On October 19, 2015 Scott Slavick's article, "Too Trulicity to be good?" was published in InsideCounsel and featured in the InsideCommentary Newsletter.
Mark Must Indicate Origin of Goods, Says
Slavick
When it comes to trademark registration, the important question is
not how readily a mark will be noticed. It's whether, when
noticed, the mark will be understood by the customer as indicating
the source of the goods.
So says Brinks' Scott Slavick in a recent article, "Too
Trulicity To Be Good?," for InsideCounsel.com. Slavick
describes the recent non-precedential decision in In re Eli Lilly
and Co., in which the TTAB overturned a USPTO examiner's
rejection of Lilly's application to register Trulicity for
"pharmaceutical preparations for the treatment of
diabetes," on the grounds that the mark was not prominently
displayed on the provided specimen.
The TTAB was won over by Lilly's argument that the USPTO
should not apply a mechanical test, but instead should consider the
commercial impression made by the mark. The Board's decision is
informative, notes Slavick, in signaling that the TTAB is flexible
in determining trademark use, and will not be held to a rigid test
in determining such use.
This article is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.