Dr. Willmar Schwabe GmbH & Co. KG

Trademark Trial and Appeal Board

Jul 7, 2011

No. 76690276 (T.T.A.B. Jul. 7, 2011)

Mailed: 7/7/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dr. Willmar Schwabe GmbH & Co. KG
________

Serial No. 76690276
_______

Nathaniel D. Kramer of Kirschstein, Israel, Schiffmiller &
Pieroni for Dr. Willmar Schwabe GmbH & Co. KG.

Suzanne Blane, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Quinn, Kuhlke and Lykos, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Dr. Willmar Schwabe GmbH & Co. KG filed, on June 5,
2008, an intent-to-use application to register the mark EPs
7630 (in standard character form) for “plant-based
pharmaceuticals for the treatment of respiratory diseases,
namely, those based on an ethanolic extract of the roots of
pelargonium sidoides” in International Class 5.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 76690276
2
to applicant’s goods, so resembles the previously
registered marks EP and EP 12.5 (“12.5” disclaimed) (both
in typed form), both for “pharmaceutical bronchodilators”
in International Class 5,1 as to be likely to cause
confusion. The registrations are owned by the same entity.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.
A procedural matter requires our attention before
turning to the merits of the appeal. Applicant’s brief,
including the table of contents, table of cases,
description of the record, statement of the issue,
statement of facts and argument, comprises forty-five
pages. Trademark Rule 2.142(b) provides that without prior
leave of the Board, a brief in an ex parte appeal shall not
exceed twenty-five pages in length in its entirety,
including the table of contents, index of cases,
description of the record, statement of the issues,
recitation of the facts, argument, and summary. Thus,
applicant’s brief exceeds the page limit by twenty pages.
If an applicant files a brief that exceeds the twenty-
five page limit without prior leave of the Board, the brief

1 Registration No. 1791247, issued September 7, 1993, renewed,
and No. 2217874, issued January 12, 1999, Sections 8 and 15
affidavit accepted and acknowledged, respectively.
Ser No. 76690276
3
will not be considered, although the failure to file a
conforming brief will not be treated as a failure to file a
brief which would result in the dismissal of the appeal.
In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (Board
refused to consider applicant’s 29-page brief). See
generally TBMP §1203.01 (3d ed. 2011).
Accordingly, applicant’s forty-five page appeal brief,
that exceeds the page limit by twenty pages, has not been
considered in reaching our decision. We have, however,
considered applicant’s responses to Office actions and
applicant’s reply brief.2
We now turn to the merits of the appeal. Our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and

2 It should be noted that virtually all of applicant’s arguments
were previously made during prosecution, most particularly in
applicant’s thirty-eight page request for reconsideration. Thus,
although immaterial to this procedural issue, we see no undue
prejudice to applicant by our decision to not consider the appeal
brief. More importantly, all of applicant’s evidence was timely
introduced during the prosecution of the application.
Ser No. 76690276
4
the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
Insofar as the goods are concerned, it is well
established that the goods of the parties need not be
similar or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). The question of likelihood of confusion
is determined based on the identification of goods in the
application vis-à-vis the goods as set forth in the cited
registration(s). In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and In re Jump
Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). The issue,
of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of
Ser No. 76690276
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confusion as to the source of the goods. In re Rexel Inc.,
223 USPQ 830 (TTAB 1984).
Thus, our likelihood of confusion analysis focuses on
a comparison between applicant’s “plant-based
pharmaceuticals for the treatment of respiratory diseases,
namely, those based on an ethanolic extract of the roots of
pelargonium sidoides” and registrant’s “pharmaceutical
bronchodilators.” The dictionary evidence of record
reveals that a “bronchodilator,” as listed in the cited
registrations, is “a drug that widens the air passages of
the lungs and eases breathing by relaxing bronchial smooth
muscle.” The American Heritage Dictionary of the English
Language (4th ed. 2009). The record also shows, as
established by the various materials introduced by the
examining attorney, that the bronchial muscles are part of
the respiratory system, and that respiratory disease
includes conditions that affect the lungs and bronchial
muscles. Registrant’s product is sold over-the-counter for
the treatment of common respiratory ailments such as colds
and congestion. Applicant’s product information on its
website indicates that these homeopathic goods are sold
over the counter and are used to shorten the duration and
reduce the severity of upper respiratory tract infections.
The herb featured in applicant’s product “has long been
Ser No. 76690276
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used to treat cough, sore throat, congestion, and other
respiratory ailments.” The product also loosens phlegm or
mucus to make coughs more productive. In sum, although the
goods are specifically different, they are related in that
both are pharmaceutical products used to treat respiratory
conditions.
The examining attorney introduced several use-based
third-party registrations, which each cover a number of
differing goods, all relating to the treatment of
respiratory conditions. More specifically, the
registrations cover bronchodilators as well as other
products, such as expectorants, used to treat respiratory
aliments. Although such registrations are not evidence
that the marks shown therein are in use or that the public
is familiar with them, they nonetheless have probative
value to the extent that they serve to suggest that various
different types of pharmaceutical treatments for
respiratory treatments are the kinds of products that may
emanate from a single source under a single mark. In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993). The record also includes additional registrations
owned by registrant that cover various products other than
Ser No. 76690276
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pharmaceutical bronchodilators, such as expectorants, used
to treat respiratory conditions (albeit these other goods
are covered by marks different than the ones cited herein).
So as to be clear, however, not a single registration
covers both bronchodilators and the specific type of
product identified in the application, that is, plant-based
pharmaceuticals for the treatment of respiratory diseases,
namely those based on an ethanolic extract of the roots of
pelargonium sidoides.
Insofar as channels of trade are concerned, neither
applicant’s nor registrant’s identification of goods
includes any limitations with respect thereto. Thus, we
must assume that the goods move in the normal channels of
trade therefor, including drug stores and pharmacies. In
re Jump Designs LLC, 80 USPQ2d at 1374. This is buttressed
by the examining attorney’s evidence in the form of
screenshots of retail pharmacy websites showing that
bronchodilators and other treatments for respiratory
conditions are sold through these outlets.
Further, there are no limitations on the classes of
purchasers for applicant’s and registrant’s goods.3 We must

3 Thus, applicant’s claims that its goods are sold to medical
doctors and other physicians, as well as to pharmacies, and that
its goods are not subject to FDA regulations, are of no moment;
such limitations are not reflected in the identification of
goods.
Ser No. 76690276
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therefore assume that the goods would be purchased by all
potential buyers thereof. Because the goods may be bought
over the counter, the classes of consumers would include
ordinary ones.
The du Pont factors relating to the goods, namely the
similarity between the goods, trade channels and classes of
consumers, all weigh in favor of a finding of likelihood of
confusion.4
We next turn to consider the marks. We must compare
the marks, applicant’s mark EPs 7630 and registrant’s marks
EP and EP 12.5, in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test, under the first du Pont factor, 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

4 We are entirely unpersuaded by applicant’s argument that the
goods are different because registrant’s product, with ephedrine
as an ingredient, may be used as a recreational drug. As we
indicated above, our comparison of the goods is made on the basis
of the identification of goods in the application vis-à-vis the
identification of goods in the cited registration. That
registrant’s over-the-counter pharmaceutical bronchodilators may
be used for purposes other than treating respiratory ailments is
immaterial to our likelihood of confusion analysis.
Ser No. 76690276
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that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
It is well settled that one feature of a mark may be
more significant than another, and it is not improper to
give more weight to this dominant feature in determining
the commercial impression created by the mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”).
One of the cited marks, EP 12.5, includes a disclaimer
of “12.5”.5 Although we have considered this mark in its
entirety, this non-distinctive disclaimed number plays a
subordinate role to the “EP” component of this cited mark.
See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d

5 The evidence shows that 12.5 is an industry-wide standard
dosage (12.5 mg) for ephedrine.
Ser No. 76690276
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1531, 1533-34 (Fed. Cir. 1997). Registrant’s other mark is
EP in its entirety. Of the two marks, registrant’s EP mark
is closest to applicant’s mark, and we will focus the
likelihood of confusion comparison between registrant’s
mark EP and applicant’s mark.
As for applicant’s mark, applicant stated, in response
to the examining attorney’s inquiry, that neither “EPs” nor
“7630” has any significance in the trade. (Response,
3/16/09). Indeed, the record is devoid of any evidence to
show that either of the components comprising applicant’s
mark, “EPs” or “7630” is anything less than inherently
distinctive. We recognize that purchasers in general are
inclined to focus on the first word or portion in a
trademark, especially where the first word is followed by a
non-distinct term. Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). With
applicant’s mark, however, the second portion of the mark,
namely “7630” is just as distinctive as the first portion,
and just as likely to be mentioned when a consumer calls
for the goods.
In further support of the proposition that consumers
are more likely to rely on the “EPs” portion of applicant’s
mark in calling for the goods, the examining attorney
introduced evidence to show the common use of numbers in
Ser No. 76690276
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marks for pharmaceuticals. More specifically, the
examining attorney submitted excerpts of various third-
party websites and articles retrieved from the NEXIS
database, as well as third-party registrations with
disclaimers of the numerical components. This evidence
shows widespread use of numbers in connection with
pharmaceuticals, often conveying information about the
products (as in the case of the “12.5” component of
registrant’s mark), thereby relegating the numbers to a
subordinate role in the marks’ source-indicating function.
In connection with this evidence, the examining attorney
argues that consumers do not look to the number portions of
trademarks as being distinctive for pharmaceutical
products. While we appreciate the examining attorney’s
point, we reiterate that there is nothing in the record to
suggest that the number “7630” in applicant’s mark is
anything other than arbitrary; this is to be contrasted
with many of the examining attorney’s examples wherein the
numbers have a descriptive significance relative to the
goods. Thus, contrary to the examining attorney’s
contention, we decline to find that applicant’s mark is
dominated by “EPs.”
One of applicant’s contentions is that the letters
“EP” are, at the very least, highly suggestive, thereby
Ser No. 76690276
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rendering the cited marks weak. At other times, applicant
also asserts that “EP” is the standard abbreviation for
“ephedrine” and, thus, is generic or merely descriptive of
bronchodilators. Both of these arguments are made in
connection with applicant’s position that the cited marks
are entitled to only a narrow scope of protection.
Applicant submitted excerpts from the website www.all-
acronyms.com showing “EP” as an abbreviation for
“ephedrine.” (Ex. No. 6). The record also includes four
third-party websites showing use of “EP” as an abbreviation
for “ephedrine.” (Ex. Nos. 7-10).
Applicant also introduced third-party registrations
showing marks that comprise, in part, the letters “EP” for
goods that appear to be used to treat respiratory
conditions. Reg. No. 2279311 (Ex. No. 11) covers dietary
supplements that, according to the additional information
furnished by applicant (Ex. No. 12), are beneficial to the
user’s lungs. Other third-party registrations also cover
dietary supplements, but there is no corroborating evidence
that these supplements are used for respiratory system
conditions. Reg. No. 3625377 (Ex. No. 21) for the mark
EPIONE covers homeopathic pharmaceuticals for treating
respiratory system disorders. Reg. No. 3531161 (Ex. No.
Ser No. 76690276
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22) for the mark EPAX covers dietary supplements that are
advertised as enhancing lung function during sports.
In further support of its contentions, applicant
introduced several abstracts retrieved from scientific
publications. Given that the goods are sold over the
counter, relevant purchasers, as indicated above, include
ordinary consumers. Thus, the fact that “EP” may be used
as a shorthand form of “ephedrine” in highly technical
articles in scientific publications is of limited probative
value. Further, rather than establishing that “EP” is a
commonly used and recognized abbreviation for “ephedrine,”
it may well be that the use of “EP” in the scientific
articles is just a shorthand way for the author to refer to
“ephedrine” within the article. There is nothing in the
record to indicate that ordinary consumers would be exposed
to these highly technical scientific publications.
In sum, we find that the evidence supports a finding
that the letters “EP” are, at the very least, highly
suggestive of ephedrine-based products such as registrant’s
product, therby reducing the degree of distinctiveness of
registrant’s marks. As for applicant’s allegation that the
cited marks are generic or merely descriptive, we decline
to consider this claim. As in the case of applicant’s
assertion of abandonment (discussed infra), an allegation
Ser No. 76690276
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that the registered marks are generic or merely descriptive
constitutes a collateral attack that will not be
entertained in the context of this ex parte appeal.
When we consider the marks in their entireties, as we
must, we find that the differences in sound, appearance,
meaning and overall commercial impression between
applicant’s mark EPs 7630 and each of registrant’s marks EP
and EP 12.5 are sufficient to distinguish the marks. This
factor weighs in favor of finding no likelihood of
confusion.
One additional point bears mention. Applicant also
has suggested that the cited marks essentially are
abandoned due to nonuse. To the extent that applicant’s
allegation constitutes a collateral attack on registrant’s
registrations, it is impermissible. Section 7(b) of the
Trademark Act, 15 U.S.C. §1057(b), provides that a
certificate of registration on the Principal Register shall
be prima facie evidence of the validity of the
registration, of the registrant’s ownership of the mark and
of the registrant’s exclusive right to use the mark in
connection with the goods or services identified in the
certificate. During ex parte prosecution, including an ex
parte appeal, an applicant will not be heard on matters
that constitute a collateral attack on the cited
Ser No. 76690276
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registration (e.g., abandonment). In re Dixie Restaurants,
Inc., 41 USPQ2d at 1534; and In re Peebles Inc., 23 USPQ2d
1795, 1797 n.5 (TTAB 1992). See TMEP §1207.01(d)(iv) (7th
ed. 2010). Accordingly, no consideration has been given to
applicant’s arguments in this regard. The proper manner
for applicant to bring the issue of abandonment before the
Board is by way of a petition to cancel.
Based on the record before us, we see the likelihood
of confusion refusal as amounting to only a speculative,
theoretical possibility. The significant differences
between the marks, when they are compared in their
entireties, and the relative weakness of the common
element, convince us that confusion is unlikely to occur in
the marketplace. Language by our primary reviewing court
is helpful in resolving the likelihood of confusion issue
in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de
minimis situations but with the
practicalities of the commercial world,
with which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391 (Fed. Cir. 1992), citing Witco
Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d
Ser No. 76690276
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1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g 153 USPQ
412 (TTAB 1967).
Decision: The refusal to register is reversed.