Alfacell Corp.v.Anticancer, Inc.

Trademark Trial and Appeal Board

Jun 22, 2004

No. 92032202 (T.T.A.B. Jun. 22, 2004)

Hearing:
March 4, 2004 Mailed: 6/22/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Alfacell Corporation
v.
Anticancer, Inc.
_____
Cancellation No. 92032202
_____
Mark H. Jay for Alfacell Corporation.
Jennifer Lee Taylor of Morrison & Foerster for Anticancer,
Inc.
_____
Before Sams, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Alfacell Corporation has petitioned to cancel a
registration owned by Anticancer, Inc. of the mark ONCASE
for “therapeutic compositions containing reagents for in
vivo anticancer use.”1 As grounds for cancellation under
Section 2(d) of the Trademark Act, petitioner alleges that
respondent’s mark, when used in connection with respondent’s
goods, so resembles petitioner’s previously used and
1 Registration No. 1,987,445, issued July 16, 1996; Section 8
affidavit filed and accepted.
THIS DECISION IS CITABLE
AS PRECEDENT OF THE
TTAB
Cancellation No. 92032202
2
registered mark ONCONASE for “pharmaceuticals, namely,
cancer-treating drugs,”2 as to be likely to cause confusion.
Respondent, in its answer, has denied the salient
allegations of likelihood of confusion. Respondent also has
set forth allegations labeled as “Affirmative Defenses,”
including that the petition is barred by laches.
The record consists of the pleadings; the file of the
involved registration; trial testimony, with related
exhibits, taken by each party; and excerpts from printed
publications and printouts of pages of various websites
retrieved from the Internet,3 all introduced by way of
respondent’s notices of reliance. The parties filed briefs,
and both were represented by counsel at an oral hearing held
before the Board.
The Parties
Both parties are involved in the development of cancer-
treating drugs. Petitioner’s drugs include one that is
delivered intravenously to a patient to treat mesothelioma,
a cancer caused by exposure to asbestos. According to the
2 Registration No. 1,651,885, issued July 23, 1991; renewed.
3 Internet evidence is not proper subject matter for introduction
by notice of reliance because the evidence is not self-
authenticating. As the Board has stated in the past, the element
of self-authentication cannot be presumed to be capable of being
satisfied by information obtained and printed out from the
Internet. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB
1998). See also TBMP §704.08 (2d ed. rev. 1, March 2004).
Because the parties have treated this evidence as if properly
made of record, however, we will deem it to be in the record by
stipulation of the parties.
Cancellation No. 92032202
3
testimony of Kuslima Shogen, petitioner’s founder and chief
executive officer, this drug, marketed under the mark
ONCONASE, is petitioner’s “flagship” product. The drug is
an enzyme derived from the Rana pipiens frog. Petitioner’s
product is in clinical trials being conducted at 33 clinical
sites.
Respondent’s product marketed under the mark ONCASE is
a protein which degrades methionine for treatment of human
cancers. Robert Hoffman, respondent’s president and chief
executive officer, testified that the ONCASE brand drug is
currently in pre-clinical trials in the United States, and
in clinical trials outside of this country. Respondent’s
product is administered intravenously in conjunction with
chemotherapy; this product, according to Dr. Hoffman’s
testimony, improves the efficacy of the chemotherapy used in
treating a variety of cancers.
As shown by the record, clinical trials of
pharmaceuticals, that is, trials in human beings, commence
only after an applicant’s Investigational New Drug
Application (“IND”) has been approved by the Food and Drug
Administration (“FDA”). Before even beginning the FDA
approval process, all drugs must undergo extensive pre-
clinical testing. After the pre-clinical testing is
complete, the developer of the drug files an IND seeking
approval for testing on humans. If the IND is approved, the
Cancellation No. 92032202
4
drug is tested on humans in three phases of clinical trials.
The phases may last for several years. It is only after
successful completion of all three phases of clinical trials
that the developer of the drug can file a New Drug
Application (“NDA”) with the FDA seeking approval of the new
drug for sales to the public. According to the record in
the present case, neither party has filed an NDA for its
respective drug herein.
ISSUES
There is no dispute regarding petitioner’s priority of
use of its mark ONCONASE in connection with its cancer
treatment drug. The parties’ respective testimony
establishes that petitioner’s first use of its mark ONCONASE
occurred in January, 1991, whereas respondent first used its
mark ONCASE in October 1995. Therefore, the only remaining
issues in this case are likelihood of confusion and laches.
Before turning to the merits of those issues, however, our
attention is directed to other subsidiary matters raised by
the parties.
The parties filed, earlier in this proceeding, cross
motions for partial summary judgment on the pleaded issue of
abandonment. The parties were at odds over whether
respondent’s activities under its mark constituted “use in
commerce” as contemplated under the Trademark Act. The
Board characterized the issue as follows: Whether, as a
Cancellation No. 92032202
5
matter of law, respondent’s shipments of its pharmaceutical
products for purposes of pre-clinical trials within the
United States, and for purposes of clinical trials in
foreign countries constitute “use in commerce.” In an order
dated September 24, 2002, the Board ruled in respondent’s
favor, entering partial summary judgment on the issue of
abandonment. The Board found that Congress intended the
term “use in commerce” to encompass shipments of
pharmaceuticals for pre-clinical trials in this country and
for clinical trials abroad prior to receiving FDA approval
as a reflection of common industry practice; that the “use
in commerce” Congress can regulate is the actual shipment of
the pharmaceuticals overseas; and that it is not necessary
that Congress be able to regulate the clinical testing. In
that interlocutory order, the Board indicated that “this
case will proceed solely on the issues of likelihood of
confusion and priority of use.”
In its brief on the case, petitioner raises for the
first time a claim that respondent’s use of its mark was
unlawful. Petitioner makes reference to this unpleaded
“subsidiary” issue as follows: “Whether the Board should
draw an adverse inference against [respondent] for the
improper refusal of its President to answer questions posed
during his trial testimony, and to consequently hold the
ONCASE registration invalid as having been improperly issued
Cancellation No. 92032202
6
on the basis of unlawful commerce.” (Brief, p. 5).
Petitioner contends that respondent “stonewalled highly
relevant cross-examination during its trial testimony and
the Board should draw a dispositive adverse inference
against it.” (Brief, p. 19).
In connection with its motion for summary judgment,
respondent submitted the declaration of Dr. Hoffman wherein
he indicated that respondent’s pharmaceutical marketed under
the mark ONCASE was shipped in commerce to Mexico for
clinical trials. The declaration was introduced later at
trial as an exhibit during Dr. Hoffman’s testimony
deposition. Petitioner now claims that respondent’s use was
unlawful because the FDA had not authorized shipment of
respondent’s drug for use in clinical trials. Petitioner
contends that it was entitled to cross examine Dr. Hoffman
about the legality of that alleged unauthorized exportation.
In view of Mr. Hoffman’s refusal to answer questions
regarding these shipments, petitioner urges that “the Board
should infer that the exportation of ONCASE from the United
States to Mexico preceded, and therefore took place in the
absence of, any authorization by the FDA to use the drug in
a clinical trial.” Petitioner concludes that the adverse
inference to be drawn from Dr. Hoffman’s refusal to answer
questions on these shipments is that respondent committed a
Cancellation No. 92032202
7
per se violation of 21 CFR §312.110.4 Petitioner asserts
that an IND has never been issued for the ONCASE brand drug,
and that respondent’s exportation of the drug for clinical
trials in Mexico occurred before the FDA had authorized
respondent to export the drug.
Respondent has objected to consideration of this issue,
maintaining that the issue was not added by petitioner in
any amended pleading, and that there has been no trial of
this issue. Respondent goes on to assert that, in any
event, the only evidence on this issue is the relevant
regulation itself, and that this evidence standing alone
falls far short of establishing that respondent’s use was
unlawful.
We find that petitioner’s claim of unlawful use is
untimely and, thus, we decline to consider it. Petitioner
knew of this possible claim for relief at least as early as
when respondent filed its motion for summary judgment which
was supported by the same affidavit of Dr. Hoffman upon
which petitioner now relies as a basis for its newly raised
claim. Yet petitioner did not raise this claim until its
brief on the case. Hilson Research Inc. v. Society for
4 The regulation provides, in relevant part, that an
investigational new drug intended for export from the United
States must comply with FDA regulations if an IND is in effect
for the drug, or if an IND is not in effect, then the FDA must
authorize shipment of the drug for use in any clinical
investigation.
Cancellation No. 92032202
8
Human Resource Management, 27 USPQ2d 1423, 1439-40 (TTAB
1993); and Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715, 1717 n. 5 (TTAB 1991). Petitioner simply
failed to promptly amend the petition for cancellation after
it learned of facts which, petitioner contends, establish
this additional claim. To allow petitioner to raise the
claim at this late juncture would be an unfair surprise to
respondent.
Further, given respondent’s clear and repeated
objections to the questions relating to the purported
unlawful use, there was neither an implied nor an explicit
trial of this issue. Fed. R. Civ. P. 15(b). The objections
were well taken inasmuch as the issue of unlawful use was
not pleaded and the Board, in its decision on the motion for
summary judgment, had explicitly stated that the only issues
for trial were priority and likelihood of confusion.
Therefore, the questions being posed went beyond the scope
of the issues in this case. Given that respondent’s
objections were well taken, we have not drawn an adverse
inference from Dr. Hoffman’s refusal to answer the questions
pertaining to respondent’s exportation of its drug to
Mexico. TBMP §707.03(d) (2d ed. rev. 1, March 2004). Cf.:
Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d
1464, 1467 (TTAB 1993).
Cancellation No. 92032202
9
Accordingly, we have given no consideration on the
merits to petitioner’s claim that respondent’s use was
unlawful.
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities or dissimilarities
between the marks and the similarities or dissimilarities
between the goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These,
and other du Pont factors deemed pertinent in the proceeding
now before us, are discussed below.
THE PARTIES’ GOODS
Petitioner’s goods, in its pleaded registration, are
identified as “pharmaceuticals, namely, cancer-treating
drugs” while respondent’s goods, in the registration sought
to be cancelled, are identified as “therapeutic compositions
containing reagents for in vivo anti-cancer use.” As often
stated, Board proceedings are concerned with registrability
and not use of a mark and, thus, the identification of goods
in the respective registrations herein frames the issue.
Cancellation No. 92032202
10
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
(Fed. Cir. 2000); and Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). Both products here are pharmaceuticals used in
treating cancer patients. As identified in the respective
registrations, we find that the goods are legally identical
for purposes of our likelihood of confusion determination.
Respondent contends that the goods “look dramatically
different from one another and are used in distinct
treatment regimes.” More specifically, respondent states
that because both products are administered intravenously,
the medical professionals administering the products will
see that “[a] bag of clear liquid [petitioner’s product] is
highly distinguishable from a bag of brilliant yellow liquid
[respondent’s product].” (Brief, p. 18). Simply put, these
distinctions are of little moment in our likelihood of
confusion analysis which, to reiterate, is based on a
comparison of the goods as identified in the involved
registrations. Moreover, the question is whether the
relevant classes of purchasers are likely to confuse the
source of the goods, not the goods themselves.
THE PARTIES’S MARKS
Insofar as the marks are concerned, we initially note
that when marks are applied to legally identical goods, as
is the case here, “the degree of similarity [between the
Cancellation No. 92032202
11
marks] necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).
The marks are similar in sound and appearance. Both
marks begin with ONC and end in ASE (the scientific names of
petitioner’s and respondent’s drugs are, respectively,
“ranpirnase” and “recombinant methioninase”). Although
petitioner’s mark includes an additional syllable, it is the
middle portion of the mark. As seen and spoken, this middle
portion may be missed by many of the relevant purchasers.
As to meaning, we find that the first portion of the
respective marks, “ONC-”, connotes that each product has
something to do with oncology. Thus, while each mark is
suggestive, the marks convey, at least superficially, the
same basic idea. Notwithstanding this suggestiveness, Dr.
Costanzi, a board certified physician in medical oncology,
testified that he was not aware of any other “ONC-” marks in
the field. The record is otherwise devoid of any probative
evidence showing third-party uses or registrations of
similar marks in the oncology field.
In sum, we find that the similarities between the marks
outweigh the differences.
Cancellation No. 92032202
12
TRADE CHANNELS
There are certain other duPont factors that are
relevant in the present case. The first relates to channels
of trade.
Respondent concedes that the goods presently move in
overlapping channels of trade, but goes on to assert that
these channels consist of tightly controlled pre-clinical
and clinical trials. Respondent contends that clinical
trials are designed so that confusion cannot occur;
according to respondent, confusion is all but impossible due
to careful labeling and security procedures that are
followed to ensure the accuracy of the test results.
Respondent’s argument to restrict the trade channels
factor to these trials, and to not consider the general
pharmaceutical market, is misplaced. Neither of the
identifications of goods includes a restriction to pre-
clinical or clinical trials. We must assume, therefore,
that the respective drugs will both gain FDA approval and
subsequently travel in the future in the same general
pharmaceutical trade channels.5
5 Respondent also contends that petitioner’s product is unlikely
to pass the clinical stage and, accordingly, the drug will never
make its way to the pharmaceutical market for sale. Suffice it
to say that the likelihood that the FDA will or will not approve
petitioner’s drug for market use, or that the efficacy of
respondent’s drug is greater than that of petitioner’s drug, is
entirely irrelevant to the issue of likelihood of confusion
before us.
Cancellation No. 92032202
13
Inasmuch as the identifications of goods do not include
any limitations, it is assumed that the goods move through
the same trade channels, namely all trade channels normal
for goods of this type in the healthcare field. These would
in the future include hospitals and other healthcare
facilities. However, the goods, as identified, are not
limited to hospital use, and it is reasonable to assume
that, at some point in the future, the drugs may be
dispensed outside of the hospital setting, perhaps even as
medications which can be taken by the patient at home. Dr.
Costanzi touched on this point when he testified about the
coming days of “brown bag” pharmaceuticals. (Dep., pp. 14-
16). Thus, the precautionary controls over cancer-treating
drugs that generally exist within the hospital may be lost
when prescriptions for such drugs might be filled at the
local drug store or pharmacy.
CONDITIONS OF SALE
In considering the conditions of sale of the respective
products, we note that the drugs would be prescribed by
physicians, dispensed by pharmacists and normally
administered by healthcare professionals such as doctors and
nurses. We acknowledge that such persons are sophisticated
and are not prone to carelessness. Nonetheless, we find
that confusion is likely, even among these healthcare
professionals, where these similar goods are marketed under
Cancellation No. 92032202
14
the similar marks involved herein; there is no reason to
believe that medical expertise as to pharmaceuticals will
ensure that there will be no likelihood of confusion as to
source or affiliation. See: In re Merck & Co., Inc., 189
USPQ 355 (TTAB 1975). See also: KOS Pharmaceuticals Inc.
v. Andrx Corp., ___F.3d___ (3d Cir., No. 03-3977, May 24,
2004). As Dr. John Costanzi testified, contrary to the gist
of Dr. Hoffman’s remarks on this point, mistakes have been
made where cancer patients were given the wrong drug, as a
result of name or trademark confusion, with dire
consequences (pointing to a reported death due to confusion
between Taxol and Taxotere). (Dep. pp. 13-19; and exhibit
no. 16 which is an article captioned “Lethal Confusion”
retrieved from Forbes.com). See generally: J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, §19:149 (4th
ed. 2004).
Moreover, as noted above, the parties’ drugs, as
identified, also could be dispensed outside of the hospital
setting, such that the ultimate users will have direct
contact with them. As stated in KOS Pharmaceuticals Inc.,
id., citing Checkpoint Sys., Inc. v. Check Point Software
Techs., Inc., 269 F.3d 270, 285 (3d Cir. 2001), “[w]here
both professionals and the general public are relevant
consumers, ‘the standard of care to be exercised....will be
equal to that of the least sophisticated consumer in the
Cancellation No. 92032202
15
class.’” Thus, we must be sensitive to the fact that
patients from the general public will not exercise the
degree of care exhibited by medical professionals. As also
stated by the Third Circuit in KOS Pharmaceuticals Inc.,
id.: “While doctors and pharmacists play a gate-keeping
role between patients and prescription drugs, they are not
the ultimate consumers. Patients are. Courts have noted
that drugs are increasingly marketed directly to potential
patients through, for example, ‘ask-your-doctor-about-Brand-
X’ style advertising.” [citations omitted].
ACTUAL CONFUSION
The absence of evidence of actual confusion does not
compel a different result. The tight controls over drugs
during clinical testing may have prevented any meaningful
opportunity for confusion to occur between the marks.
Further, respondent has shipped only seven vials of the drug
in connection with pre-clinical testing in this country, and
it would appear that any opportunity for confusion has been
virtually nonexistent. Cunningham v. Laser Golf Corp.,
supra at 1847 [In order for lack of actual confusion to be a
meaningful factor, there must be evidence showing that there
has been an opportunity for incidents of actual confusion to
occur.] In any event, the test here is likelihood of
confusion, and actual confusion need not be found in order
to conclude that there is a likelihood of confusion between
Cancellation No. 92032202
16
the marks. Weiss Associates Inc. v. HRL Associates Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
CONCLUSION
We conclude, based on a preponderance of the evidence,
that there is a likelihood of confusion when the marks
ONCONASE and ONCASE are contemporaneously used on the
parties’ respective cancer-treating drugs.
As a final point, prior decisions 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. This further
supports our conclusion herein. See: 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). See also: KOS Pharmaceuticals
Inc. v. Andrx Corp., supra. See generally: McCarthy on
Trademarks and Unfair Competition, supra, §23:32.
LACHES
The last issue for us to consider is respondent’s
affirmative defense of laches. Respondent contends that
petitioner’s undue and unreasonable delay in asserting its
rights requires dismissal of the petition for cancellation.
Cancellation No. 92032202
17
In the present case, respondent specifically asserts that
petitioner knew or should have known that it had a cause of
action as early as July 5, 1994, when respondent’s mark
ONCASE was published for opposition; that the resulting
registration of the mark in 1996 put petitioner on
constructive notice of respondent’s ownership and use of the
mark; and that rather than taking timely action, petitioner
waited until three days prior to the fifth anniversary date
of the registration to file the present petition for
cancellation. Respondent contends that it has been
prejudiced by petitioner’s delay in that it has built up and
promoted its mark ONCASE in reliance on its registration
thereof and petitioner’s silence. Respondent maintains that
its product has been extensively promoted through trade
shows, conferences and presentations, and that if
respondent’s registration is cancelled, it will lose the
value of its extensive investment through its promotion of
the mark.
Petitioner responds by characterizing the defense as
“makeweight” and asserting that respondent’s investment in
the mark ONCASE has been only minimal.
Respondent, as the party raising the affirmative
defense of laches, bears the burden of proof. To prevail on
laches, respondent is required to establish that there was
undue or unreasonable delay by petitioner in asserting its
Cancellation No. 92032202
18
rights, and prejudice to respondent resulting from the
delay. Bridgestone/Firestone Research Inc. v. Automobile
Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460
(Fed. Cir. 2001). See also: National Cable Television
Association, Inc. v. American Cinema Editors, Inc., 937 F.2d
1572, 19 USPQ2d 1424 (Fed. Cir. 1991) [laches runs from the
time from which action could be taken against the trademark
rights inhering upon registration].
In the present case, respondent’s mark was published
for opposition on July 5, 1994;6 issuance of respondent’s
registration on the Principal Register occurred on July 16,
1996; and the petition for cancellation was filed on July
13, 2001. Thus, the delay comprises a little over seven
years. Petitioner has been completely silent as to the
reason for its delay, and we consider the unexplained delay
of over seven years to be substantial.
As petitioner points out, however, mere delay in
asserting a trademark-related right does not necessarily
result in changed conditions sufficient to support the
defense of laches. There must also have been some detriment
to the defendant due to the delay. Bridgestone/Firestone
Research Inc. v. Automobile Club de l’Ouest de la France,
supra at 1463. Prejudice is generally shown by the fact
6 Respondent was not aware of petitioner’s registered mark when
it filed the underlying application. (Hoffman dep., p. 183).
Cancellation No. 92032202
19
that in reliance on petitioner’s silence, respondent built
up a valuable business and good will around the mark during
the time petitioner never objected. Turner v. Hops Grill
and Bar Inc., 52 USPQ2d 1310 (TTAB 1999). See generally:
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §20:76 (4th ed. 2004).
Economic prejudice arises when a defendant suffers the
loss of monetary investments or incurs damage that likely
would have been prevented by an earlier suit. A.C. Aukerman
Co. v. R. L. Chaides Construction Co., 960 F.2d 1020, 22
USPQ2d 1321 (Fed. Cir. 1992). A nexus must be shown between
the delay in filing suit and the expenditures; the alleged
infringer must change his position because of and as a
result of the plaintiff’s delay. The essential inquiry is
to determine if there was a change in the economic position
of the alleged infringer during the period of delay. State
Contracting & Engineering Corp. v. Condotte America, Inc.,
346 F.3d 1057, 68 USPQ2d 1481 (Fed. Cir. 2003).
Respondent has provided insufficient specifics about
the detriment it alleges to have suffered. Respondent has
failed to provide any dollar amounts regarding the costs of
development and promotion of its product marketed under the
mark ONCASE. Respondent has shipped only seven vials of
product for testing. In addition to these shipments,
Cancellation No. 92032202
20
according to Dr. Hoffman, respondent has promoted its
product at conferences and trade shows by way of posters and
distribution of informational handouts. More specifically,
respondent promoted its product, in the period July 1994 to
2003, by way of 21 presentations, 12 meetings and 45 trade
shows. According to Dr. Hoffman, he presents papers, hands
out printed material, and engages in discussions with
potential customers and partners at the trade shows. In its
brief (p. 9), respondent highlights its promotional efforts
at two of the most widely attended events, namely the
American Association of Cancer Research annual meeting and
the American Society of Clinical Oncology annual meeting,
drawing 10,000 and 15,000 attendees, respectively. At each
recent meeting, respondent distributed about 200 copies of a
bibliography of articles about the ONCASE brand drug. Dr.
Hoffman further testified that scientific information,
technical bulletins and posters were available at
respondent’s booths. Respondent also has promoted its drug
at other meetings and conferences, giving presentations to
oncologists and/or scientists in the field of cancer
research. Dr. Hoffman testified that the presentations
generally attract 50-100 attendees. Dr. Hoffman also
testified that respondent’s website counted more than 13,000
visits in a recent one-year period.
Cancellation No. 92032202
21
Although respondent contends that its investment in the
ONCASE brand product has been extensive, it is difficult to
gauge, in the absence of dollar amounts or other specific
information relative to its promotional efforts, the degree
to which there has been any detriment. We also lack any
testimony or other evidence which would shed light on the
effect and success of respondent’s promotional efforts.
Further, respondent’s testimony regarding its appearances at
conferences, trade shows and presentations is diminished by
the fact that it was promoting other drugs at the same time.
For example, exhibit no. 11 to Dr. Hoffman’s depostion is a
photograph of one of respondent’s booths at a trade show; no
fewer than four of respondent’s other drugs are being
promoted under different marks. Thus, in all likelihood,
respondent’s expenditures in connection with the promotion
of its ONCASE brand drug would appear to be little more than
what it was spending in any event to promote its other
drugs. That is to say, respondent might very well have
attended the various trade shows and conferences to promote
its other drugs even if its ONCASE brand drug had not been
developed. Again, in the absence of details relating to the
specific economic prejudice suffered, we are unable to say
that respondent has established a meritorious laches
defense.
Cancellation No. 92032202
22
Further, while Dr. Hoffman has authored scientific
papers concerning respondent’s drug, the drug is hardly ever
referred to by its trademark ONCASE; instead, it is called
by its scientific name (recombinant methioninase).
In sum, respondent has failed to put forward sufficient
evidence of material prejudice to support a finding of
laches. Accordingly, we find that respondent’s laches
defense fails for lack of proof.
Decision: The petition for cancellation grounded on
likelihood of confusion is granted. Registration No.
1,987,445 will be cancelled in due course.