Armour and Company v. Organon, Inc., Patent Appeal No. 6266.

• Decision Date: 25 June 1957
• Docket Number: Patent Appeal No. 6266.
• Citation: 114 USPQ 334,245 F.2d 495
• Parties: ARMOUR and COMPANY, Appellant, v. ORGANON, Inc., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

114 USPQ 334, 245 F.2d 495 (1957)

ARMOUR and COMPANY, Appellant, v. ORGANON, Inc., Appellee.

Patent Appeal No. 6266.

United States Court of Customs and Patent Appeals.

June 25, 1957.

Carl C. Batz and Frank T. Barber, Chicago, Ill., for appellant.

Alexander, Maltitz, Derenberg & Daniels, New York City (Walter J. Derenberg and Joe E. Daniels, New York City, of counsel), for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH and JACKSON (retired), Judges.

JOHNSON, Chief Judge.

This is an appeal in an opposition proceeding from the decision of the Commissioner of Patents, 106 U.S.P.Q. 220, speaking through the Assistant Commissioner, reversing the decision of the Examiner of Interferences which sustained the opposition and which adjudged that applicant (appellee here) was not entitled to the registration sought. The Assistant Commissioner was of the opinion that opposer (appellant here) had not alleged facts in its notice of opposition from which likelihood of damage could be presumed and, accordingly, dismissed the opposition. From this decision, opposer brings this appeal.

Appellant, a manufacturer of medicinal hormone preparations known as "ACTH" (adrenocorticotropic¹ hormone), filed its notice of opposition to the proposed registration of "Cortrophin," applied to the same product, and which was claimed in appellee's application to have been used since May 17, 1949.

Appellant, in its notice of opposition, included the following pertinent allegations:

"1. The opposer, Armour and Company, is the manufacturer of an extensive line of medicinal preparations, its business is an old and established one, and its products have been and are widely sold throughout this country and the principal foreign markets of the world.

"2. Long prior to the date of first use claimed by applicant, namely, May 17, 1949, opposer began to produce and sell medicinal hormone preparations, consisting of ACTH (adrenocorticotrophic hormone), has continuously and extensively sold said preparations since prior to said date until the present time, and is now selling said preparations.

"3. Continuously since a date prior to May 17, 1949, until the present time, opposer has sold medicinal hormone preparations under the generic names `ACTH\', `adrenocorticotrophin\', `adrenocorticotrophic hormone\', and `adrenotropin\', and opposer has also used and is now using the generic name `corticotrophin\' for its said hormone preparations. Two specimens showing how opposer sells its goods are attached hereto, marked `Exhibit A\'.

"4. On information and belief, opposer alleges that other manufacturers of pharmaceutical preparations have used continuously since a date prior to May 17, 1949, and are using at the present time, the generic names `ACTH\', `adrenocorticotrophin\', `adrenocorticotrophic hormone\', `adrenotrophin\', and `corticotrophin\' for their medicinal hormone preparations.

"5. The word `corticotrophin\' is defined in medical and chemical dictionaries as the generic term for `adrenocorticotrophic hormone\'.

"6. The word `corticotrophin\' has been adopted by the United States Pharmacopeia, the American Medical Association Council on Pharmacy and Chemistry, and the World Health Organization as the official generic nomenclature for the medicinal hormone preparation named in applicant\'s application."

Each of these allegations was admitted by appellee in its answer.

Appellant further contended in its notice of opposition that:

"7. Applicant\'s alleged trade-mark `Cortrophin\' is a mere contraction, telescoping, or misspelling of the generic name `corticotrophin\', is confusingly similar thereto, and must be considered to be in the same category with `corticotrophin\' as constituting merely the generic or descriptive name of the goods and to be incapable of functioning as a trade-mark or distinguishing applicant\'s goods from the goods of others and therefore to be not properly registrable under the Trade-Mark Act of 1946 15 U.S.C.A. § 1051 et seq. in view of Sections 2 and 2(e) thereof.

"8. Opposer avers that it will be damaged by the granting to applicant of a registration which would constitute presumptive exclusive ownership of a term practically indistinguishable from the generic name of the goods, which name opposer and others in the industry are presently using, and have an equal right to use; and opposer further avers that the registration of applicant\'s alleged trade-mark will interfere with and embarrass the opposer and other members of the entire pharmaceutical industry in the exercise of their right to describe their goods by means of the common generic terms for the goods." (Emphasis added.)

Appellee, in its answer, denied the latter two allegations and urged that "applicant has no objection to the use of this generic term by opposer or any other person. Hence opposer is not and cannot be damaged by the registration sought by applicant."

Neither party took testimony.

The Examiner of Interferences, on the foregoing set of facts, concluded that "The goods being the same and opposer's priority of use being admitted by applicant, the only issue left is that of confusing similarity of the marks." (Emphasis added.) He then proceeded to hold the two "marks" confusingly similar and denied appellee's registration.

The Assistant Commissioner, due no doubt to the examiner's inadvertent use of the word "marks," held that the examiner had "erroneously treated the case as one involving two trade-marks" and stated that

"Confusion, mistake or deception of purchasers is not the issue here, since applicant\'s `Cortrophin\' is in fact `corticotropin\' (adrenocorticotropin). The issue, it seems to me, is whether or not the applicant\'s registration of `Cortrophin,\' with the presumptions flowing from such registration, is likely to damage opposer."

The Assistant Commissioner then noted that

"Both parties, and others in the industry use adrenocorticotropin, corticotropin and adrenotropen — indeed, judicial notice is taken of the fact that they are required by the Federal Food, Drug and Cosmetic Act to use one of the recognized generic designations for the adrenocorticotropic hormone, (sic) This being true, it is not seen how registration of `Cortrophin\' by applicant can possibly `interfere with and embarrass the opposer and other members of the entire pharmaceutical industry in the exercise of their right to describe their goods by means of the common generic term for the goods\' as alleged by opposer in its pleading."

Thus, on the face of the record, it would appear that the single issue on appeal relates to appellant's standing in this opposition proceeding, viz — is there a likelihood of damage to appellant from the proposed registration of appellee's "Cortrophin." It is rather obvious, however, that the only possibility of damage to appellant would reside in the correctness of its allegation that "Cortrophin" is, in fact, descriptive of the product in conjunction with which it is used (assuming for the moment that if "Cortrophin" were descriptive, appellant would be likely to be damaged by the registration thereof). It is necessary, therefore, to consider at this point the question of descriptiveness of "Cortrophin" (or, as appellant states it, the "confusing similarity of "Cortrophin" to the generic term "corticotrophin"). If, in fact, the mark is not descriptive, it is clear that the decision of the Assistant Commissioner must be affirmed.

There was no clear decision in the opinion below with respect to the question of descriptiveness. We are of the opinion that "Cortrophin" is not a "mere contraction, telescoping, or misspelling" of the generic name "corticotrophin," as alleged by appellant in its notice of opposition; that it accordingly is not "in the same category" with that name and does not constitute the generic or descriptive name of the goods; that it is therefore capable of functioning as a trademark and distinguishing appellee's goods from the goods of others; and that it is accordingly properly registrable under the Trade Mark Act of 1946.

Comparison of the two words readily justifies our conclusion. The word "Cortrophin" has only three syllables, whereas "corticotrophin" has five. The latter, due to the inclusion therein of "tico," would unquestionably be aurally distinct from the former. The two terms differ in appearance as well. Furthermore, we cannot ignore the fact that the goods to which the mark is applied are prescription drugs. Where such products are involved, the likelihood of confusion between the mark and the descriptive term is unquestionably minimized.

It must, as well, be borne in mind that we are here concerned not with two arbitrary or fanciful marks but with a descriptive term and a term alleged to be a "mere" misspelling thereof. As was ably stated by Judge Worley in Intercontinental Mfg. Co., Inc. v. Continental Motors Corp., 230 F.2d 621, 623, 43 C.C.P.A. Patents, 841:

"Normally, the degree of similarity which is permissible between trademarks consisting of ordinary words, especially when such words are descriptive or geographical, is greater than that permissible between arbitrary or fanciful marks. * * *" (Emphasis added.)

How, then, can it be said that "Cortrophin" is a "mere" contraction, telescoping or misspelling of "corticotrophin"? In our view, while appellee's "Cortrophin" is not completely arbitrary, having its roots in the generic term, it is sufficiently different from said generic term to avoid the evils inherent in the registration of a descriptive term. It is, at best, merely suggestive of the generic term.

It is to be noted that, in our determination of whether or not "Cortrophin" is a mere misspelling, contraction or telescoping of the generic word "corticotrophin," we have given weight to considerations normally made where two trademarks are involved and the question is one of confusing similarity of the marks as applied to the goods in question. From...