Avant Immuno-therapeutics, Inc.

Trademark Trial and Appeal Board

Dec 14, 2001

No. 75496494 (T.T.A.B. Dec. 14, 2001)

12/14/01

Paper No. 21
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Avant Immunotherapeutics, Inc.
________

Serial No. 75/496,494
_______

Leon Yankwich of Yankwich & Associates for Avant
Immunotherapeutics, Inc.

Marlene D. Bell, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Walters and Wendel, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Avant Immunotherapeutics, Inc. seeks to register the
mark AVANT IMMUNOTHERAPEUTICS for “pharmaceuticals for
therapeutic and diagnostic uses in the treatment of
cardiovascular disease, immune disorders, and inflammation;
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/496,494
2
[and] vaccines and purified proteins for therapeutic and
medical diagnostic use.”1
Registration has been finally refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark, if used in connection
with the identified goods, so resembles the mark AVANTI
registered for “biochemical for laboratory use, namely
phospholipids; [and] biochemical for pharmaceutical use,
namely phospholipids for use as an additive or concipient
in pharmaceuticals,”2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.

1 Serial No. 75/496,494 filed June 3, 1998; based on applicant’s
allegation that it has a bona fide intent to use the mark in
commerce. The application includes the following statement:
“The word ‘avant’ appearing as part of the mark AVANT
IMMUNOTHERAPEUTICS means ‘before’ in French.” In addition, the
word “IMMUNOTHERAPEUTICS” has been disclaimed apart from the mark
as shown. We note that as originally filed, the application also
covered “scientific research and assay services.” Although the
services were subsequently amended to “scientific research and
pre-clinical assaying services and pharmaceutical testing; custom
synthesis of proteins, polynucleotides and biomolecules to the
order and specification of others,” applicant ultimately deleted
these services from the application.
2 Registration No. 1,466,820 issued December 1, 1987; Sections 8
& 15 affidavit accepted. The registration includes the following
statement: “The English translation of the word ‘avanti’ in the
mark is ‘go forward’.”
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We turn first to a consideration of the respective
marks. The Examining Attorney argues that the marks are
similar in sound, appearance and commercial impression
because the dominant portion of applicant’s mark, AVANT, is
highly similar to registrant’s mark, AVANTI. In this
regard, the Examining Attorney maintains that AVANT is the
dominant portion of applicant’s mark because it is the
first word in the mark and because IMMUNOTHERAPEUTICS is
descriptive of applicant’s goods.
Applicant, on the other hand, argues that the
IMMUNOTHERAPEUTICS portion of its mark cannot be ignored in
analyzing the marks; and that the marks create different
commercial impressions, and have different meanings,
particularly in view of the translations of the words
“AVANT” and “AVANTI.”
While marks must be considered in their entireties, it
is nevertheless the case that, in articulating reasons for
reaching a conclusion of the issue of likelihood of
confusion, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For instance, “that a
Ser No. 75/496,494
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particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark …”
224 USPQ at 751.
In this case, the disclaimed term “IMMUNOTHERAPEUTICS”
in applicant’s mark is merely descriptive of applicant’s
goods, and thus the dominant and principal source-
indicative element of such mark is AVANT. AVANT is highly
similar to the registered mark AVANTI in sound and
appearance, and when translated (assuming that purchasers
are even familiar with the translations), the connotations
of AVANT and AVANTI are only slightly different. Thus,
when the marks AVANT IMMUNOTHERAPEUTICS and AVANTI are
considered in their entireties, the similarities in sound,
appearance and commercial impression outweigh the
differences.
Turning next to a consideration of the respective
goods, applicant argues that the purchasers thereof are
different and that the goods travel in different channels
of trade. In particular, applicant argues that its goods
are “pharmaceutically active compositions” whereas
registrant’s goods are “pharmaceutically inert additives.”

Ser No. 75/496,494
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Further, applicant states that:
Whereas the AVANTI phospholipid materials
are bought and sold in bulk for a range
of possible uses, the medicines and
diagnosis products associated with the
mark AVANT IMMUNOTHERAPEUTICS are highly
regulated (i.e., by the Federal Food and
Drug Administration) and are only
distributed in specific limited quantities
for an approved purpose (treatment,
prevention, or diagnosis of disease).
(Brief, p. 5).

The Examining Attorney, on the other hand, argues that
it must be presumed that applicant’s and registrant’s goods
are marketed to the same classes of purchasers because
there are no restrictions in the registrant’s
identification of goods, and that even applicant has
indicated that registrant’s goods are subject to a range of
possible uses. Further, the Examining Attorney argues that
because applicant is involved in the custom synthesis of
proteins, polynucleotides and biomolecules to the order and
specification of others, it is probable that applicant
would manufacture registrant’s type of goods. Thus, the
Examining Attorney argues that there is a sufficient
relationship between applicant’s and registrant’s goods to
support a finding of likelihood of confusion.
We are not persuaded, on this record, that applicant’s
pharmaceuticals for therapeutic and diagnostic uses in the
Ser No. 75/496,494
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treatment of cardiovascular disease, immune disorders, and
inflammation and vaccines and purified proteins for
therapeutic and medical diagnostic use, on the one hand,
and registrant’s phospholipids for laboratory and
pharmaceutical use, on the other hand, are related
products. There is no evidence in this record that
companies which market applicant’s types of
pharmaceuticals, vaccines and purified proteins also market
phospholipids for laboratory use and for pharmaceutical use
as an additive or concipient under the same mark.
Moreover, it is pure speculation on the Examining
Attorney’s part when she argues that applicant would
probably manufacture registrant’s types of goods. Although
applicant’s application at one point included the “custom
synthesis of proteins, polynucleotides and biomolecules to
the order and specification of others,” these services have
been deleted and they are not before us in this appeal.
Thus, we cannot consider these services in determining
whether the goods identified in applicant’s application and
the goods identified in the cited registration are related.3

3 We should add that even if these services had not been deleted
from applicant’s application, there is no evidence in this record
to suggest that such services and applicant’s types of goods
emanate from the same sources.
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A reasonable interpretation of applicant’s
identification of goods leads us to conclude, as applicant
has argued, that applicant’s types of goods would be
marketed to licensed dispensers such as physicians.
Similarly, a reasonable interpretation of registrant’s
identification of goods leads us to conclude that
registrant’s types of goods would be marketed to
laboratories and companies for use as ingredients in
pharmaceuticals. Thus, the purchasers and trade channels
for the respective goods are different. We note that
applicant has indicated that registrant’s types of goods
have a range of possible uses. We do not interpret this to
mean, however, that registrant’s goods are in the nature of
drugs which are dispensed by physicians, but rather that
such goods have a wide range of uses by laboratories and
pharmaceutical companies. Finally, it seems to us that
both applicant’s and registrant’s products are of a
sophisticated nature and that they would be sold under
circumstances that insure discrimination in the purchase
thereof.
In sum, notwithstanding the similarity of the marks
AVANT IMMUNOTHERAPEUTICS and AVANTI, we find that this
record does not establish that applicant’s pharmaceuticals
for therapeutic and diagnostic uses in the treatment of
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cardiovascular disease, immune disorders, and inflammation
and vaccines and purified proteins for therapeutic and
medicinal and diagnostic use, on the one hand, and
registrant’s phospholipids for laboratory and
pharmaceutical use, on the other hand, are so related that
confusion is likely to result from the contemporaneous use
of the foregoing marks on these respective goods.
Decision: The refusal to register is reversed.

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