TTAB Test: Is "BREATHLESS" Merely Descriptive of Idiopathic Pulmonary Fibrosis Information Services?

The USPTO refused registration of the mark BREATHLESS under Section 2(e)(1), finding the mark to be merely descriptive of "promoting public awareness of" and "providing medical information regarding" idiopathic fibrosis, its symptoms, its prevention and its treatment. On appeal, the examining attorney argued that the mark describes the main symptom of IPF: the shortness of breath. Applicant contended that the mark is merely suggestive, or is a double entendre because it refers to the "excitement and anticipation among IPF patients, their caregivers and loved ones about the progress being made in preventing and/or treating this serious condition." How do you think this came out? In re Boehringer Ingelheim Pharmaceuticals, Inc., Serial No. 86852106 (November 27, 2017) [not precedential] (Opinion by Judge Frances Wolfson).

The Board ignored applicant's feeble double entendre argument, but it agreed with applicant that the USPTO's evidence failed to show that the term "breathless" merely describes the subject services. "[W]hile breathlessness is an IPF symptom, there is no evidence that it relates to providing information or raising public awareness, even of IPF specifically."

We agree with Applicant that a multi-step reasoning process is required to move from the merely descriptive meaning of “breathless” as a word that describes a common symptom of lung disease in general, even of IPF specifically, to an understanding that the proposed mark conveys an immediate idea about providing medical information about IPF or raising public awareness thereof. In fact, some degree of thought or imagination is required to understand that Applicant’s services involve promoting public awareness and providing medical information about a disease that makes one “breathless.” That is, there is an element of incompleteness making the mark suggestive rather than merely descriptive.

Therefore, the Board reversed the refusal to register.

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Text Copyright John L. Welch 2017.