Respondent Westmont Pharmaceuticals, an American corporation, sought registration of trademark ‘Atussin’ placed on its medicinal preparation for the treatment of coughs. Petitioner Etepha, owner of the trademark ‘Pertussin’ placed also on preparation for cough treatment, objected claiming that it will be damaged since the 2 marks are confusingly similar. The Director of Patents gave due course to the application.
Whether or not petitioner’s trademark is registrable.
That the word “tussin” figures as a component of both trademarks is nothing to wonder at. The Director of Patents aptly observes that it is “the common practice in the drug and pharmaceutical industries to ‘fabricate’ marks by using syllables or words suggestive of the ailments for which they are intended and adding thereto distinctive prefixes or suffixes”. And appropriately to be considered now is the fact that, concededly, the “tussin” (in Pertussin and Atussin) was derived from the Latin root-word “tussis” meaning cough.
“Tussin” is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark. With jurisprudence holding the line, we feel safe in making the statement that any other conclusion would result in “appellant having practically a monopoly” of the word “tussin” in a trademark. While “tussin” by itself cannot thus be used exclusively to identify one’s goods, it may properly become the subject of a trademark “by combination with another word or phrase”. And this union of words is reflected in petitioner’s Pertussin and respondent’s Atussin, the first with prefix “Per” and the second with Prefix “A.”