(A picture of Synergy 5-Loxin®-AKBA Boswellia Extract for sale online
Is a patented chemical formula considered as misleading or deceiving consumers?
As we reported in our published article "2 legal standards and 6 factors for determining a likelihood of confusion, etc."1, any mark applied for registration that did not overcome the condition 1 (ie. lack of inherently distinctive character due to being descriptive, deceptive or deceptively misdescriptive) shall be rejected.
Applicant, P.L. Thomas-Laila Nutraceuticals, Inc. (US), applied for registration of trademark (word only) "5-LOXIN" in class 05 covering herbal supplements for use as ingredients in the food and pharmaceutical industry, food supplements, plant and herb extracts (app. no. 4-2013-21182).
The NOIP rejected the applied-for mark "5-LOXIN" by its office action no. 19831/SHTT-NH2 of June 25, 2015, assuming that the mark "5-LOXIN" is a chemical formula patentable in the United States, descriptive if the goods contains that ingredients, causing confusion in the opposite circumstance, in violation with the criteria prescribed in Articles 73.5 and 74.2.c of the Intellectual Property Law2
Successful Response to the Rejection
We believe that the NOIP's refusal is not persuasive enough since the NOIP did not indicate clearly which and where source of information it relied upon to consider that "5-LOXIN" is a proprietarily patented chemical formula. On the other hand, we also find that the standard of protection under Condition 1 – the inherent disctinveness - as provided in Articles 73.5 and 74.2.c of the IP Law has no reference to the sign for registration containing the name of a chemical formula then it shall be deemed descriptive, misleading or deceptive.
Bross & Partners, in its response against the refusal, raised three arguments: (a) 5-LOXIN is not a patented chemical formula in the United States, but which is a mark registered as a trademark in the United States, (b) 5-LOXIN has a trademark function despite being named in many patent specifications searchable from the patent data at the USPTO, and (c) 5- LOXIN is clearly explained on many sources of information including the Internet, testifying that it is a trademark rather than a patented chemical formula.
Regarding the argument (a), the Applicant is the owner of several mark 5-LOXIN in class 05, such as 5-LOXIN ADVANCE and 5-LOXIN under US reg. nos 4,597,994 and 3,807,0443 respectively. Accordingly, the United States - a country that also adopts the 2-step standard as in Vietnam in examining a trademark – concluded that 5-LOXIN is a trademark but not a descriptive, deceptive or deceptively misdescriptive mark.
As regards the argument (b), even if 5-LOXIN appears in patent specifications in the United States (eg. patent nos. 9,101,599; 8,197,865 or 8,192,7684) then it does not mean that 5-LOXIN has no trademark function or has become generic because in the specification shown above the commonly recognized symbol ® - means that the mark is registered - is always put in the right corner upright 5-LOXIN. On the other hand, the practice in the United States also shows that USPTO accepts to include a trademark or trade name in an invention specification5.
For the last argument, 5-LOXIN plays as a commercial identifier, helping customers identify and distinguish the origin of commerce of different herbal supplement foods. The information on the internet from various sources as submitted can confirm this, such as http://www.plthealth.com/products/5-loxin and http://www.5-loxin.com/, LAILA NUTRACEUTICALS, the owner of a protected trademark in the United States, has advertised a product with the trademark "5-Loxin" on the website with the symbol ® showing it is exactly a protected trademark but not a generic chemical fomula.
With the reasoning presented above, on May 6, /2016 the NOIP agreed to withdraw its rejection, approved the response by Bross & Partners and issued registration no. 261895 in favor of the Applicant.
2 Article 73. Signs ineligible for protection as marks
5. Signs which cause misunderstanding or confusion or which deceive consumers as to the origin, properties, use, quality, value or other characteristics of goods or services.
Article 74. Distinctiveness of marks
2. A mark shall be deemed to be indistinctive if it is a sign falling into one of the following categories:
(c) Signs indicating time, place and method of production; category, quantity, quality, properties, ingredients, use, value or other characteristics descriptive of goods or services, except where such sign has acquired distinctiveness by use before the filing of the application for registration of the mark
3 Trademark datatabase including these two registrations is searchable from the USPTO at the link: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4805:n5eyjj.1.1
4 Patent datatabase including these patents can be searched from the USPTO at the link: http://patft.uspto.gov/
5 See 608.01(v) of MPEP or access to the link: https://www.uspto.gov/web/offices/pac/mpep/s608.html#d0e47416
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