Aventis Pharmaceuticals, Inc.v.Heal the World Inc.

Trademark Trial and Appeal Board

Oct 24, 2011

No. 91192046 (T.T.A.B. Oct. 24, 2011)

Mailed: October 24, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Aventis Pharmaceuticals Inc.

v.

Heal The World Inc.
_____

Opposition No. 91192046
to application Serial No. 77671718
and application Serial No. 77671728
both filed on February 17, 2009
_____

G. Mathew Lombard of Lombard & Geliebter LLP for Aventis
Pharmaceuticals Inc.

Anthony M. Verna III of Kravitz & Verna LLC for Heal The
World Inc.
______

Before Cataldo, Bergsman and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Heal The World Inc. (“applicant”) filed intent-to-use
applications for the marks LAZACOR (Serial No. 77671718) and
LAZACOR + (Serial No. 77671728), in standard character form,
for “homeopathic supplements,” in Class 5. “Homeopathy” is
a “therapy based on the premise that the most effective way
to treat disease is to use drugs or other agents that
produce the symptoms of the disease in healthy persons. In
homeopathic therapy, for example, hot compresses are
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91192046
2
prescribed for treating burns.”1 A “homeopathic
supplement,” therefore, is a “small dose of a pharmacologic
[or chemical] agent that ordinarily mimics the symptoms
produced by the condition being treated.”2
Aventis Pharmaceuticals Inc. (“opposer”) opposed the
registration of applicant’s marks on the ground of
likelihood of confusion under Section 2(d) of the Trademark
Act of 1946, 15 U.S.C. §1052(d), and dilution under Section
43(c) of the Trademark Act of 1946, 15 U.S.C. § 1125(c).
Specifically, opposer alleged ownership and prior use of the
registered trademark NASACORT for a “steroid preparation for
the treatment of allergic rhinitis,” in Class 5,3 and that
applicant’s mark LAZACOR, if used in connection with
homeopathic supplements, so resembles opposer’s mark
NASACORT for “steroid preparation for the treatment of
allergic rhinitis” as to be likely to cause confusion.

1 Encyclopedia Americana (2011). The Board may take judicial
notice of evidence in dictionaries, encyclopedias and other
standard reference texts. University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). See also
B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727,
6 USPQ2d 1719 (Fed. Cir. 1988) (encyclopedias may be consulted);
Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1590
n.8 (TTAB 2008) (online reference works which exist in printed
format or have regular fixed editions); Sprague Electric Co. v.
Electrical Utilities Co., 209 USPQ 88 (TTAB 1980) (standard
reference works).
2 Stedman’s Medical Dictionary (28th ed. 2011).
3 Registration No. 1538836, issued May 16, 1989; renewed.
“Rhinitis” is an “inflammation of the nasal mucous membrane”
“manifest by sneezing, rhinorrhea [nasal discharge], nasal
congestion, pruritus [itching] of the nose, ears, palate.”
Stedman’s Medical Dictionary.
Opposition No. 91192046
3
Opposer further alleged that NASACORT has become famous and
that applicant’s use of LAZACOR will dilute the
distinctiveness of opposer’s NASACORT mark.4
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
Preliminary Matter
When the parties listed the record in their brief,
opposer and applicant identified applicant’s expert report
and applicant identified the affidavit of Scott Scadron,
founder of applicant.5 However, applicant did not file
either its expert report or the affidavit of Scott Scadron
and, accordingly, we have been unable to consider them.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR

4 While opposer did not properly plead the fame of its mark prior
to the earliest date on which applicant can rely for purposes of
priority, because applicant did not move to strike the dilution
claim for failure to state a claim and, in its brief, treated the
dilution claim as if it were properly pleaded, we deem the
dilution claim to have been amended by implied consent of the
parties. See Fed. R. Civ. P. 15(b). In other words, we deem the
dilution claim to allege that opposer's mark NASACORT became
famous prior to the filing date of the applications at issue.
See UMG Recordings Inc. v. Mattel Inc., ___ USPQ2d ___ n.3
(2011). See also Citigroup Inc. v. Capital City Bank Group Inc.,
94 USPQ2d 1645, 1649 (TTAB 2010), aff’d 637 F.3d 1344, 98 USPQ2d
1253.
5 We note with approval the parties’ stipulation to the
introduction of testimony though declarations or affidavits.
Opposition No. 91192046
4
§2.122(b). In addition, opposer introduced the evidence
identified below.
1. Opposer’s first notice of reliance on a certified
copy of opposer’s pleaded registration prepared by the U.S.
Patent and Trademark Office showing the current status of
and title to the registration;
2. Opposer’s second notice of reliance on the expert
report of Brad R. Newberg in rebuttal to applicant’s expert
report;6 and
3. Opposer’s third notice of reliance on the
following items:
a. Testimonial deposition of Timothy Tholen,
opposer’s Vice President of General
Therapeutics and Lifecycle Management, with
attached exhibits;
b. An excerpt from applicant’s website;
c. Applicant’s responses to opposer’s
interrogatories; and
d. Documents produced in response to opposer’s
request for production of documents.
As indicated above, applicant did not take any
testimony or introduce any evidence.

6 The Newberg expert report, prepared in rebuttal to applicant’s
expert report, was filed on February 14, 2011, during opposer’s
testimony period-in-chief, prior to the time that applicant’s
expert report could have been filed (had it been filed).
Opposition No. 91192046
5
Standing
Because opposer has properly made its pleaded
registration of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982).
Priority
Because opposer’s pleaded registration is of record,
Section 2(d) priority is not an issue in this case as to the
mark and the products covered by the registration. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re
Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s marks.

This du Pont factor requires us to consider the fame of
opposer’s mark. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
Opposition No. 91192046
6
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
Opposition No. 91192046
7
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposer sales of NASACORT nasal spray have been
substantial. Opposer’s sales from 2003 through 2008 are set
forth below with the available corresponding market share in
the field of inhaled nasal steroids.7 The market share
information is from “IMS Health, Inc., an independent
company that researches, compiles and sells information
about the pharmaceutical industry.”8
Year Sales Market share

2003 $229,000,000 No information

2004 $275,000,000 No information

2005 $266,000,000 13.4%

2006 $266,000,000 12.1%

2007 $301,000,000 11.3%

2008 $259,000,000 9.5%

Opposer also asserts that “[i]n a survey conducted by
SDI, NASACORT/NASACORT AQ was identified by 10.4% of

7 Tholen Dec., ¶¶28-30.
8 Tholen Dec., ¶¶29-30.
Opposition No. 91192046
8
respondents when asked what allergy medication first comes
to mind.”9
Opposer provided its advertising expenditures for 2009
and 2010 under seal so we may only refer to them in general
terms. Suffice it to say, opposer’s advertising
expenditures were substantial. “Opposer currently places
advertising and marketing materials for its
NASACORT/NASACORT AQ products/mark in the United States on
the internet, printed hand-outs, other printed materials and
the like.”10
While opposer has achieved commercial success and a
high degree of renown, the evidence of record is not
sufficient to establish that opposer’s NASACORT mark is
famous for purposes of likelihood of confusion. For
example, the evidence regarding consumer recognition of the
mark NASACORT is not persuasive. Opposer referenced a
survey by SDI, but opposer did not introduce the survey let
alone identify SDI. Nor did opposer introduce any
unsolicited media referencing the renown of its NASACORT
products. Accordingly, we can only speculate about the
actual impact of opposer’s mark on the minds of consumers.
The evidence is indicative of the success of opposer’s

9 Tholen Dec., ¶32.
10 Tholen Dec., ¶33.
Opposition No. 91192046
9
product rather than the recognition of the fame of the mark.
Nevertheless, in view of opposer’s extensive sales,
advertising expenditures and appreciable market share, we
find that opposer’s mark has a high degree of public
recognition and renown.
B. The similarity or dissimilarity and nature of the
products described in the applications and the
registration.

Opposer’s NASACORT mark is used to identify a “steroid
preparation for the treatment of allergic rhinitis,” a
prescription product.11 As indicated in footnote 3,
“rhinitis” is an “inflammation of the nasal mucous membrane”
“manifest by sneezing, rhinorrhea [nasal discharge], nasal
congestion, pruritus [itching] of the nose, ears, palate.”
Mr. Tholen testified that NASACORT is used for “‘the relief
of seasonal and year-round nasal allergy symptoms.’ It
specifically alleviates stuffiness, sneezing, runny nose and
itchy eyes.”12 Applicant’s mark is intended to be used in
connection with “homeopathic supplements.” As indicated
above, a homeopathic supplement is a small dose of a
pharmacologic agent used to treat the symptoms of a
condition, which, without any limitations in the description
of goods, may include rhinitis. Because the scope of the
registration applicant seeks is defined by its application

11 Tholen Dec., Exhibit B (Exhibit 007-9); opposer’s Brief, p. 11.
12 Tholen Dec. ¶23.
Opposition No. 91192046
10
(and not by its actual use), it is the application (and not
actual use) that we must look to in determining applicant’s
right to register:
The authority is legion that the
question of registrability of an
applicant's mark must be decided on the
basis of the identification of goods set
forth in the application regardless of
what the record may reveal as to the
particular nature of an applicant's
goods, the particular channels of trade
or the class of purchasers to which
sales of the goods are directed.

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Opposer introduced advertisements for ZICAM cold remedy
products which are homeopathic products for, inter alia, the
relief of nasal congestion and pressure, to show that
homeopathic products may be used to treat nasal congestion
and pressure.13
Applicant contends that it intends to sell
“supplements,” not drugs, that “[a] dietary supplement is a
product taken by mouth that contains a ‘dietary ingredient’
intended to supplement the diet. The ‘dietary ingredients’
in these products may include: vitamins, minerals, herbs or

13 Tholen Dec., Exhibit D. Opposer also introduced evidence
regarding applicant’s use of LAZACOR mark in connection with
libido enhancement, thus, distinguishing the products. However,
as indicated above, because applicant did not restrict its
description of goods to homeopathic supplements for the purpose
of libido enhancement, we cannot consider opposer’s evidence of
applicant’s actual use to distinguish the products.
Opposition No. 91192046
11
other botanicals, amino acids, and substances such as
enzymes, organ tissues, glandulars, and metabolites,” and
that dietary supplements are food, not drugs and every
supplement must be labeled a dietary supplement.14 The
problem with applicant’s argument is that even though
homeopathic supplements and prescription drugs are not
identical, applicant’s use of the term “homeopathic
supplements” in the description of goods means that the
products are intended to treat symptoms of a condition
which, in this case, may include rhinitis and nasal
congestion and pressure.
We find that a prescription drug to treat rhinitis and
a homeopathic supplement that may be used to treat rhinitis
or nasal congestion and pressure are sufficiently related
that if sold under the same or similar marks, they would be
likely to cause confusion. While we have found that the
goods of the parties are related, we do not agree with
opposer’s conclusion that the goods are identical.15 There
is simply not enough evidence and testimony to accurately
compare and contrast opposer’s “steroid preparation for the
treatment of allergic rhinitis” and applicant’s “homeopathic
supplements” except for the conclusion that we reached that
both products may be used to treat sinus problems.

14 Applicant’s Brief, pp. 9-10, citing 21 U.S.C. §321.
15 Opposer’s Brief, pp. 22-23.
Opposition No. 91192046
12
C. The similarity of or dissimilarity of the likely-to-
continue trade channels and classes of consumers.

Opposer’s “steroid preparation for the treatment of
allergic rhinitis” is a prescription pharmaceutical sold
through doctors and pharmacies. Because there are no
restrictions as to channels of trade or classes of consumers
in the description of goods in the applications, we may
assume that applicant’s “homeopathic supplements” will be
sold in all of the normal channels of trade to all of the
normal purchasers for such goods. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987); Toys R Us v. Lamps R Us, 219 USPQ
340, 343 (TTAB 1983). In this case, however, there is no
evidence regarding the channels of trade for homeopathic
supplements. While opposer introduced evidence regarding
ZICAM as a homeopathic remedy for, inter alia, nasal
congestion and pressure, opposer did not introduce any
evidence regarding the channels of trade for such
homeopathic products. The only evidence regarding the
channels of trade is applicant’s responses to opposer’s
interrogatories. According to the record, applicant sells
its products through the Internet. It does not sell through
retail outlets or through wholesalers.16

16 Applicant’s responses to opposer’s Interrogatory No. 5.
Opposition No. 91192046
13
Opposer asserts that although NASACORT is a
prescription drug, someday it may be sold over the counter.
It is entirely possible that Opposer’s
NASACORT product will be available
without a prescription, i.e., over-the-
counter, at some future time. Many
once-prescription-only products are
ultimately made available over-the-
counter. This is particularly true in
the field of allergy treatments. Other
such examples include: CLARITIN,
BENADRYL, TAVIST and ZYRTEC. Indeed,
Opposer’s ALLEGRA preparation, also an
allergy product, was recently launched
as an OTC product in the United States.
… Thus, it is entirely possible, if not
likely, that Opposer’s NASACORT product
will at some future time be available
over-the-counter.17

With the exception of opposer’s ALLEGRA preparation,
there is no evidence regarding the sale of third-party
products referenced by opposer. With respect to the ALLEGRA
preparation, the evidence corroborating the sale of ALLEGRA
over-the-counter was a press release (February 9, 2011)
reporting that the FDA approved ALLEGRA “for over-the-
counter use” to be launched in March. There was no follow-
up evidence reporting on the actual sale of ALLEGRA as an
over-the-counter product or the channels of trade in which
ALLEGRA was sold. Furthermore, with respect to all of the
products identified above in opposer’s brief, there is no
indication as to whether those products are homeopathic
supplements. Finally, the possibility that one day in the

17 Opposer’s Brief, p. 23.
Opposition No. 91192046
14
future, NASACORT may be sold over-the-counter is not
persuasive because we have to determine likelihood of
confusion at the time of registration, not some day in the
future.
In view of the foregoing, the du Pont likelihood of
confusion factor regarding the channels of trade is neutral.
On the other hand, with respect to the class of
purchasers, opposer’s “steroid preparation for the treatment
of allergic rhinitis” and applicant’s homeopathic
supplements that may be used to treat rhinitis or sinus
congestion and pressure would be marketed to the same
ultimate consumers, notwithstanding the fact that opposer’s
products are sold through doctors and pharmacies.
D. The conditions under which and buyers to whom sales are
made (i.e., “impulse” vs. careful, sophisticated
purchasing.

Considering the particular nature of the goods involved
in this proceeding, purchasing decisions will not be made
impulsively or carelessly, as would be the case when
purchasing a snack which is inexpensive and subject to
routine purchases, in contrast to the more deliberate
purchase of a product to treat a physical ailment. In this
regard, opposer’s products are prescription drugs. The sale
of prescription drugs is regulated and sold to consumers
only under the supervision of a doctor who has identified a
specific purpose in prescribing the product. While
Opposition No. 91192046
15
applicant’s homeopathic supplements are sold over-the-
counter, the consumer is going to have a reasonably focused
need for the product leading to an intellectual rather than
emotional purchasing decision. Because of the importance of
these products in treating physical ailments, the purchasers
will undoubtedly exercise great care and correspondingly pay
careful attention to the trademark for the products.
E. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
Opposition No. 91192046
16
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this
case, the average customer will be an ordinary person with a
sinus problem.
The marks NASACORT and LAZACOR are not similar in
appearance. Considering the visual appearance of the marks
NASACORT and LAZACOR in their entireties, as well as the
significance of the first part of the marks (NASA vs. LAZA)
in making an impression with consumers, the marks look
different. See Hercules Inc. v. National Starch and
Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984)
(“considering the marks NATROL and NATROSOL in their
entireties, the clearly dominant aspect of both marks is
that the first four letters and the final two are the
same”). See also Presto Products Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”); see also Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369,
Opposition No. 91192046
17
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is
the first word in the mark and the first word to appear on
the label); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers must first notice
the identical lead word). Accordingly, we disagree with
opposer’s contention that “consumers are unlikely to focus
on the minor differences between the parties’ marks, namely
the first letters (‘N’ vs. ‘L’) and the final letter of
Opposer’s Mark (‘T’), and instead wrongly associate
Applicant’s goods with Opposer’s famous NASACORT mark.”18
Although noting that a side-by-side comparison is not
the proper test for comparing marks,19 opposer, in fact,
engaged in side-by-side comparison to highlight the arguable
visual similarities in the marks (e.g., almost the same
number of letters, five of the letters are identical, and
the same number of syllables).20 However, the purchasing
public does not indulge in such recognitional contortions
but sees things as they are. The B.V.D. Licensing Corp. v.
Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721
(Fed. Cir. 1988).

18 Opposer’s Brief, pp. 20-21.
19 Opposer’s Brief, p. 17.
20 Opposer’s Brief, p. 20.
Opposition No. 91192046
18
While there is no correct pronunciation for a
trademark, NASACORT is likely to be pronounced nā⁄ zə kōrt
(as in nasal and court). We note that while Mr. Tholen
testified that opposer pronounces NASACORT as neiz⁄ ə
koυrt,21 opposer’s prescribing information pronounces it as
na⁄ za-cort.22 Applicant’s mark LAZACOR is likely to be
pronounced lā⁄ zə kōr. Mr. Tholen contends that LAZACOR
will be pronounced laəz⁄ ə⁄ koυr.23 In comparing the sound
of the marks, we find that they share a similar cadence,
rhythm and stress pattern.
With respect to meaning and commercial impression, both
NASACORT and LAZACOR appear to be coined terms. However,
the active ingredient in NASACORT is a “corticosteroid” and,
therefore, the mark is suggestive as a combination of the
word “Nasal” and “corticosteroid.”24 A “corticosteroid” is
“a steroid produced by the adrenal cortex (i.e., adrenal
corticoid).”25 Thus, the mark NASACORT engenders the
commercial impression of a steroid or corticosteroid for the
nose. LAZACOR, on the other hand, appears to be an
arbitrary term without any suggestive meaning or commercial
impression.

21 Tholen Dec., ¶38
22 Tholen Dec. Exhibit B (Exhibits 7-9).
23 Tholen Dec., ¶40.
24 Tholen Dec. Exhibit B (Exhibits 7-9) (“the active ingredient in
NASACORT AQ Nasal Spray, is a corticosteroid”).
25 Stedman’s Medical Dictionary.
Opposition No. 91192046
19
In view of the foregoing, we find that the
dissimilarity in the appearance, meaning and commercial
impression of the marks NASACORT and LAZACOR outweigh the
similarity in the sound of the marks and, therefore, we find
that the marks are dissimilar.
D. Balancing the factors.
Despite the commercial success of opposer’s NASACORT
prescription nasal spray and the presumptive similarity of
the goods and purchasers, because the marks NASACORT and
LAZACOR and LAZACOR + are not similar and because the
consumers will exercise a high degree of consumer care, we
find that applicant’s use of LAZACOR and LAZACOR + for
“homeopathic supplements” is not likely to cause confusion
with the mark NASACORT for a “steroid preparation for the
treatment of allergic rhinitis.”
In reaching this conclusion, we have carefully
considered all of the evidence pertaining to the relevant du
Pont factors, as well as all of the parties’ arguments with
respect thereto (including any evidence and arguments not
specifically discussed in this opinion).
Dilution
In addition to its Section 2(d) claim, opposer has
asserted a dilution claim. The Lanham Act provides for a
cause of action for the dilution of famous marks. Sections
Opposition No. 91192046
20
13 and 43(c) of the Lanham Act, 15 U.S.C. §§ 1063 and
1125(c).
The Lanham Act provides as follows:
Subject to the principles of equity, the
owner of a famous mark that is
distinctive, inherently or through
acquired distinctiveness, shall be
entitled to an injunction against
another person who, at any time after
the owner's mark has become famous,
commences use of a mark or trade name in
commerce that is likely to cause
dilution by blurring or dilution by
tarnishment of the famous mark,
regardless of the presence or absence of
actual or likely confusion, of
competition, or of actual economic
injury.

Opposer contends that applicant’s marks will “blur” the
distinctiveness of opposer’s mark.26 The Lanham Act defines
dilution by blurring as follows:
"dilution by blurring" is association
arising from the similarity between a
mark or trade name and a famous mark
that impairs the distinctiveness of the
famous mark.27

With respect to fame, the dilution analysis requires
consideration of the following issues:
1. Whether NASACORT is a famous mark;

2. Whether NASACORT became famous prior to the filing
date of applicant’s applications (February 17,
2009); and,

3. Whether LAZACOR is likely to cause dilution by
blurring of the distinctiveness of NASACORT.

26 Opposer’s Brief, p. 28.
27 Section 43(c)(2)(B) of the Lanham Act, 15 U.S.C.
§1125(c)(2)(B).
Opposition No. 91192046
21
A. Whether opposer’s mark is famous for purposes of
dilution?

Because we have already found that opposer’s mark is
not famous for purposes of likelihood of confusion, it is
not famous for purposes of dilution. Fame for likelihood of
confusion and dilution is not the same. Fame for dilution
requires a more stringent showing. Palm Bay Imports Inc. v.
Veuve Clicquot, supra, 73 USPQ2d at 1694; Toro Co. v.
ToroHead Inc., 61 USPQ2d 1164, 1170 (TTAB 2001). Likelihood
of confusion fame “varies along a spectrum from very strong
to very weak” while dilution fame is an either/or
proposition – it either exists or it does not exist. Id.;
see also Carefirst of Maryland Inc. v. FirstHealth of the
Carolinas Inc., 77 USPQ2d 1492, 1507 (TTAB 2005) (likelihood
of confusion “[f]ame is relative . . . not absolute”). A
mark, therefore, may have acquired sufficient public
recognition and renown to be famous for purposes of
likelihood of confusion without meeting the more stringent
requirement for dilution fame. Toro Co. v. ToroHead Inc.,
61 USPQ2d at 1170, citing I.P. Lund Trading ApS v. Kohler
Co., 163 F.3d 27, 47 USPQ2d 1225, 1239 (1st Cir. 1998)
(“[T]he standard for fame and distinctiveness required to
obtain anti-dilution protection is more rigorous than that
required to seek infringement protection”). If a mark is
not famous for likelihood of confusion, it will not be
famous for dilution.
Opposition No. 91192046
22
In the event of an appeal and a finding by the
reviewing court that NASACORT is famous for purposes of
likelihood of confusion, we explain below why the mark is
not famous for purposes of dilution. In Toro, we described
the requirements for proving that a mark is famous:
While the eight statutory factors are a
guide to determine whether a mark is
famous,28 ultimately we must consider
all the evidence to determine whether
opposer has met its burden in
demonstrating that the relevant public
recognizes the [NASACORT] mark as
“signifying something unique, singular,
or particular.” H.R. REP. No. 104-374,
at 3 (1995). Because famous marks can
be diluted by the use of similar marks
on non-competitive goods and services,
the owner of a famous mark must show
that there is a powerful consumer
association between the term and the
owner.

* * * *

Fame for dilution purposes is difficult
to prove.

* * * *

Therefore, an opposer . . . must provide
evidence that when the public encounters
opposer’s mark in almost any context, it
associates the term, at least initially
with the mark’s owner. . . . Examples of
evidence that show the transformation of
a term into a truly famous mark include:

1. Recognition by the other
party.

2. Intense media attention.

28 The Act has subsequently been amended to list four non-
exhaustive factors. 15 U.S.C. §1143(c)(2).
Opposition No. 91192046
23

3. Surveys.

* * * *

But in order to prevail on the ground of
dilution the owner of a mark alleged to
be famous must show a change has
occurred in the public’s perception of
the term such that it is now primarily
associated with the owner of the mark
even when it is considered outside of
the context of the owner’s goods or
services.

Toro Co. v. ToroHead Inc., 61 USPQ2d at 1180-1181. In other
words, “the transformation of a term into a truly famous
mark” means that “the mark must be a household name.” Thane
International, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 64
USPQ2d 1564, 1575 (9th Cir. 2002).
Opposer’s evidence regarding fame is recounted earlier
in this decision. This evidence is not sufficient to show
that opposer’s mark is famous for purposes of dilution. In
concluding that opposer has not met the stringent
requirements of proving fame for purposes of dilution, we
note that opposer’s evidence of fame falls far short of the
quantum and quality of evidence introduced in NASDAQ Stock
Market Inc. v. Antartica S.r.l., 69 USPQ2d 1718 (TTAB 2003),
that was found sufficient to prove that opposer’s mark was
famous for dilution purposes. In NASDAQ Stock Market Inc.,
opposer introduced market studies demonstrating that the
awareness of opposer’s stock market among investors reached
more than 80% in 1999. In this case, opposer’s testimony
Opposition No. 91192046
24
regarding brand awareness is of dubious probative value
because opposer did not proffer the study into evidence nor
did opposer proffer a witness with first-hand knowledge of
the study to explain how the study was conducted and the
significance of the study. In addition, the opposer in
NASDAQ Stock Market Inc. introduced dictionary references,
newspaper and magazine articles, and stock market reports
that evidenced a widespread recognition of opposer’s mark,
beyond just investors. In this case, opposer failed to
introduce any media evidence showing a widespread
recognition of opposer’s mark to the general population. On
this record, there is no basis to find that opposer’s mark
has been transformed into a household name.
In view of the foregoing, we find that opposer has not
established that NASACORT is famous for dilution purposes.
B. When opposer’s mark became famous?

Even assuming that opposer’s mark is famous for
purposes of dilution, we cannot determine when opposer’s
mark became famous. Since applicant’s applications are
based on intent to use, opposer must prove that its marks
became famous prior to the filing date of the applications
(February 17, 2009). Mr. Tholen’s testimony regarding the
SDI brand awareness survey did not include the date when the
survey was conducted.29 Moreover, Mr. Tholen’s testimony

29 Tholen Dec. ¶32.
Opposition No. 91192046
25
regarding opposer’s advertising expenditures covered only
the years 2009 and 2010.30 Accordingly, the only relevant
evidence regarding the date when opposer’s mark became
famous is Mr. Tholen’s testimony regarding the commercial
success of the NASACORT product (i.e., substantial revenues
and significant market share) from 2003 through 2010.31 As
previously noted, the revenue and market share information
show that NASACORT is commercially successful, but not the
impact of the mark on consumers. In view thereof, we find
that opposer failed to meet its burden of proving that its
NASACORT mark became famous prior to the filing date of the
applications at issue.
On this record, opposer cannot prevail on its dilution
claim because we have found that opposer has not met its
burden of proving that its mark is famous for purposes of
dilution or that its mark became famous prior to the filing
date of applicant’s applications.
Decision: The opposition is dismissed and notices of
allowance will be issued to applicant in due course.

30 Tholen Dec. ¶31.
31 Tholen Dec. ¶¶28-30.