Alvogen IP Co. S.a.r.l.

Trademark Trial and Appeal Board

Jan 20, 2012

No. 77939659 (T.T.A.B. Jan. 20, 2012)

OPN

Mailed:
January 20, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alvogen IP Co. S.a.r.l.
________

Serial No. 77939659
_______

Bruce H. Sales, Gregg A. Paradise and Robert B. Hander of
Lerner David Littenberg Krumholz & Mentlik, LLP for Alvogen
IP Co. S.a.r.l.

April Roach, Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
_______

Before Rogers, Chief Administrative Trademark Judge, and
Zervas and Lykos, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On February 19, 2010, Alvogen IP Co. S.a.r.l.
(“applicant”) filed an application pursuant to Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b), for registration
on the Principal Register of the following mark,

THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 77939659
2

for International Class 5 goods identified as,
pharmaceutical preparations, namely, antibiotics,
antidiabetics, antihypertensives,
antidepressants, analgesics, anti-inflammatories,
antivirals, and antiepileptics; transdermal
patches for use in the treatment of infections,
diabetes, hypertension, depression, pain,
inflammation, and epilepsy; and contraceptive
sponges,

and International Class 42 services identified as
“pharmaceutical research services.” Applicant entered the
following description of the mark into the record: “The
mark consists of a stylized A in a triangular-like shape.”
The examining attorney finally refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), in view of Registration No. 3127143 for the
following mark,

for International Class 5 goods identified as,
pharmaceutical preparations, namely, medicines
for the treatment of obesity, tobacco withdrawal,
and for prevention of cardiovascular diseases;
dietetic foods adapted for medical use; beverages
for medical use, namely, nutritionally fortified
beverages and vitamin fortified beverages;
Serial No. 77939659
3
medicinal infusions in the nature of medicinal
herbs.1

Applicant appealed the final refusal of its
application. Both applicant and the examining attorney
filed briefs. The refusal to register is affirmed.
Evidentiary Issues
Applicant has included an image of a mobius triangle
in its brief, which was not made of record prior to the
filing of the appeal. The examining attorney’s objection
to the image is well taken – the record should be complete
prior to the filing of an appeal. Trademark Rule 2.142(d).
We have not considered the image of the mobius triangle in
applicant’s brief or the discussion regarding the image.
In addition, even though the examining attorney
objected to the inclusion of the image of the mobius
triangle in applicant’s brief, applicant included pages
from www.new.myfonts.com with its reply brief. As these

1 The registration includes the following description of the
mark, “the mark comprises a mobius triangle shape”; the following
color claim, “the color(s) yellow, orange and red is/are claimed
as a feature of the mark”; and the following color location
statement, “different shades of the color yellow appear mostly in
the upper portion of the triangle design, different shades of the
color orange appear mostly on the left portion of the triangle
design, and different shades of the color red appear mostly on
the right portion of the triangle design.”

Applicant states that the cited registration is a three-
dimensional mark. The Office, however, does not consider the
cited mark to be in three dimensions. See TMEP § 807.10 (8th ed.
2011).
Serial No. 77939659
4
pages too were not of record prior to the filing of
applicant’s appeal, their submission is untimely and they
have not been given any further consideration. Id. The
“excerpts” from these webpages duplicated in the reply
brief also have not been given any further consideration.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Turning first to applicant’s and registrant’s goods,
we find applicant’s goods to be identical-in-part to
registrant’s goods. Specifically, registrant’s
identification of goods includes pharmaceutical
preparations, namely, medicines for the prevention of
Serial No. 77939659
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cardiovascular diseases; and applicant’s identification of
goods includes pharmaceutical preparations, namely,
antihypertensives and anti-inflammatories.
As for the remaining goods and services, the evidence
submitted by the examining attorney establishes that
(i) registrant’s and applicant’s goods, and (ii)
registrant’s goods and applicant’s services, are
commercially related to one another. The examining
attorney submitted numerous third-party registrations which
support her contention that, on the one hand, the involved
goods, and, on the other hand, the registrant’s goods and
applicant’s services, are of a kind that may emanate from a
single source under a single mark. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce are
not evidence of commercial use of the marks shown therein,
or that the public is familiar with them, but have some
probative value to the extent they suggest that the listed
goods emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
In addition, the examining attorney submitted printouts
from the websites of five pharmaceutical manufacturers (for
example, Pfizer, Lilly) that offer (i) one or more of
Serial No. 77939659
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applicant’s and registrant’s goods, and (ii) one or more of
registrant’s goods and research services. The probative
value of the examining attorney’s Internet evidence is
reduced, however, because the common marks for the goods,
and the goods and research services, are house marks. See
In re HerbalScience Group LLC, 96 USPQ2d 1321, 1324 n.3
(TTAB 2010).
It has not escaped our attention that applicant has
not contested the examining attorney’s assertion that the
International Class 5 goods of the application are related
to the goods of the cited registration, and in fact did not
even address the issue of the similarity of the goods in
its main brief. In its reply, applicant stated, “[t]o be
clear, Applicant does not assert that confusion is unlikely
due to the marks being directed to different goods or
consumers, but rather, because the overall connotations and
commercial impression of the applied-for mark and the [mark
in the] cited registration are truly distinct.” Reply at
7. With regard to the similarity of registrant’s goods and
applicant’s services, applicant has not discussed the issue
in its briefs, effectively conceding the issue.
Thus, based on the record before us, and applicant’s
concession of the issue, we conclude that applicant's goods
and services are closely related in a commercial sense to
Serial No. 77939659
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the cited registrant's goods. We therefore find the
du Pont factor regarding the similarity of the goods, and
the goods and services, to weigh in favor of a finding of
likelihood of confusion.
Next, we consider the trade channels and classes of
consumers, and begin with those trade channels and classes
of consumers for applicant’s and registrant’s respective
goods. Because the goods are in part identical, and
because the identifications of goods lack any restrictions
as to channels of trade and classes of consumers, we must
presume that the channels of trade and classes of
purchasers for the goods overlap with one another. Hewlett
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
USPQ2d 1001, 1005 (Fed. Cir. 2002) (“[A]bsent restrictions
in the application and registration, goods and services are
presumed to travel in the same channels of trade to the
same class of purchasers”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers.”).
There is no information in the record regarding the
trade channels and classes of purchasers for registrant’s
goods and applicant’s services. The du Pont factor
Serial No. 77939659
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regarding trade channels and classes of purchasers for
registrant’s goods and applicant’s services is therefore
neutral.
We now turn to the du Pont factor regarding the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005), quoting du Pont, 177 USPQ at
567). In a particular case, any one of these means of
comparison may be critical in finding the marks to be
similar. In re White Swan Ltd., 9 USPQ2d 1534 (TTAB 1988);
In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1988). In
addition, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1 (CCPA 1977); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff'd
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
Further, because the goods are in part identical, the
Serial No. 77939659
9
degree of similarity necessary to find a likelihood of
confusion for the goods need not be as great as where there
is a recognizable disparity between the goods. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992); In re SL&E Training Stable
Inc., 88 USPQ2d 1216 (TTAB 2008).
Applicant states that “the question on appeal is not
merely how the marks appear, but how they will be perceived
and recalled in the mind of the average consumer; namely,
one as [a] letter, and the other as a shape.” Brief at 3
(emphasis in original). According to applicant, consumers
will perceive its mark as the letter “A” because of “the
gap in its right side, [and] the thickening and thinning of
the line which evokes the stroke of a writing implement.”
Brief at 4-5. Registrant’s mark, however, “[d]ue to its
closed circumference, inclined orientation, three-
dimensional shading, and multiple colors … will
overwhelmingly be perceived as a design rather than a
letter.” Brief at 5.
Applicant’s mark is so highly stylized that it cannot
be presumed that it would be perceived as a letter “A”; it
would take some study to discern a lower-case letter “A” in
applicant’s mark. At best, applicant’s mark is in the grey
area between a pure design mark which cannot be vocalized
Serial No. 77939659
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and a mark which would readily be identified as a letter.
Cf., Georgia-Pacific Corp. v. Great Plains Bag Co., 614
F.2d 757, 204 USPQ 697, 699 (CCPA 1980) (“It must be
remembered that [the] trademark consists of highly stylized
letters and is therefore in the gray region between pure
design marks which cannot be vocalized and word marks which
are clearly intended to be.”). Because applicant has not
introduced any evidence at all into the record, we do not
have the benefit of any information that would bear on how
applicant promotes recognition of its mark or on consumer
perceptions of the mark, and applicant’s contention that
its mark would be perceived as a lower case “A” is mere
argument. Hence, as was the case in In re Burndy Corp.,
300 F.2d 938, 133 USPQ 196, 197 (CCPA 1962), we must decide
this case based on the visual similarity of the marks. Id.
(“In our view, this case must be decided primarily on the
basis of visual similarity of the marks. The marks are not
word marks and are not capable of being spoken. They are
design marks … although each is based on a capital letter
‘B’….”). We consider applicant’s mark as a pure design
mark rather than simply a stylized display of a letter
mark.
When we visually compare the marks, there are, of
course, certain specific differences between applicant's
Serial No. 77939659
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and registrant’s marks which are clearly discernible upon a
side-by-side comparison of the marks. However, purchasers
do not always have the opportunity to compare marks on a
side-by-side basis, and thus the test which we must apply
in determining likelihood of confusion is not whether the
marks are distinguishable when compared side-by-side, but
rather whether they so resemble one another as to be likely
to cause confusion. On balance, we find the marks to be
more similar than dissimilar. This, of course is a
subjective determination, and hence we need not comment on
the specific similarities and differences between the marks
asserted in the briefs. See id. at 197 (“Since this is, of
necessity, a subjective opinion, no amount of discussion of
the matter can add to the statement of our conclusion which
is predicated on the apparent visual differences in the
marks.”). See also, The American Sunbathing Ass’n, Inc. v.
American Health Alliance, 157 USPQ 586, 589 (TTAB 1968)
(“Each of the parties has made a side-by-side analysis of
the marks in question listing, in support of its position,
features of similarity or features of dissimilarity. This
method of analysis or dissection of marks is improper in
trademark proceedings because the commercial impression of
a mark is generally created or engendered by the mark as a
whole ….”). We therefore resolve the du Pont factor
Serial No. 77939659
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regarding the similarity of the marks against applicant, in
the context of the goods, and the goods and services.
We have found applicant’s and registrant’s goods,
trade channels and classes of purchasers to be in part
identical, and applicant’s services and registrant’s goods
to be related. In addition, we have found the marks to be
similar. There is no evidence of any uses of marks similar
to registrant’s mark, thus we consider registrant’s mark to
be a strong design mark. We therefore find that
applicant’s mark for the goods and services recited in its
application is likely to cause confusion with registrant’s
mark for the goods recited in its registration. Our
conclusion is consistent with prior decisions which state
that, where the marks are used on pharmaceuticals and
confusion as to source can lead to serious consequences, it
is extremely important to avoid that which will cause
confusion. See Alfacell Corp. v. Anticancer Inc., 71
USPQ2d 1301 (TTAB 2004), citing Glenwood Laboratories, Inc.
v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19
(CCPA 1972); Blansett Pharmacal Co. Inc. v. Carmrick
Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992); Schering
Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980); and American
Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ
357 (TTAB 1976).
Serial No. 77939659
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DECISION: The refusal to register under Section 2(d)
of the Trademark Act both the International Class 5 goods
and the International Class 42 services is affirmed.