IP Law Daily, TRADEMARK—TTAB: A CHANCE TO LIVE LONGER wording failed to function as a source identifier, (Sep 17, 2024)

By Kevin M. Finson

The wording A CHANCE TO LIVE LONGER was required to be disclaimed from an applied-for mark because the words were a commonplace term that would not be perceived as indicating the source of the goods.

A pharmaceutical company would be required to disclaim the wording A CHANCE TO LIVE LONGER in its applied-for composite mark, the Trademark Trial and Appeal Board has held. The words were a commonplace term and therefore failed to function as a source indicator (In re Bristol-Myers Squibb Co., No. 90536031 (T.T.A.B. Sept. 6, 2024)).

Bristol-Myers Squibb Company (Bristol) sought registration on the Principal Register of a composite word-and-design mark consisting of the words A CHANCE TO LIVE LONGER stylized with a logo, for use with brochures and pamphlets in the field of cancer in International Class 16 and medical information services in International Class 44. The Examining Attorney refused registration on the ground that the word portion of the mark had to be disclaimed because it was a commonplace term, message, or expression which would not be perceived as identifying the source of the goods and services. Bristol declined to make the disclaimer and appealed.

Function as mark. The Examining Attorney argued that the wording A CHANCE TO LIVE LONGER was commonplace in the medical context, particularly for cancer-related information, and provided more than twenty third-party uses in that field with the wording used in connection with drugs, treatment regimens, and other aspects of cancer diagnosis and care. Bristol contended that the identical phrase was registered by the USPTO for use with veterinary liquid supplements, that the phrase was not commonplace but rather suggestive and aspirational, and that its proposed use as demonstrated on the specimen clearly showed its use of the phrase as a trademark rather than in a generic sense.

The Board held that the extensive third-party use showed the public would not perceive the wording alone, as distinct from the wording in connection with the unchallenged design elements, as anything more than a generic phrase which would not be attributed to a single source of goods or services.

The Board affirmed the refusal to register unless the required disclaimer was made.

The Case is Serial No. 90536031.

Judge: Coggins, R.

Attorneys: Xiomara Triana (Leadership Council on Legal Diversity) for Bristol-Myers Squibb Co. David Collier for the USPTO.

Companies: Bristol-Myers Squibb Co.

Cases: Trademark USPTO