Boehringer Ingelheim Pharmaceuticals, Inc. sought to register the mark BREATHLESS for “promoting public awareness of idiopathic pulmonary fibrosis [‘IPF’], its symptoms, its prevention and its treatment.” The Examining Attorney refused registration on the basis that the mark was merely descriptive of Boehringer’s services. The TTAB reversed.

The Board noted that one dictionary defines “breathless” as “[b]reathing with difficulty, gasping” and “excited or tense, often to the point of holding the breath: a breathless audience.” Boehringer argued its applied-for mark was suggestive, rather than merely descriptive, applying either definition. According to Boehringer, to connect promotional awareness and information services with the concept that IPF causes patients to become “breathless” requires a multi-step reasoning process. Applying the second definition, Boehringer argued BREATHLESS was a double entendre because it refers to the anticipation patients and their loved ones feel about the progress being made in preventing or treating IPF. The Examining Attorney, on the other hand, argued that BREATHLESS was descriptive of the information Boehringer provided because consumers would immediately understand the mark to describe the main symptom of IPF.

The Board agreed with Boehringer. According to the Board, the Examining Attorney’s “evidence fail[ed] to demonstrate[] that the term ‘breathless’ merely describes providing consumers with information about IPF or raising public awareness of IPF. . . . Specifically, BREATHLESS does not identify a feature of the services themselves or convey information about Applicant’s promotional and medical information services.” In short, the applied-for mark contained “an element of incompleteness” that made it suggestive.

The Board, however, took pains to note that this was a “close case” and stressed that its decision was based solely on Boehringer’s identification of services and the “quite limited record presented by the Examining attorney.” The Board specifically stated that “[a]nyone who believes that the term BREATHLESS is, in fact, merely descriptive, may oppose the application and have the opportunity to present a more complete record in an inter partes proceeding.”

The case is In re Boehringer Ingelheim Pharmaceuticals, Inc., Serial No. 86852106 (TTAB Nov. 27, 2017).