JOHNSON, Chief Judge.
This is an appeal in an opposition proceeding from the decision of the Commis[496]*496sioner 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’, ‘adrenocortieotrophin’, ‘adrenocortieotrophic 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 [497]*497trade-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 op-poser 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 ease 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 op-poser.”
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.
[498]*498There was no clear decision in the opinion below with respect to the question of descriptiveness.
Free access — add to your briefcase to read the full text and ask questions with AI
JOHNSON, Chief Judge.
This is an appeal in an opposition proceeding from the decision of the Commis[496]*496sioner 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’, ‘adrenocortieotrophin’, ‘adrenocortieotrophic 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 [497]*497trade-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 op-poser 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 ease 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 op-poser.”
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.
[498]*498There 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 “ti-co,” 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 our study of the cases on this question we have concluded that the test which must be made in each case is similar to that made in the other. Cases such as Selchow v. Baker, 1883, 93 N.Y. 59; Ex parte Pillsbury Flour, 1935 C.D. 1, 23 U.S.P.Q. 168; Canal Co. v. Clark, 1871, 13 Wall. 311, 20 L.Ed. 581; and Model Brassiere Co., Inc., v. Bromley-Shepard Co., Inc., 49 F.2d 482, 18 C.C.P.A.,Patents, 1294, indicate that amongst the reasons for the statutory proscription of the registration of descriptive words are (1) to prevent the applicant from acquiring a monopoly in the sale of any goods other than those produced or made by himself, and (2) to avoid the possibility of harassment by the registrant of the descriptive term, by means of threats of infringement suits and the like, of others in the field who use the descriptive term to describe their products (this latter possibility arises from the fact that, under section 7(b) of the Trade Mark Act of 1946, the registration of a mark is prima facie evidence of the ownership of and the exclusive right to use the mark). Where one attempts to register a “mark” which is a mere misspelling or contraction of a descriptive term, it is evident that the foregoing evils which are inherent in the registration of a descriptive word do not cease to exist. The registrant of the misspelled descriptive word will nonetheless be in a position to badger users of the descriptive word per se with threats [499]*499of infringement suits; and this situation will persist so long as the registrant is in a position to say that the use of the descriptive term by others, concurrently with his use of the registered mark, is likely to cause confusion in the mind of the public as to the origin of the goods. The question in each case thus reduces itself to a determination of whether the proposed mark is so similar to the descriptive term as to result in the likelihood of confusion as between said mark and the descriptive term per se.
Appellant attempts to draw an analogy between numerous cases which have considered proposed registrations which were alleged by an opposer or a petitioner to be “mere” misspellings or contractions of generic or descriptive terms to show that appellee’s “Cortrophin” is a “mere” misspelling or contraction of the generic term “cortieotrophin.” As has been pointed out above, the determination of whether or not “Cortrophin” is descriptive resolves itself essentially into a question of confusing similarity between said mark and the descriptive term “cortieotrophin.” Thus, the final determination is unavoidably subjective. In such a situation as this, therefore, prior decisions are of little value. Cf. L. J. Mueller Furnace Co. v. United Conditioning Corp., 222 F.2d 755, 42 C.C. P.A., Patents, 932.
Appellant finally contends that due to the fact that the term “Cortrophin” is extremely suitable for use as a generic name for the product, “there is every likelihood that it will be desired as the generic name for the product.” It states that “no one is entitled to seize upon words or phrases which are particularly suited for use as the future generic terms for the products and make use of such words and register them to the exclusion of everybody else in the field.” Such an argument is too tenuous to require extensive discussion. We agree with the Assistant Commissioner that we “may not indulge in surmise concerning what the facts may be at some remote and indefinite time 'n the future or what the result of such changed facts might be.”
In view of our finding that appellee’s “Cortrophin” is not descriptive, there is no need to consider the question of appellant’s standing in this opposition proceeding. As we have heretofore stated, unless it could be shown that the mark is in fact descriptive, appellant could not possibly show likelihood of damage flowing to it as a result of the proposed registration.
For the foregoing reasons, the decision of the Assistant Commissioner is affirmed.
Affirmed.
JACKSON, J., retired, recalled to participate herein in place of COLE, J., absent because of illness.