Grendel
Mailed:
May 12, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Cortex Biochem, Inc.
v.
Roche Diagnostics GmbH
(a German Limited Liability Company)
Opposition No. 91123244
(to application Serial No. 75941114
filed on March 10, 2000)
_____
Cortex Biochem, Inc.
v.
Roche Diagnostics Corporation
(an Indiana Corporation, f/k/a
Boehringer Mannheim Corporation)1
Cancellation No. 92040577
(involving Registration No. 2504968
issued November 6, 2001, from an
application filed on August 28, 1998)2
_____
and
1 Change of name recorded on February 13, 1999 at Reel 1847,
Frame 0627.
2 We note that the defendant in Cancellation No. 92040577, Roche
Diagnostics Corporation, is not the same entity as the defendant
in Opposition No. 91123244, Roche Diagnostics GmbH. However, the
the parties have treated the two companies as a single entity and
a single party throughout these proceedings. In view thereof,
and because it would appear that the two entities are likely to
be in privity with each other, we shall treat them as such. In
this opinion, we shall refer to them collectively as Roche or as
the Roche entities. As noted below, both of these Roche entities
are parties plaintiff in the third proceeding, Opposition No.
91159233.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
2
Roche Diagnostics GmbH, and
Roche Diagnostics Corporation
v.
Cortex Biochem, Inc.
Opposition No. 91159203
(to application Serial No. 76289333
filed on July 24, 2001)3
_____
Kevin R. Martin of McNichols Randick O’Dea & Tooliatos, LLP
for Cortex Biochem, Inc.
Amy L. Rankin of Bose McKinney & Evans, LLP for Roche
Diagnostics GmbH and Roche Diagnostics Corporation.
______
Before Quinn, Grendel4 and Rogers, Administrative Trademark
Judges.
Opinion by Grendel, Administrative Trademark Judge:
I. INTRODUCTION
The first of the three above-captioned proceedings
(Opposition No. 91123244) involves Roche’s application,
Serial No. 75941114, to register the mark MAGNA PURE (in
3 The first two of the three cases captioned above, in each of
which the plaintiff is Cortex Biochem, Inc. (hereinafter Cortex)
and the defendant is one of the Roche entities, were previously
consolidated by order of the Board, and they were fully litigated
by the parties. The third case captioned above, in which both
Roche entities are plaintiffs and Cortex is the defendant, was
not consolidated but instead was suspended prior to trial pending
the outcome of the first two proceedings. In its final brief in
the consolidated proceedings, Roche requested that the third case
be “accelerated” and decided along with the two previously-
consolidated cases. In its reply brief, Cortex joined in Roche’s
request. Accordingly, we hereby add Opposition No. 91159233 to
previously-consolidated Opposition No. 91123244 and Cancellation
No. 92040577, and we shall decide all three cases in this single
opinion.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
3
typed form, PURE disclaimed) for goods identified in the
application as follows:
in vitro diagnostic agents for medical use;
biochemicals, namely chemical reagents for the
purification of nucleic acids for medical use,
in Class 5;
apparatus for the purification of nucleic acids
for scientific use; accessories, namely tops of
pipettes and test tubes; apparatus for the pre-
analytical processing for scientific use, in
Class 9; and
apparatus for the purification of nucleic acids
for medical use; accessories, namely tops of
pipettes and test tubes; apparatus for the pre-
analytical processing for medical use, in Class
10.
The application was filed on March 10, 2000, and it is based
on Roche’s asserted bona fide intention to use the mark in
commerce.
Cancellation No. 92040577 involves Roche’s Registration
No. 2504968, which is of the mark MAGNA PURE (in typed form,
PURE disclaimed) for goods identified in the registration as
“biochemicals, namely, chemical reagents for the
purification of nucleic acid for scientific or research
use,” in Class 1. The registration issued on November 6,
2001 from an application filed on August 28, 1998. In that
application, Roche alleged January 18, 2000 as the date of
first use of the mark and the date of first use of the mark
in commerce.
4 Formerly known as Bottorff.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
4
On June 12, 2001, Cortex Biochem, Inc. (hereinafter
Cortex) filed a timely notice of opposition (Opposition No.
91123244) to Roche’s above-referenced application Serial No.
75941114. On May 3, 2002, Cortex filed a petition for
cancellation (Cancellation No. 92040577) of Roche’s above-
referenced Registration No. 2504968. As its ground for
opposition and cancellation in the respective cases, Cortex
asserts a claim under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d). Specifically, Cortex alleges that Roche’s
MAGNA PURE mark, as applied to the goods identified in the
application and registration, is likely to cause confusion
vis-à-vis Cortex’s asserted family of MAGA-prefix marks,
including MAGAPHASE, MAGACELL, MAGACROLEIN, MAGACHARC,
MAGACELL-X, MAGABEADS, MAGNETITE and MAGAROSE, each of which
Cortex alleges to be “one word comprised of the arbitrary
term MAGA and the generic endings.” (Notice of Opposition
at paragraph 7; Petition to Cancel at paragraph 4.) Also,
Cortex alleges in both cases that it adopted its family of
marks in 1992, a date prior to any date on which Roche can
rely, and that it uses its marks on “various types of
particles used for immuno separation, cell separation, and
DNA/RNA separation. These particles are also coupled with a
variety of reagents for purification and/or extraction and
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
5
isolation processes.” (Notice of Opposition at paragraph 4;
Petition to Cancel at paragraph 1.)5
In its amended answer to the notice of opposition in
Opposition No. 91123244 and in its answer to the petition
for cancellation in Cancellation No. 92040577, Roche denies
the salient allegations of Cortex’s pleadings, except that
Roche admits “that its MagNA Pure product line is used for
scientific purposes to isolate DNA and RNA” and that
“magnetic glass particles are used in the process.” Roche
further admits that no Allegation of Use has been filed in
connection with application Serial No. 75941114, but denies
that it has not actually used the mark in commerce. Roche’s
answers also include, as an affirmative defense, an
allegation that “[t]he alleged family of ‘MAGA’ marks upon
which Cortex relies for purposes of [these proceedings] is
merely descriptive, when applied to the products that such
alleged family mark is used in connection with, and thus
5 In the notice of opposition, but not in the petition for
cancellation, Cortex also has alleged that Roche “is not the
owner of the mark shown in Serial No. 75941114 because Opposer
[Cortex] is the sole owner of ‘MAGA’ in connection with MAGA
family of products used in the isolation and purification of DNA
and RNA and all related or similar goods and services and has
granted no license, right or title in the same to Applicant
[Roche]. Therefore, Applicant is not entitled to registration.”
(Notice of Opposition, Paragraph 9.) To the extent that this
allegation was intended by Cortex to constitute a separate ground
of opposition (i.e., in addition to the Section 2(d) ground), we
decline to treat it as such. On its face, it appears to be a
mere restatement of the Section 2(d) ground. In any event, in
its briefs Cortex has not argued this “ownership” ground as a
separate ground, and therefore is deemed to have waived such
ground.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
6
falls within the statutory prohibition of 15 U.S.C.
§1052(e), as amended.”6
In the third of the three above-captioned proceedings,
Opposition No. 91159203, the parties’ positions are
reversed. The opposition involves Cortex’s application
Serial No. 76289333, by which Cortex seeks to register the
mark MAGAPURE (in typed form) for “chemical reagents for
scientific or research use in the isolation, purification,
and extraction of biochemicals,” in Class 1, and “diagnostic
reagents for clinical or medical laboratory use for the
isolation, purification, and extraction of biochemicals,” in
Class 5. The application was filed on July 24, 2001, and is
based on use in commerce. February 2001 is alleged in the
application as the date of first use of the mark anywhere
and first use of the mark in commerce.
On March 14, 2003, Roche filed a timely notice of
opposition to registration of Cortex’s MAGAPURE mark. In
the notice of opposition, Roche pleads ownership of its
6 In its answers, Roche also alleges, as affirmative defenses,
that Cortex’s pleadings fail to state a claim upon which relief
can be granted, that Cortex’s actions are barred by the doctrines
of waiver, laches and estoppel, and that no likelihood of
confusion exists between the parties’ respective marks. To
whatever extent the first two of these defenses might be legally
available in these proceedings, we find that they have been
waived due to Roche’s failure to argue them in its brief. They
are unproven in any event. The third “defense,” i.e., that there
is no likelihood of confusion, is not properly deemed an
affirmative defense at all; we have treated it as merely a
further denial of Cortex’s Section 2(d) likelihood of confusion
claim.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
7
MAGNA PURE registration (Registration No. 2504968), the
registration involved in Cancellation No. 92040577, as well
as ownership of its prior-pending MAGNA PURE application
(Serial No. 75941114), the application involved in
Opposition No. 91123244. Roche alleges that Cortex’s
MAGAPURE mark, as applied to the goods identified in the
application, is likely to cause confusion vis-à-vis Roche’s
previously-used and registered MAGNA PURE mark. Trademark
Act Section 2(d), 15 U.S.C. §1052(d). Roche further alleges
that, in Opposition No. 91123244, Cortex has conceded that
actual confusion exists between Cortex’s MAGAPURE mark and
Roche’s MAGNA PURE mark.
In its answer, Cortex denies Roche’s allegations of
priority and likelihood of confusion. (Answer, Paragraph
2.) Cortex affirmatively alleges that its rights in its
MAGA- family of marks are senior to Roche’s rights in its
MAGNA PURE mark, and that Roche’s use of MAGNA PURE
infringes on Cortex’s senior rights in its MAGA-prefix
family of marks.
The evidence of record includes the parties’ pleadings,
and the files of the involved applications and registration.
In addition, each party submitted evidence.7 Cortex made
7 We note that due to the the timing and provisions of the
Board’s order consolidating Opposition No. 91123244 and
Cancellation No. 92040577, each party essentially ended up with
multiple testimony periods. We have considered all evidence
properly submitted during any of these testimony periods.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
8
the following evidence of record at trial: copies of three
patents owned by Roche; Roche’s responses to, and documents
produced in response to, certain of Cortex’s discovery
requests (and Roche’s stipulation as to the authenticity of
the produced documents); the testimony deposition (as
revised) of Cortex’s president Leonard Karp, and the
exhibits thereto; the testimony deposition (as revised) of
Cortex’s consultant William Cook, and the exhibits thereto;
and the testimony deposition of Cortex’s customer Dr. Jesus
Ching.
For its part, Roche made the following evidence of
record at trial: a status and title copy of Roche’s
Registration No. 2504968 (the registration involved in
Cancellation No. 92040577, and on which Roche relies as
plaintiff in Opposition No. 91159203); excerpts and exhibits
from the Rule 30(b)(6) discovery deposition of Cortex’s
president Leonard Karp; pursuant to Trademark Rule
2.120(j)(5), Roche’s responses to, and documents produced in
response to, certain other of Cortex’s discovery requests;
Cortex’s responses to, and documents produced in response
to, Roche’s discovery requests (and Cortex’s stipulation as
to the authenticity of the produced documents); the file
wrapper of Cortex’s application to register the mark
MAGAPHASE (Serial No. 76289336); the (two) testimony
depositions of Roche’s officer Sharon Sheridan, and the
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
9
exhibits thereto; and the testimony deposition of Roche’s
employee Barney Crum, and the exhibits thereto (which is of
record only for purposes of Cancellation No. 92040577).8
At this point, a short summary of what the record shows
to be the relevant chronology regarding the parties’
adoption of their respective marks is in order. Cortex
adopted and began using the marks MagaCell and MagaRose in
1990. Cortex adopted, used and ceased use of several
additional marks over the years, such that, as of 1996 and
continuing through 1999 and beyond, Cortex was using the
marks MagaCell, MagAcrolein, MagaCharc, MagaPhase and
MagaBeads on its various products. (Karp Test. Depo., Exh.
Nos. 3-6, 8, 14 and 16.)
On August 28, 1998, Roche filed its application to
register MAGNA PURE in International Class 1; this
application eventually matured (on November 6, 2001) into
Registration No. 2504968, the registration involved in
Cancellation No. 92040577. It appears that, prior to the
August 28, 1998 filing date of Roche’s trademark
8 In addition, both parties have attached, as exhibits to their
final briefs, certain documentary materials which had not been
made of record at trial. Exhibits and other evidentiary
materials attached to a party’s brief on the case can be given no
consideration unless they were properly made of record during
trial. See TBMP §704.05(b)(2d ed. rev. 2004) and cases cited
therein. Likewise, we give no consideration to Roche’s
statements (at page 35 of its brief) regarding the alleged
existence of certain third-party registrations and applications
which were not made of record at trial. See TBMP §704.06(b)(2d
ed. rev. 2004) and cases cited therein.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
10
application, Roche had filed three patent applications (Nos.
6,214,979, 5,487,972 and 5,804,375), in each of which a
reference is made to Cortex Biochem and its MagaCell
product. (Cortex September 4, 2002 Notice of Reliance.)9
In October 1999, Roche made its first actual use of its
MAGNA PURE mark on goods in Classes 1, 5, 9 and 10.
(Sheridan 11/26/02 Depo. at 12-14, 21-22.) On March 10,
2000, Roche filed an intent-to-use application to register
MAGNA PURE in Classes 5, 9 and 10. (Serial No. 75941114,
the application involved in Opposition No. 91123244.)
On or about January 23, 2001, Cortex gained actual
knowledge of Roche’s MAGNA PURE mark via a search of the
Trademark Office records. (Karp Test. Depo. at 138.) At
around the same time (January 2001), but subsequent to its
acquisition of knowledge of Roche’s MAGNA PURE mark, Cortex
adopted and began using the mark MAGAPURE for a new product.
(Karp Disc. Depo. at 111; Karp Test. Depo. at 138-40.)
On April 17, 2001, Roche’s intent-to-use application to
register MAGNA PURE in Classes 5, 9 and 10 (Serial No.
75941114) was published for opposition. By May 2001, Cortex
had become aware of apparent instances of actual confusion
between its MAGAPURE mark and Roche’s MAGNA PURE mark.
9 Inasmuch as these patents refer only to one of Cortex’s marks,
i.e., MagaCell, they do not support Cortex’s contention that
Roche was aware of Cortex’s asserted family of marks at the time
it filed the patent applications.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
11
(Karp Test. Depo. at 146.) On June 12, 2001, Cortex filed
its notice of opposition to Roche’s intent-to-use
application Serial No. 75941114. On July 24, 2001, Cortex
filed an application to register the mark MAGAPURE. (Serial
No. 76289333, the application involved in Opposition No.
91159233.)
In September 2001, Roche’s attorneys sent a cease-and-
desist letter to Cortex’s attorneys regarding Cortex’s use
of the MAGAPURE mark, claiming priority and likelihood of
confusion with its MAGNA PURE mark. Subsequent to its
receipt of that letter, Cortex adopted and began using
MAGAZORB as a replacement mark for MAGAPURE, apparently
pending the outcome of these proceedings. (Karp Test. Depo.
at 179, 182-84.)
II. OPPOSITION NO. 91123244 and CANCELLATION NO. 92041577
In Opposition No. 91123244, Cortex opposes Roche’s
application to register MAGNA PURE for goods in Classes 5, 9
and 10. In Cancellation No. 92040577, Cortex petitions to
cancel Roche’s registration of MAGNA PURE for goods in Class
1. In both cases, Cortex asserts a Section 2(d) claim based
on Cortex’s asserted ownership of a family of MAGA-prefix
marks.
The evidence of record establishes, and Roche does not
dispute, that Cortex uses various MAGA-prefix marks on
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
12
various types of magnetizable particles used for immuno
separation, cell separation, and DNA/RNA separation. In
view thereof, we find that Cortex has standing to bring
these opposition and cancellation proceedings. Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Cortex’s Section 2(d) claim in Opposition No. 91123244
and in Cancellation No. 92040577 is based on its alleged
ownership and prior use of a family of MAGA- prefix marks,
identified as “one word comprised of the arbitrary term MAGA
and the generic endings.” (Notice of Opposition at
paragraph 7; Petition to Cancel at paragraph 4.) That is,
Cortex’s Section 2(d) claim is not based on its ownership of
any of its individual marks, or on the alleged existence of
a likelihood of confusion as between Roche’s MAGNA PURE mark
and any of those individual marks. Rather, Cortex’s Section
2(d) claim is that Roche’s MAGNA PURE mark is confusingly
similar to Cortex’s previously-used family of MAGA- prefix
marks, such that purchasers are likely to mistakenly assume
that products sold under the mark MAGNA PURE are part of
Cortex’s line of products sold under its MAGA family of
marks.
Thus, to establish its Section 2(d) priority in this
case, Cortex must prove that it owns a family of marks, and
that such family was in existence and recognized by
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
13
purchasers at least as early as the earliest date on which
Roche can rely for priority purposes.10 See Han Beauty Inc.
v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559
(Fed. Cir. 2001)(substantial evidence supports Board’s
finding that plaintiff’s family of marks “exists and arose
before [defendant’s] filing date”); and Marion Laboratories
Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218
(TTAB 1988)(plaintiff asserting family of marks must prove
“first, that prior to the entry into the field of the
opponent’s mark, the marks containing the claimed ‘family’
10 In the usual Section 2(d) opposition proceeding before the
Board, priority is not an issue if the plaintiff has proven its
ownership of extant registration(s) of its pleaded mark(s). See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). In this case, it appears that
registrations of the marks MAGACELL, MAGACHARC, MAGACROLEIN,
MAGAPHASE and MAGABEADS were issued to Cortex subsequent to the
institution of these proceedings. However, Cortex did not
properly make these registrations of record, and we therefore
have given them no consideration. See Trademark Rule 2.122(d),
37 C.F.R. §2.122(d). Even if we were to consider them, however,
our analysis and decision would not be affected, because Cortex
is not relying on any individual mark (registered or otherwise)
but instead is relying solely on its ownership of an asserted
family of marks. For that reason, priority, i.e., whether Cortex
owned a family of marks prior to Roche’s earliest priority
date(s), is an issue to be decided in this opposition proceeding.
In any cancellation proceeding, priority is an issue. Again,
however, because Cortex is relying on its asserted family of
marks rather than on any individual mark, the priority dispute in
this cancellation proceeding requires us to determine whether
Cortex’s acquisition of rights in its asserted family of marks
predates the earliest date on which Roche may rely for priority
purposes.
Thus, the priority issue in Opposition No. 91123244 and in
Cancellation No. 92040577, in both of which cases Cortex is the
plaintiff, is the same. As discussed infra, however, because
Cortex is the defendant in the third of these consolidated
proceedings, Opposition No. 91159203, it is not entitled to rely
on the “family of marks” doctrine to establish its priority in
that case.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
14
feature or at least a substantial number of them, were used
and promoted together by the proponent in such a manner as
to create public recognition coupled with an association of
common origin predicated on the ‘family’ feature…”).
With respect to Roche’s rights in its MAGNA PURE mark
for the Class 1 goods identified in its Registration No.
2504968 (the registration involved in Cancellation No.
92040577), the earliest date upon which Roche may rely for
priority purposes is the filing date of the application
which matured into that registration, i.e. August 28, 1998.
Trademark Act Section 7(c), 15 U.S.C. 1057(c). With respect
to Roche’s rights in its MAGNA PURE mark for the Class 5,
Class 9 and Class 10 goods identified in its application
Serial No. 75941114 (the application involved in Opposition
No. 91123244), the evidence of record clearly establishes
that Roche began using the mark on those goods in October
1999, and therefore may rely on that date for priority
purposes in this case. (Sheridan 11/26/02 Depo. at 12-14,
21-22.)
Having determined that Roche’s earliest priority dates
are August 28, 1998 (in Class 1) and October 1999 (in
Classes 5, 9 and 10), we turn next to the question of
whether Cortex, prior to those dates, had developed and
acquired rights in a family of MAGA- prefix marks and thus
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
15
may rely on such family to establish its Section 2(d)
priority in this case.
The family of marks doctrine has been explained by our
primary reviewing court as follows:
A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that
the public associates not only the individual
marks, but the common characteristic of the
family, with the trademark owner. Simply using
a series of similar marks does not of itself
establish the existence of a family. There must
be a recognition among the purchasing public
that the common characteristic is indicative of
a common origin of the goods. … Recognition of
the family is achieved when the pattern of usage
of the common element is sufficient to be
indicative of the origin of the family. It is
thus necessary to consider the use,
advertisement, and distinctiveness of the marks,
including assessment of the contribution of the
common feature to the recognition of the marks
as of common origin.
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891-92 (Fed. Cir. 1991). (Citations
omitted.) The Board has held that, in determining whether a
family of marks exists, we must examine (1) the pattern of
usage, i.e., the manner in which, and the extent to which,
the marks have been used in the sale and advertising of the
plaintiff’s goods or services, and (2) the distinctiveness
of the family “surname.” Marion Laboratories Inc. v.
Biochemical/Diagnostics Inc., 6 USPQ2d 1215, 1218 (TTAB
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
16
1988). See also McCarthy on Trademarks and Unfair
Competition (4th ed. 11/04) at §23:61.
We consider first the question of the distinctiveness
of the term MAGA, which Cortex alleges to be the surname of
its claimed family of marks. To establish a family of
marks, the plaintiff must prove “that the ‘family’ feature
[common to each of the marks] is distinctive (i.e. not
descriptive or highly suggestive or so commonly used in the
trade that it cannot function as the distinguishing feature
of any party’s mark.” Marion Laboratories Inc. v.
Biochemical/Diagnostics Inc., supra, 6 USPQ2d at 1218; see
also American Standard Inc. v. Scott & Fetzer Company, 200
USPQ 457, 461 (TTAB 1978).
Roche argues that MAGA is merely descriptive as applied
to Cortex’s goods, that it has not acquired distinctiveness,
and that it therefore cannot serve as the basis for Cortex’s
claimed family of marks. More specifically, Roche contends
that Cortex’s products are, in essence, magnetizable
particles used for magnetic separation, and that Cortex
adopted MAGA as the prefix to its marks specifically because
it describes this “magnetizable” feature of the goods.
Roche cites to Cortex’s answer to Roche’s Interrogatory No.
5.f, in which Cortex stated that “Cortex Biochem adopted the
MAGA mark because it contained the first three letters of
the word ‘Magnetic’ which was a principal property of the
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
17
Magnetic Separation Products.” (Roche’s 11/25/02 Notice of
Reliance, RDG-1633.) Roche contends that this statement of
Cortex’s intent in adopting the mark is evidence of the mere
descriptiveness of the family feature of Cortex’s marks.
Additionally, Roche relies on the testimony of Cortex’s
technical and marketing consultant, William Cook, who
consulted with Cortex concerning the launch of Cortex’s
MAGAPURE product in late 2000 and early 2001. He testified
that, when he and Cortex’s principals were considering what
to name Cortex’s new MAGAPURE product, the prefix MAGA was
chosen because it “was an extension of the Maga product line
which obviously was based on these particles being
magnetic.” (Cook depo. at 8.) He also testified that he
thinks of “magnetizable particles” when he sees MAGA, that
he believes MAGA is “descriptive” of magnetic properties or
magnetizable particles, and that he assumes (without
firsthand knowledge) that this is the reason Cortex
initially adopted the MAGA prefix for its marks. (Id. At
23-24, 28-30.)
We are not persuaded that this evidence establishes
that MAGA is merely descriptive of Cortex’s goods. At most,
it establishes that MAGA is suggestive of the goods.
Although MAGA shares the first three letters of “magnetic”
or “magnetizable,” the prefix adopted by Cortex is MAGA, not
MAG. There is no evidence that MAGA and MAG are viewed in
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
18
the industry as equivalent terms, nor any evidence that
anyone besides Cortex uses MAGA (as opposed to MAG) in
connection with magnetizable particles.
Roche relies heavily on Cortex’s statement of its
intention in adopting MAGA, as expressed in Cortex’s answer
to Roche's interrogatory, i.e., that it “adopted the MAGA
mark because it contained the first three letters of the
word ‘Magnetic’ which was a principal property of the
Magnetic Separation Products”). Even assuming that Cortex’s
intent in adopting the term is relevant to our mere
descriptiveness determination, and that this interrogatory
answer is an admission of Cortex’s intent, we are not
persuaded that the answer is evidence of mere
descriptiveness. At most, it shows that Cortex wanted its
mark to suggest that the goods were magnetizable particles.
We note as well that during his testimony deposition,
Cortex’s president Leonard Karp testified as follows
regarding Cortex’s intent in adopting the MAGA mark:
In the beginning we wanted something that – we
tried things like mag, and it just didn’t sound
right. … M-a-g, because we thought that would be
– tell people at least that it was a product
that was a magnetic solid phase, but we couldn’t
find one that sounded correctly, so we came up
with Maga which flowed nicely and had a good
phonetic sound to it.
(Karp. Depo. at 13.) Likewise in his discovery deposition
(made of record by Roche), Mr. Karp testified that “‘Mag’
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
19
was the original name that we thought would represent the
magnetic properties, and we used the Maga to phonetically
make it more pleasing.” (Karp Disc. Depo. at 36.) As for
Mr. Cook’s testimony (quoted above), inasmuch as he is not
shown to be an expert in trademark law or aware of the
nuances of trademark law terminology such as the term
“descriptive,” we find that his use of that term in relation
to Cortex’s goods is entitled to no probative value.
In short, the evidence of record fails to establish
that MAGA (as opposed to MAG) is merely descriptive of
Cortex’s goods, or that it is anything more than suggestive
of the magnetic properties of those goods.
Having found that MAGA is distinctive as applied to
Cortex’s goods, and that it thus may serve as the basis for
Cortex’s claimed family of marks, we turn now to the
question of whether whether Cortex has established that such
a family of MAGA-prefix marks in fact exists and that it
came into being prior to Roche’s August 1998 and October
1999 dates of first use. To answer this question, we must
look to the manner in which, and also the extent to which,
Cortex used the marks during the period in question.11 As
the Board has previously noted:
11 Both Cortex and Roche have relied on evidence showing Cortex’s
manner of using its marks which post-dates Roche’s August 1998
and October 1999 priority dates in this case. Such evidence is
not relevant to the issue at hand, which is whether Cortex
already had a family of MAGA-prefix marks as of Roche’s earliest
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
20
In order to establish or achieve a “family” of
marks, it must be demonstrated that a number of
the members of said “family” have been promoted
together in such a manner and to such an extent
over a period of years as to create recognition
in the pertinent field as well as an association
of common origin predicated on the “family”
feature. … The only way that this can be
ascertained is to place oneself in the position
of a purchaser or prospective purchaser of [the
plaintiff’s] products and attempt to understand
just what would be the normal reaction to [the
plaintiff’s] advertising and promotional
material as it is encountered in the
marketplace.
DAP, Inc. v. Flex-O-Glass, Inc., 196 USPQ 438, 443 (1976).
And, as Professor McCarthy has noted, the existence of a
family of marks “is a matter of fact, not supposition.”
McCarthy, supra at §23:61.
It appears from the record that prior to Roche’s entry
into the field, Cortex was spending approximately $30,000
annually to advertise and promote its MAGA marks, “directly
or indirectly.” (Cortex’s answer to Roche’s Interrogatory
No. 9; Karp Test. Depo., Exh. Nos. 10, 11, 15, 18-22. This
does not reflect expenditures sufficient to support the
priority dates. In particular, both parties rely on printouts
from Cortex’s website, which does not appear to have come online
until sometime in 2001. (See Karp Test. Depo., Exh. 22. These
invoices for advertising and promotional expenditures for the
year 2001 are the first mention of expenditures for development
of Cortex’s website. Also, the content on the website bears a
copyright notice dated 2001. The website printouts, and any
documents in the record which on their faces include references
to the website or the website URL address, are not probative
evidence on the question of whether Cortex had a family of marks
in August 1998 or October 1999, Roche’s priority dates, and we
have not considered them in reaching our decision.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
21
establishment of a family of marks. More importantly,
however, Cortex has failed to make of record any copies or
samples of its actual advertisements which appeared prior to
the 1998-1999 time frame we are interested in. We therefore
have no way of determining how the MAGA-prefix marks would
have been perceived by purchasers and prospective purchasers
encountering the advertisements. The absence from the
record of any samples of Cortex’s actual advertisements is
surprising, in view of the importance assigned by our case
law to the consideration of such advertisements in the
determination of whether a family of marks exists. Witco
Chemical Co. v. Chemische Werke Witten G.m.b.H., 158 USPQ
157 (TTAB 1968)(“we look primarily to the nature and
character of opposer’s advertising and promotional material”
in determining whether a family of marks exists). Likewise,
although Cortex asserts that it has displayed its marks in
its booths at trade shows over the years, the only
photographic or other evidence showing the manner of such
display is from a trade show which occurred in June 2001,
after Roche’s first use of its MAGNA PURE mark.12
As for the evidence which Cortex in fact has submitted,
much of it does not support the family of marks claim.
Cortex’s product labels (Karp. Test. Depo., Exh. No. 26)
12 Karp Test. Depo., Exh. No. 23. This photograph shows only the
marks MAGAPHASE and MAGAPURE displayed together at Cortex’s trade
show booth.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
22
each show use of a MAGA-prefix mark along with the Cortex
Biochem trade name. However, we cannot determine whether
these labels were in use prior to 1998-1999, and in any
event each label bears only one of the MAGA-prefix marks,
rather than displaying two or more of the marks conjointly.
Cortex’s November 1996 Business Plan includes mention of
various Maga-prefix marks, but they are buried at pages 13-
14 of the 30-page document. Moreover, there is no evidence
that this Business Plan was directed to or encountered by
purchasers or prospective purchasers of Cortex’s goods.
Exhibit No. 12 to the Karp Testimony Deposition is a reprint
of an article authored by Cortex officers and/or employees
which appeared in the July 1995 issue of Genetic Engineering
News. Buried within the article are isolated references to
Cortex’s MAGAPHASE, MAGACELL and MAGACHARC products, but
also references to various products marketed by other
companies.
Cortex’s 1992-93 Product List (Karp Test. Depo., Exh.
7), its 1994-1995 Product List (Karp Test. Depo., Exh. 9),
and its 1999 Product Reference Manual (Karp Test. Depo.,
Exh. No. 2) all include what could be construed, for the
most part, to be valid “family of marks” usage. The 1992-
1993 product list includes listings for various types of
“MagaCell” and “MagaRose” paramagnetic particles, as well as
“MagaRack” and “MagaBlock” accessory products. On page 1 of
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
23
the product list, below the heading but above the listing of
the various MagaCell and MagaRose products, the following
introductory text is displayed:
MagaCell™ is paramagnetic iron-oxide entrapped
Cellulose.
MagaRose™ is paramagnetic iron-oxide entrapped
spherical agarose beads and particulate.
In the 1994-1995 product list (Karp Test. Depo., Exh. 9),
the index identifies one section of the list as “MagaPhase
Magnetizable Particles.” That section (at page 1), lists
various types of paramagnetic particles called MagaCell,
MagAcrolein, MagaCharc and MagneTite. The heading on this
page includes the following introductory text:
MagaCell™ is paramagnetic cellulose encapsulated
iron-oxide.
MagAcrolein™ is paramagnetic polyacrolein
encapsulated iron-oxide.
MagaCharc™ is paramagnetic
polyacrylamide/charcoal encapsulated iron-oxide.
MagneTite™ is precipitated paramagnetic iron-
oxide, uncoated.
The 1999 Product Reference Manual has a section entitled
“MAGAPHASE™ PRODUCTS” and “MAGAPHASE™ PRODUCT LINE” in which
are listed, under separate subheadings and with explanatory
paragraphs, the marks MagaCell, MagAcrolein, MagaCharc,
MagaPhase and MagaBeads.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
24
As stated above, for the most part this constitutes
acceptable “family of mark” usage. However, we note that
the 1992-93 and 1994-95 product lists display the MAGA-
prefix marks intermingled among other “non-family” marks.
Also, in the 1994-95 product list, two of the four claimed
“family” marks, MagAcrolein and MagneTite, do not follow the
claimed “family” pattern of having a MAGA-prefix; they
instead use the prefixes “Mag” and “Magne.” The usage of a
“Mag” prefix rather than a “Maga” prefix in the MagAcrolein
mark also appears in the 1999 Product Reference Manual, and
it appears to continue to this day. Such usage detracts
from Cortex’s claim of a family of marks.
More significantly, however, even if we assume that the
1992-93, 1994-95 and 1999 documents demonstrated ideal
“family of marks” usage, their probative value is limited in
this case because, with the exception of the 1994-95 product
list, we cannot determine how many of them were distributed
to purchasers and potential purchasers. Mr. Karp testified
that 2,500 of the 1994-95 product lists were distributed
during the 1994-95 period, but there is no testimony or
other evidence showing how many of the 1992-93 lists or the
1999 Product Reference Manuals were distributed. Mr. Karp
testified that these materials would have been sent to all
of the clients on Cortex’s client list, but we have no
testimony or other evidence as to how many such clients
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
25
Cortex had in the years prior to 1998-1999. The only client
list of record is the one which was current as of the August
2002 testimony deposition of Leonard Karp. We thus have no
evidentiary basis for finding, on this record, that these
materials were so extensively distributed to and widely
encountered by purchasers in the marketplace prior to
Roche’s entry into the field as to create in purchasers’
minds a recognition that Cortex owned a family of MAGA-
prefix marks. See Polaroid Corp. v. Richard Mfg. Co., 341
F.2d 150, 144 USPQ 419 (CCPA 1965); Varian Associates, Inc.
v. Leybold-Heraeus Gesellschaft mit Beschranktor Haftung,
219 USPQ 829 (TTAB 1983); and Raypak, Inc. v. Dunham Busch
Inc., 216 USPQ 1012 (TTAB 1982).
Additionally, Cortex’s evidence regarding its pre-1998
sales figures for products bearing a MAGA-prefix mark does
little to support a finding that a family of such marks
existed during the period in question. Mr. Karp testified
that Cortex’s sales of products under its MAGA-prefix marks
in the years 1990-1996 ranged from $50,000 to $400,000
annually, but he admitted that these were merely
“guesstimates” and that the actual sales numbers could be
off by half or twice as much. This testimony is equivocal,
to say the least, and it does not persuade us that Cortex’s
sales were substantial enough to create in the minds of
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
26
purchasers a recognition of the alleged family of marks.13
Moreover, there is no testimony or other evidence at all as
to the amounts of Cortex’s sales of MAGA products in the
years 1997, 1998, 1999 and 2000.
Cortex relies heavily on the August 2002 testimony
deposition of Dr. Jesus Ching to support its family of marks
claim. Dr. Ching is a research and development manager for
Cepheid Corporation, and a purchaser of the relevant goods
who has made purchases from both Roche and Cortex. We will
quote from his testimony at length:
On direct examination:
Q. What is the nature of the relationship
that you have with Cortex Biochem?
A. A few years ago I gave them a call in
terms of looking at what services they might be
able to provide in terms of synthetic work of
beads and whatnot, and the relationship
progressed to the point where we were working
with them on purification of the nucleic acids
or isolation nucleic acids. We had tried to use
some of our technologies and also have worked
with them on some of their technologies
pertaining to nucleic acid isolation.
Q. Are you familiar with the product line of
Cortex Biochem?
A. I am loosely familiar with their product
line, yes.
13 Also, we cannot put these sales numbers in perspective because
there is no evidence from which we might determine what is
Cortex’s share of the relevant market for these goods. Roche’s
sales numbers for its competing MAGNA PURE products were
submitted under seal and will not be revealed here, but suffice
it to say that they dwarf Cortex’s sales, even though Roche’s
goods have been on the market for a much shorter time than
Cortex’s goods have been available.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
27
Q. Is there any method in which you would
identify a particular Cortex Biochem product in
the marketplace as opposed to some other?
A. I’m sorry. Could you repeat that
question?
Q. Sure. Is there any particular method or
designation that you recognize as indiciating a
Cortex Biochem product?
A. Oh, I see. Their magnetic particles that
they have, yes, and their manufacturing of
proteins or enzymes or what have you.
Q. And is there something about their
product names that evidenced to you that it is a
Cortex Biochem product?
A. Yes. Their Maga Particles or MagaZorb or
Maga Pure.
Q. Would you spell that Maga part?
A. I think it is M-a-g-a.
Q. So is it when you see a Maga connected
with some other description of the enzyme, is
that what indicates to you Cortex Biochem
product?
A. Yes. That was my original
interpretation.
Q. Do you know what some of the Maga
products are that Cortex manufactures?
A. Yes. I understand that they made – I’m
more familiar with their nucleic acid isolation
products, but I do understand that they make
other products of other particles proactivated
with different things on them.
Q. Do you know some of the names of their
products?
A. No.
Q. Have you ever heard of a MagaZorb?
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
28
A. Yes, I have.
Q. What is MagaZorb as far as you
understand?
A. MagaZorb was a particle that we had used
to or evaluated for the isolation of nucleic
acids. At the time all I knew it was a magnetic
particle, and it had a nucleic acid isolation
material on it.
Q. Are you familiar with MagaCell particles?
A. I’ve heard of it, but I’m not technically
familiar with it.
Q. How about MagAcrolein?
A. I am familiar with it, but not
technically.
Q. How about MagaCharc?
A. No.
Q. Did you have an occasion to make a
purchase of a product titled “MagaPure”?
A. No.
Q. Were you ever aware of a product named
MagaPure?
A. Yes.
Q. Would you describe to me what that – how
it was that you were aware of MagaPure?
A. About two years ago we received a flyer
for an invitation I think from Roche to attend
their product launch with their purification
system high through-put machines, and I had sent
one of my associates over to attend a seminar
and to look at their technology and to see if
there was any compatibility with our needs, and
my assumption was that that material that they
were using from Roche was not too dissimilar
from what Cortex was doing because at the time
we were working with Cortex, and I had commented
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
29
to Matt at Cortex and congratulating him because
he had mentioned that he was working with some
other larger companies. I said, “So, you guys
have your products in the Roche product line
now,” and Matt did not say anything. And then I
left it at that. And I don’t think we discussed
it any further from that point. Maybe once or
twice when he mentioned to me that they did not
have a deal with Roche and that they were not
using their products.
Q. And what was it about the advertisement
or the subsequent discussion that you had with
Roche that made you believe that that could
possibly be a connection with Cortex Biochem?
A. It was the name, the M-a-g-n-a, and I had
thought that maybe because Roche did not have a
product prior that point that was named like
that, so but because we were working with Cortex
already, and I knew that they had that name on
their products, I had just naturally thought
that maybe it was Cortex’s products that was in
the Roche instrumentation.
Q. So you have an association between the
Maga, M-a-g-a, marks and Cortex Biochem?
A. Yes.
Q. And because of the similarities between
the two, you thought that that could perhaps be
a Cortex Biochem product that was marketed by
Roche?
A. Correct. I mean it was a fairly honest
mistake, I guess, on my part.
Q. What experience had you had with Cortex
regarding the nucleic acid isolation products?
A. Well, like I said, we started working
with them a few years ago, and we have been
working on various components of nucleic acid
purification, and one of the things that we were
working on was MagaZorb, and we were going into
some rather detailed experimentation to look at
their properties and whatnot.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
30
Q. What’s the nature of your current
relationship with Cortex Biochem?
A. We are currently working with them on
possibly getting their technology, their nuclear
acid technology into our company. 14
On cross-examination:
Q. In your testimony you indicated that you
have worked with MagaZorb; is that correct, sir?
A. That’s correct.
Q. What other Cortex products have you
worked with? And if you can identify those
products by name.
A. The MagaZorb, yes, and then whatever
product that was prior to the MagaZorb which was
I guess the MagaPure I had worked with them on.
Q. So you had worked with both MagaPure and
then MagaZorb?
A. Yes. And then there was some other
products that I worked with them on that are not
in their product line that are more into R and D
phase.
Q. Okay. But is it fair to say when you
hear MagaPure and MagaZorb, you relate that to
Cortex; is that correct, sir?
A. Yes.
Q. And that’s based on your experience in
working with those two products; is that
correct?
A. Yes.
14 Roche argues that Dr. Ching is a biased witness, in view of the
fact that his company, Cepheid, is “currently working with
[Cortex] on possibly getting their technology, their nuclear acid
technology into our company.” Because we find Dr. Ching’s
testimony to be of little probative value on its face (see
discussion infra), we need not reach the issue of whether his
testimony also is biased.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
31
Q. And, sir, the source of your confusion
that you’ve testified about today, that relates
to Magna Pure, Roche’s Magna Pure?
A. Yes.
Q. And Cortex’s MagaPure; is that correct?
A. Yes.
On re-direct examination:
Q. You testified earlier that the reason
that you made an association with the Magna Pure
product that you saw from the Roche
advertisement was because you understood Cortex
to have the Maga line of products; is that
correct?
A. That’s correct.
Q. So it wasn’t so much that it was Magna
Pure versus MagaPure. It was more use of the
Magna versus the Maga; is that correct?
A. That’s correct.
On re-cross examination:
Q. And just one follow-up. In this line of
Maga products, sir, that you’ve testified about,
your experience is limited to MagaPure and
MagaZorb; is that fair to say?
A. In terms of my technical experience, yes.
Q. And in terms of use of Cortex products,
that your use would be limited to the MagaPure
and the MagaZorb?
A. No. I mean I’m familiar with their
technology in some other areas that I’ve worked
with them on, and they are not current product
lines.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
32
This testimony does little to support a finding that
Cortex already owned a family of MAGA-prefix marks as of
Roche’s August 1998 and October 1999 priority dates. We
note first that the only Cortex marks that Dr. Ching could
identify without prompting and leading from Cortex’s counsel
were MagaPure and MagaZorb (which actually are two marks
used on a single, renamed product – see discussion supra at
p. 11), both of which were adopted by Cortex subsequent to
Roche’s 1998 and 1999 priority dates. We cannot conclude
from this testimony that Dr. Ching was even aware of Cortex
in 1998 or 1999, much less that he was aware of any family
of MAGA-prefix marks at that time.
Second, Dr. Ching testified that he received the
announcement from Roche regarding Roche’s MAGNA PURE product
“two years ago,” which, as measured from the date of his
deposition, would be in August 2000. Again, even if we
assume that he was aware of Cortex’s asserted family of
MAGA-prefix marks at that time, there is no basis for
concluding that he was aware of the asserted family in
August 1998 or October 1999, which are the dates at issue
here. We simply cannot determine, from this testimony, when
(if ever) Dr. Ching actually became aware of the existence
of the asserted family of marks.
Cortex also relies on the testimony of William Cook,
who was a consultant to Cortex from December 2000 through
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
33
July 2001 in the development and marketing of its nucleic
acid purification technology and product, including Cortex’s
decision to adopt the mark MAGAPURE for that product in
January 2001.15 Specifically, Cortex relies on the
following testimony:
Q. Based on your extensive experience [20-30
years] in the biotech industry and with the
reagent market and to some extent in the DNA-
isolation market, is it your understanding that
Cortex had developed a notoriety for its Maga
marks?
A. I think Cortex was very well-known for
that product line and that mark.
(Cook Depo. at 17.) This testimony does not support a
finding that Cortex owned a family of MAGA-prefix marks as
of August 1998 or October 1999. Moreover, when he was asked
by Cortex’s counsel during direct examination to identify
the Cortex products with which he was familiar prior to
entering into his consulting contract with Cortex in
December 2000, he testified as follows:
Q. Were you familiar with the names of those
product lines?
15 Roche argues that because Mr. Cook is a long-time personal
friend of Cortex’s principals, and because he was closely
involved in the development and marketing of Cortex’s MagaPure
product, he is a biased witness whose testimony should be
discounted. As was the case with Dr. Ching, however, we find
(see infra) that Mr. Cook’s testimony on its face does little to
support a finding that Cortex owned a family of marks prior to
Roche’s entry into the marketplace. Accordingly, we need not
reach the bias issue.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
34
A. Yes.
Q. What were some of those?
A. MagaPhase, for example.
Q. Any others?
A. There was – probably that was the one
that was the lead product and the one I’m most
familiar with. I probably can’t recall any
others just offhand.
Q. Does MagaCell sound familiar?
A. Yes.
Q. MagAcrolein?
A. I’ve heard of it subsequently, but I
hadn’t heard of it before.
Q. MagaBeads?
A. Yeah.
(Cook Depo. at 7.) Although Mr. Cook also testified (at
pages 15-16) that Cortex adopted the MAGAPURE mark in order
to extend its “well-known” line of MAGA-prefix marks and
products, we find that Mr. Cook’s inability to name without
prompting any of Cortex’s MAGA-prefix marks (except for one)
belies Cortex’s claim that it owned a family of marks in
1998 and 1999. His testimony certainly cannot be deemed to
support a finding that relevant purchasers in general were
aware of any such family at the time in question.
To summarize, we find that Cortex’s sales and its
expenditures on advertising and promotion of its alleged
family of marks prior to Roche’s August 1998 and October
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
35
1999 priority dates were meager, and certainly were
insufficient to support a finding that Cortex’s MAGA-prefix
marks were recognized as a family of marks by relevant
purchasers at that time. Moreover, we have no samples or
copies of the actual advertisements or trade show displays,
which precludes us from stepping into the shoes of
purchasers and gauging their likely reaction to the manner
in which Cortex used the marks. Cortex’s product lists are
in the record, and they are some evidence of “family” usage
of the MAGA-prefix marks. However, we cannot conclude on
this record that these lists were so extensively distributed
by Cortex, or so widely encountered by purchasers, as to
give rise to a family of marks. We note as well that at
least two of the marks used and displayed by Cortex in these
pre-1999 product lists, MagAcrolein and MagneTite
(especially the latter), do not follow the claimed “family”
pattern of using “Maga-” as a prefix; instead, they use
“Mag-” and “Magne-” as prefixes. Finally, neither of
Cortex’s witnesses, Dr. Ching or Mr. Cook, could identify,
without prompting and leading by Cortex’s counsel, more than
one or two of the alleged family of marks, and the two marks
identified by Dr. Ching both were adopted by Cortex after
Roche’s priority dates.
After careful review of the evidentiary record, we find
that Cortex has failed to meet its burden of proving by a
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
36
preponderance of the evidence that it owned a family of
MAGA-prefix marks prior to Roche’s August 1998 and October
1999 priority dates. Again, as noted by Professor McCarthy,
a finding that a family of marks exists “is a matter of
fact, not supposition.” Cortex’s factual showing in this
case is insufficient to support a finding that its use of
its MAGA-prefix marks had risen to the level of a family of
marks prior to Roche’s entry into the field.16
Because Cortex’s Section 2(d) claim in Opposition No.
91123244 and in Cancellation No. 92040577 is based on its
asserted ownership of a family of marks prior to Roche’s
entry into the field, and because we have found that no such
family existed, Cortex’s Section 2(d) claims in Opposition
No. 91123244 and in Cancellation No. 92040577 fail for lack
of priority. Because Cortex has not established its Section
2(d) priority as to the claimed family of marks, we need not
reach the question of whether a likelihood of confusion
16 In finding that Cortex has failed to establish that it owned a
family of marks as of Roche’s entry into the marketplace, we are
not persuaded by Roche’s argument that Cortex does not own a
family of marks because it “instead” has a “family of products”
which are marketed under the house mark “MagaPhase.” If a family
of marks is shown to exist, then it is not inconsistent to also
find that the family marks are used on a line of products, or to
find that they also are used in connection with a house mark.
See, e.g., Han Beauty Inc. v. Alberto-Culver Co., supra (family
of TRES- marks used on a line of products, all of which also bore
the house mark TRESEMME). Here, Cortex has failed to prove that
its MAGA-prefix marks rise to the level of a family of marks.
That it has a family of products or uses a house mark as well is
not dispositive.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
37
exists as between Cortex’s asserted family of marks and
Roche’s MAGNA PURE mark.17
III. OPPOSITION NO. 91159233
The parties have joined in a request that we decide
Opposition No. 91159233 at this time, based on the evidence
made of record in Opposition No. 91123244 and Cancellation
No. 920430577. (Roche’s Brief at 42-43; Cortex Reply Brief
at 8.) In Opposition No. 91159233, Roche opposes
registration of Cortex’s MAGAPURE mark on the grounds that
Roche is the senior user of its MAGNA PURE mark as well as
the owner of a registration of such mark, and that Cortex’s
MAGAPURE mark is likely to cause confusion therewith.
In view of Roche’s registration of its MAGNA PURE mark
and its proven prior use of said mark (beginning in October
1999) vis-à-vis Cortex’s first use (in January 2001) of the
MAGAPURE mark which is the subject of the opposed
application, we find that Roche has both standing to oppose
and Section 2(d) priority. We also find that confusion
between Roche’s MAGNA PURE mark and Cortex’s MAGAPURE mark
is likely. Roche’s MAGNA PURE mark, although not
17 Cortex has not alleged or argued a Section 2(d) claim based on
any of its individual MAGA-prefix marks that were in use prior to
Roche’s priority dates (MagaPhase, MagaCell, MagaCharc,
MagAcrolein and MagaBeads). Even if it had, we would find that
Roche’s MAGNA PURE mark and those individual Cortex marks are
sufficiently dissimilar, when viewed in their entireties, to
preclude a finding of likelihood of confusion.
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
38
confusingly similar to Cortex’s other MAGA-prefix marks when
viewed in their entireties (see supra at footnote 17), is
sufficiently similar to Cortex’s MAGAPURE mark that
confusion is likely to result from the parties’
contemporaneous use of the marks. Cortex has not contended
otherwise; indeed, Cortex has presented evidence which shows
that instances of actual confusion between these two marks
has already occurred. (Karp Test. Depo. at 118-120; Karp
Disc. Depo. at 116-118.)
Cortex’s sole argument with respect to this opposition
(in which it is the defendant) is that it is entitled to
prevail because it commenced use of its asserted family of
MAGA-prefix marks prior to Roche’s first use of its MAGNA
PURE mark. As discussed above, we have found that Cortex
had not established a family of marks prior to Roche’s first
use. Moreover, even if we had found that Cortex had
established such a family of marks, Cortex would not be
entitled to rely on such family in order to defeat Roche’s
Section 2(d) ground of opposition. It is settled that the
“family of marks” doctrine may not be used by the defendant
to establish priority in an inter partes proceeding before
the Board. See Hornblower & Weeks Inc. v. Hornblower &
Weeks Inc., 60 USPQ2d 1733 (TTAB 2001); Blansett Pharmacal
Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d 1373 (TTAB
Opp. No. 91123244; Canc. No. 92040577; Opp. No. 91159233
39
1992); and Baroid Drilling Fluids Inc. v. Sun Drilling
Products, 24 USPOQ2d 1048 (TTAB 1992).
Having found that Roche has standing to oppose, that
Roche is the prior user of its MAGNA PURE mark, and that a
likelihood of confusion exists between Roche’s MAGNA PURE
mark and Cortex’s MAGAPURE mark, we sustain Roche’s
opposition to registration of Cortex’s mark in Opposition
No. 91159233.
Decision: Cortex’s opposition to registration of
Roche’s MAGNA PURE mark in Opposition No. 91123244 is
dismissed. Cortex’s petition to cancel Roche’s registration
of MAGNA PURE in Cancellation No. 92040577 is denied.
Roche’s opposition to registration of Cortex’s MAGAPURE mark
in Opposition No. 91159233 is sustained.
