought on the Principal Register1 as a trademark applied to "Pharmaceutical preparations in tablet form containing norethynodrel" asserted to be useful as an oral contraceptive. Exclusive right to use the word "pill" apart from the trademark as presented is disclaimed.2
The issue is whether the above term is registrable on the Principal Register under the provisions of the Trademark Act of 1946 (15 U.S.C. § 1051 et seq.). Appellant argues that "the pill" has become distinctive of its goods and is therefore registrable under section 2(f) of the Trademark Act of 1946 (15 U.S.C. § 1052(f)). The solicitor argues that the term is the "common descriptive name" of the product, an oral contraceptive, and does not in fact "distinguish Appellant's goods from the goods of others."
The Trademark Act of 1946 provides for federal registration of both "trademarks" and "marks." These terms are defined in section 45 as follows:
Thus, to qualify for registration the asserted mark must be a "trademark" in the two-fold sense of (a) identifying the user's goods and (b) distinguishing such goods from those of others. Such a "trademark" becomes registrable on the Principal Register only as it meets the conditions of section 2, as stated in the following applicable provisions:
From the foregoing it will be seen that section 2 limits registration on the Principal Register to "trademarks" and "marks," and in its preamble repeats the restriction found in section 45 that a trademark must serve to distinguish applicant's goods from those of others. Subsection (e) prohibits the registration of a "mark" which is "merely descriptive" of the goods while subsection (f), upon which appellant relies, provides the exception that nothing in Sec. 2 shall prevent the registration of a "mark" which has become "distinctive" of the applicant's goods in commerce.
The positions of the parties may be stated in additional detail in the terms of the statute.3 Appellant argues that the term "the pill" qualifies as a "trademark" under section 45 and, while it might be said to be "merely descriptive"4 under section 2(e), the proofs of record show that it has become "distinctive" of appellant's goods, section 2(f), and therefore registrable under section 2.
The solicitor does not concede that the term "the pill" distinguishes appellant's goods from those of others, as required by section 45 and the preamble in section 2. The solicitor's position is that the term does not qualify as a "trademark," section 45, because it is the "common descriptive name" of the product and therefore does not "identify" or "distinguish" appellant's goods from those of others, section 45 and preamble, section 2.
The term, "common descriptive name" is found in section 14(c) (15 U. S.C. § 1064) which provides that a registered mark may be canceled "if the registered mark becomes the common descriptive name of an article or substance." It expresses principles long recognized in trademark law that not every term can function as a trademark, e. g., common descriptive names. See Vandenburgh, Trademark Law and Procedure 4, 26, 60-62 (1959). Cf. J. Kohnstam v. Louis Marx & Co., 280 F.2d 437, 440, 47 CCPA 1080, 1084. Where the term identifies the product to the public, it cannot serve to identify appellant's goods or distinguish them from those of others. When this occurs, the term is the "common descriptive name" or, if not "descriptive," the "common name" or "generic" name of the product and hence is incapable of serving as a trademark. If for such reason the term is subject to cancellation, it should not be registered.
If the solicitor's position is correct there is no need to reach the further inquiry as to whether the term per se is a combination of words which may properly serve as a trademark, sections 45, 2, or whether it is "merely descriptive" under section 2(e) or whether from the evidence it is "distinctive" of appellant's goods in commerce under section 2(f). See In re Meyer & Wenthe, Inc., 267 F. 2d 945, 46 CCPA 919.
Appellant argues "the pill" is not the common descriptive name of an oral contraceptive and thus that it qualifies as a "trademark" or "mark," since it includes a combination of "words" and a "symbol." Appellant states in its brief:
Appellant reasons that this "unitary totality of three elements" qualifies the term as a "trademark" or "mark" which is registrable.
Appellant argues that the evidence of record shows "public recognition * * * of `the pill' as a nominative pertaining only to Appellant," which "continued subsequent to and notwithstanding F&DA Food and Drug Administration approval of other manufacturers' oral contraceptive products and the commercial marketing of such competitive products."
As background, appellant states in its brief:
We find, however, there is substantial evidence of record in support of the solicitor's position that the term "the pill" serves merely to identify an oral contraceptive.5
In the foregoing we have set forth much of the evidence which supports the solicitor's position and, while we have not set forth the evidence supporting appellant's position, we have carefully considered it as it relates to the issue before us. We recognize also that not all of the evidence above referred to shows the exact term which appellant seeks to register. We consider it pertinent that a considerable amount of the evidence of record shows use of the words, the pill, absent quotation marks when these words are used in the context of meaning an oral contraceptive. There is considerable evidence which shows the term "the pill" as it is sought to be registered having been used in connection with appellant's goods. At best, the evidence of record simply does not support appellant's position that the addition of quotation marks to an otherwise common descriptive name converts it into a trademark. To the contrary we find substantial evidence that the term is the common descriptive name of an oral contraceptive pill at the time the issue of registrability was under consideration in the Patent Office. Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 49 CCPA 931, 942.
Under appropriate circumstances, we agree with appellant that:
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