On My Mind Blog

Hi-Tech Pharmaceuticals, Inc. filed an intent to use application to register EXPERIMENTAL AND APPLIED SCIENCES as a trademark for “dietary and nutritional supplements.”  During the course of examination, the Applicant submitted as specimens of use several labels affixed to bottles for dietary supplements that were virtually identical in the way they displayed this proposed mark.

The Examining Attorney refused registration on the ground that the proposed mark was used solely as a trade name to identify the Applicant’s business and did not function as a trademark to indicate the source of the Applicant’s goods.

On appeal, the TTAB affirmed the refusal to register.

The TTAB pointed out the Trademark Act defines a “trade name” as “any name used by a person to identify his or her business or vocation” and that a designation used solely as a trade name cannot be registered under the provisions of the Trademark Act.

However, the TTAB also stated that a designation may function as both a trade name and a trademark, a question of fact determined from the manner of use and the probable impact on purchasers.  Factors to consider include whether the Applicant used its full corporate name, capitalized it, or used lettering differing from other matter in style, boldness, size, or color.

In this case, the TTAB recognized that the proposed mark appeared in bold, on a separate line, and without a corporate designation such as “Inc.”  But the TTAB held that this was not enough given that the alleged mark ended the sentence “Developed and exclusively manufactured by Experimental and Applied Sciences” and was immediately followed by the Applicant’s address.  Moreover, the graphic scheme of a four-line stack sharing the same left- and right-hand justification formed a visual unit, which did not set off the proposed mark from the other words and did not create a separate and distinct commercial impression.

The TTAB and examiner agreed that “[i]ndeed, applicant would be hard-put to present the term in a less prominent manner.”

In re Hi-Tech Pharmaceuticals, Inc., Application No. 88291540 (TTAB February 14, 2024)

Author’s Note:  You can avoid this pitfall by following the suggestions contained in our earlier Blog post.

For further information, please contact William M. Borchard or your CLL attorney.