Independent Pharma-ceutica AB

Trademark Trial and Appeal Board

Jan 25, 2005

No. 78160932 (T.T.A.B. Jan. 25, 2005)

Mailed: January 25, 2005
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Independent Pharmaceutica AB
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Serial No. 78160932
_______
R. Peter Spies and Laurel V. Dineff of Dineff Trademark Law
Limited for Independent Pharmaceutica AB.
John Dwyer, Trademark Examining Attorney, Law Office 116 (Meryl
Hershkowitz, Managing Attorney).
_______
Before Quinn, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Independent Pharmaceutica AB has filed an application
to register the mark "NICCIN" for "vaccines; [and] anti-smoking
pharmaceutical preparations in the form of tablets."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
1 Ser. No. 78160932, filed on September 5, 2002, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78160932
2
applicant's mark, when applied to its goods, so resembles the
mark "NICOCIN," which is registered for "pharmaceutical
preparations, namely, medications for suppressing, reducing, or
eliminating smoking and the urge to smoke,"2 as to be likely to
cause confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods and/or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 Here, inasmuch as applicant's "anti-smoking
pharmaceutical preparations in the form of tablets" and
registrant's "pharmaceutical preparations, namely, medications
for suppressing, reducing, or eliminating smoking and the urge to
smoke," encompass identical and otherwise very closely related
2 Reg. No. 2,358,337, issued on June 13, 2000, which sets forth a date
of first use anywhere and in commerce of January 1999.
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks." 192 USPQ at 29.
Ser. No. 78160932
3
goods,4 the focus of our inquiry is accordingly on the similarity
or dissimilarity of the respective marks.
Turning, therefore, to such issue, applicant argues in
its brief that "the respective marks are sufficiently dissimilar
so as to not cause consumer confusion." Specifically, applicant
maintains that the marks at issue appreciably differ in sound,
appearance and connotation inasmuch as:
Appellant's mark, NICCIN, is pronounced
NI-KIN, with the double C pronounced as a K.
Registrant's mark NICOCIN is pronounced NI-
KO-SIN, whereby the second C is pronounced as
an S. Even if Appellant's mark were to be
pronounced NIS-SIN, the marks are clearly
pronounced differently. In addition, the
combination of the two vowels "I" and "O" in
Registrant's mark create a three syllable
phonetically challenging word. Appellant's
mark is pronounced in two syllabus [sic] and
is straight forward to say out loud.
Consequently, the pronunciation of the
respective marks is clearly different and,
therefore, clearly distinguishable.
The respective marks are also visually
different. Registrant's mark involves a
visually larger word interrupted in the
middle by a visually obvious "O".
Appellant's mark ... appears visually more
homogeneous as is [sic] consist [sic] of only
three different letters. In fact,
Appellant's mark is a palindrome, which
4
Applicant, we note, does not contend otherwise. Although the
Examining Attorney, without any supporting evidence, asserts in his
brief that applicant's other goods, namely, "vaccines," are
"substantially related to, and/or within the logical field of
expansion of trade for the registrant" and that "vaccines and
pharmaceuticals are thus medical goods of a kind that may emanate from
a single source," it is well established that a refusal under Section
2(d) is proper if there is a likelihood of confusion involving any of
the goods listed in an application and any of those set forth in the
cited registration. Thus, where a likelihood of confusion is so
found, it is unnecessary to rule with respect to any of the other
goods listed in the application. See, e.g., Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981);
and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881,
883 (CCPA 1963).
Ser. No. 78160932
4
creates a significant visual difference to
the cited mark.
The respective marks convey a different
connotation. Registrant's mark closely
imitates the word nicotine visually and
phonetically, thereby creating a very
distinct and different connotation as
consumers will associate the term NICOCIN
with NICOTINE. On the other hand, no such
association can be drawn when encountering
Appellant's mark, which plays with consumer's
imagination as a palindrome, by the reverse
replication of "NIC" thereby creating a very
different connotation.
Applicant also contends that the respective marks do
not engender either the same or similar overall commercial
impression. In particular, in response to the evidence made of
record by the Examining Attorney to show that the formatives
"NIC" and "NICO" in the marks at issue are indicative of the word
"nicotine," which the Examining Attorney insists is the substance
responsible for many of the addictive effects of tobacco
products, applicant refers in its brief to an attached list from
"the acronym finder, which is located at www.acronymfinder.com,
[showing that] NIC is being used as an acronym for numerous
products, standards, organizations etc."5 Examples thereof,
applicant observes, include "NIC ... being used as an acronym for
'network interface card', 'national identification code',
5 Such list, however, was submitted for the first time with applicant's
brief as Exhibit 1 and thus is untimely under Trademark Rule 2.142(d)
insofar as it includes information which is not set forth in the
excerpt from the same website which the Examining Attorney made of
record with his final refusal. Nevertheless, inasmuch as the
Examining Attorney in his brief has not objected to the inclusion of
the evidence contained in Exhibit 1 and has implicitly considered such
in his brief, we have treated the evidence as being of record for
whatever probative value it may have. See In re Nuclear Research
Corp., 16 USPQ2d 1316, 1317 n. 2 (TTAB 1990).
Ser. No. 78160932
5
'National Intelligence Council', 'Network Information Center',
and 'Nicaragua (ISO country code)[']." Applicant urges, in view
thereof, that "[a]lthough NIC may be recognized as an acronym for
nicotine, the fact that NIC is also recognized for numerous other
terms ... indicates that Appellant's mark may not be associated
with nicotine unlike the [mark of the] cited registration" and
that "[t]he mere fact that the letters NIC are placed at the
beginning of both marks does not render the marks confusingly
similar per se."
In addition, applicant asserts that a likelihood of
confusion should not be found because registrant's mark is weak
and, as such, should not be afforded a broad scope of protection.
Specifically, applicant argues that since, as contended by the
Examining Attorney, the formative "NIC is a common acronym for
nicotine," registrant's "NICOCIN" mark "clearly suggests that it
covers nicotine related goods and smoking related products" and
therefore "must be considered highly suggestive" of registrant's
goods. Similarly, applicant maintains that registrant's mark
must be considered weak because, as shown by the copies which it
made of record of certain third-party registrations, "the
abbreviations NICO and NIC have been registered in many
variations and currently co-exist on the Register" for goods
"similar" to those of registrant. Examples of the marks which
are the subjects of such registrations include "NIC-AVERT," "KICK
NIC," "NICCHECK," "NICO-ECE," "NICO FIT," "NICO-PLEX," "NICO-
FUME," "NICODERM" and "NICORETTE." According to applicant, "the
widespread use of the abbreviation NIC and/or NICO by different
Ser. No. 78160932
6
owners as part of their marks ... for smoking related goods has
narrowed the scope of protection of these marks" such that "[a]ny
one of the aforementioned marks, including the [mark of] the
cited registration, containing the abbreviation NICO or NIC is
limited to substantially that exact trademark only."
Lastly, applicant "stresses that consumers shopping for
preparations that would enable them to quit smoking must be
considered sophisticated purchasers." According to applicant,
"[t]he products in question are usually sold at a substantial
price and are, therefore, being sold in special store sections
that are not accessible without customer assistance." In view
thereof, applicant maintains that confusion is not likely because
its goods and those of registrant "can be distinguished due to
the fact that consumers shopping for drugs and/or preparations
that will suppress their nicotine addiction will have formed an
opinion as to which product they will purchase or will ask the
person assisting in the sale of these products."
We concur with the Examining Attorney, however, that
contemporaneous use of the marks "NICCIN" and "NICOCIN" in
connection with the respective goods would be likely to cause
confusion as to the source or sponsorship of such goods. As a
starting point for our analysis, we note that, as pointed out by
the Examining Attorney, it is a general proposition that when, as
here, marks would appear in connection with the same or virtually
identical goods, the degree of similarity between the marks
necessary to support a conclusion of a likelihood of confusion
declines. See, e.g., Century 21 Real Estate Corp. v. Century
Ser. No. 78160932
7
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1994). Moreover, as the
Examining Attorney also properly observes, tribunals have long
recognized the need for a more "conservative approach to
determining a likelihood of confusion between trademarks used on
pharmaceutical preparations due to the harmful ... consequences
of mistakenly taking the wrong medication." Thus, as set forth
in 3 J. McCarthy, McCarthy on Trademarks & Unfair Competition
(4th ed. 2004) at §23:32 (footnotes omitted):
The tests of confusing similarity are
modified when the goods involved are
medicinal products. Confusion of source or
product between medicinal products may
produce physically harmful results to
purchasers and greater protection is required
than in the ordinary case. If the goods
involved are medicinal products each with
different effects and designed for even
subtly different uses, confusion among the
products caused by similar marks could have
disastrous effects. For these reasons, it is
proper to require a lesser quantum of proof
of confusing similarity for drugs and
medicinal preparations. ....
See also, Glenwood Laboratories, Inc. v. American Home Products
Corp., 455 F.2d 1384, 173 USPQ 19, 21 (CCPA 1972); and American
Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ 357,
360 (TTAB 1976).
We find, in light of the above, that when considered in
their entireties, applicant's "NICCIN" mark is substantially
identical to registrant's "NICOCIN" mark in both appearance and
sound, since the former differs from the latter only in the
absence of the letter "O." Even if consumers and/or medical
professionals were to notice such a minor difference, it is still
Ser. No. 78160932
8
the case that, structurally, the respective marks are essentially
identical. As the Examining Attorney persuasively argues in his
brief:
Both marks are palindromes, that is,
they both read the same backward or forward.
The act on the part of a potential purchaser
of consciously recognizing that the
registrant's mark is a palindrome adds a
memorable creative aspect to the registrant's
mark that further strengthens it as a mark.
That is, the registrant's coined mark is made
even stronger because it is an easily
remembered palindrome. Potential purchasers
of smoking cessation pharmaceutical
preparations, upon encountering two nearly
identical marks, both being palindromes,
would be more likely to believe that both
products originate from the same source, and
that the one letter difference is intended to
differentiate betweens [sic] aspects of the
products, such as that one is the newer
version or that the potency is different
between the two.
Furthermore, as to applicant's contention that its mark differs
substantially in pronunciation from registrant's mark, the
Examining Attorney correctly notes that it is well settled that
there is no correct pronunciation of a mark. See, e.g., In re
Great Lakes Canning, Inc., 227 USPQ 483, 484 (TTAB 1985); Gio.
Budon & C. S.p.A. v. Buitoni Foods Corp., 205 USPQ 477, 482 (TTAB
1979); Yamaha International Corp. v. Stevenson, 196 USPQ 701, 703
(TTAB 1977); and Sterling Drug Inc. v. Sankyo Co., Ltd., 139 USPQ
395, 396 (TTAB 1963). Clearly, the respective marks are
susceptible to being pronounced in substantially the same manner.
To the extent that the marks at issue, which appear to
be fanciful or coined terms, can each be said to have a
connotation or meaning, we find that both plainly suggest that
the respective goods are for combating the nicotine addiction
Ser. No. 78160932
9
associated with smoking. As the Examining Attorney notes in his
brief, the evidence of record includes an excerpt from the
"AcronymFinder" database showing that "'NIC' is an abbreviation
for nicotine." In addition, the Examining Attorney has made of
record excerpts of articles retrieved from the "NEXIS" database
which "demonstrate that both 'NIC' and 'NICO' are sometimes used
as abbreviations for 'nicotine' and/or as prefixes to refer to
nicotine." A sample of the most pertinent excerpts is as follows
(emphasis added):
"Smokers trying to quit will soon be
able to try a nicotine lozenge to satisfy nic
fits." -- Chicago Tribune, November 1, 2002;
"NICO-TEST: Cambridge biotech firm
DynaGen Inc. said the FDA approved its
nicotine-intake medical test yesterday ....
The firm said its NicCheck I kits can be used
by doctors to determine nicotine levels in
the body." -- Boston Herald, January 15,
1997;
"Patches and nicotine gum help satisfy
people suffering from 'nic fits' who don't
want to reach for cigarettes ...." -- Times
Union (Albany, NY), November 1, 1996;
"Justin ... said he's been smoking for
five years and is up to two packs a day. 'I
'nic' all the time in school,' he said,
meaning he suffers nicotine fits." -- Orlando
Sentinel, October 7, 1994;
"John's bizarre picks: Nico Cola. 'It
had nicotine in it. It was supposed to help
you stop smoking.'" -- St. Petersburg Times
(FL), August 31, 1994;
"Nick suffers numerous indignities, the
worst of which is a botched hit by 'nico-
terrorists,' who kidnap and plaster him top
to bottom with nicotine patches." -- Chicago
Tribune, June 27, 1994;
Ser. No. 78160932
10
"... why does my mother get distressed,
or my dad get irritable, when the nic fit
hits, and they cannot have their fix of
nicotine?" -- Sun (Baltimore, MD), May 15,
1994;
"To anyone who has experienced the
headaches, nausea and nasty mood swings of
nicotine withdrawal, or had to tolerate
someone in a 'nic fit,' the device sounds
like snake oil on a microchip." -- Houston
Chronicle, August 2, 1992; and
"With such a rule, the system also would
be less onerous to the nicotine-addicted poor
than would quadrupled tobacco taxes.
Ideally, a nico-dict won't have to cheat his
children of necessities to finance his
Marboros." -- Washington Post, January 1,
1986.
Furthermore, the Examining Attorney points out in his
brief that "[n]icotine is recognized as being 'responsible for
many of the effects of tobacco' and is 'powerfully addictive,'"
citing the following relevant excerpt which he made of record
from Stedman's Online Medical Dictionary (2003):
Nicotine in inhaled tobacco smoke or in
smokeless tobacco applied to buccal or nasal
mucosa enters the circulation within seconds,
causing an increase in heart rate,
ventricular stroke volume, and myocardial
oxygen consumption, as well as euphoria,
heightened alertness, and a sense of
relaxation. Nicotine use is powerfully
addictive, readily leading to habituation,
tolerance, and dependency. Withdrawal from
nicotine causes restlessness, irritability,
anxiety, difficulty concentrating, and
craving for nicotine. Addiction to nicotine
is the reason for most tobacco use and thus
directly responsible for the resulting
morbidity and mortality.
Based upon the foregoing, we concur with the Examining Attorney
that not only is it the case that "[p]otential purchasers of
applicant's and registrant's smoking cessation products could
Ser. No. 78160932
11
reasonably perceive the letters 'NIC-' and 'NICO-' in the
respective marks as referring to nicotine," but "the overall
commercial impression created by [each of] the two marks is the
same," given that in terms of connotation, "the beginning of each
mark could reasonably be perceived as referring to 'nicotine,'
and the end of each mark is the same."
While applicant, as indicated previously, makes much of
the fact that it has made of record information concerning a
number of third-party registrations for marks which begin with
the letters "NIC" or "NICO" for various nicotine related
products, such evidence does not constitute proof of actual use
of the marks which are the subjects thereof in the marketplace
and, consequently, that the purchasing public has become
conditioned to encountering anti-smoking products, including
pharmaceutical preparations or medications, under such marks and
is able to distinguish the source thereof based upon differences
in the elements of the marks. See, e.g., Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973); AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973); and In re Hub Distributing, Inc., 218 USPQ
284, 285-86 (TTAB 1983). Thus, with respect to anti-smoking or
smoking cessation products, the asserted weakness of marks which
begin with letters indicative of the word "nicotine" is of no aid
to applicant, especially in view of the substantial identity in
sound and appearance and virtual identity in connotation and
commercial impression which is present between applicant's
"NICCIN" mark and the cited registrant's "NICOCIN" mark.
Ser. No. 78160932
12
Finally, as to applicant's contentions that consumers
of pharmaceutical preparations to enable them to quit smoking
must be considered sophisticated purchasers and that such goods
are usually sold at both a substantial price and through special
store sections which require customer assistance, the Examining
Attorney correctly notes in his brief that "applicant has entered
no evidence into the record as to the cost of the goods."
Nonetheless, as the Examining Attorney also properly notes, even
assuming that applicant's and registrant's pharmaceutical
preparations are not inexpensive and would be prescribed and/or
purchased with care and deliberation, it is well settled that the
fact that consumers and/or their pharmacists and physicians may
exercise discrimination in choosing such products "does not
necessarily preclude their mistaking one trademark for another"
or that they otherwise are entirely immune from confusion as to
source or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re Decombe, 9
USPQ2d 1812, 1814-15 (TTAB 1988); In re Pellerin Milnor Corp.,
221 USPQ 558, 560 (TTAB 1983); and Schering Corp. v. Alza Corp.,
207 USPQ 504, 509 (TTAB 1980) [the fact that physicians and
pharmacists "are discriminating in their selection and make their
purchases only after careful consideration, and know from whom
they buy, does not mean that they are equally knowledgeable as to
trademarks and immune from mistaking one trademark for another"].
We accordingly conclude that consumers, as well as
pharmacists and physicians, who are familiar or acquainted with
registrant's "NICOCIN" mark for "pharmaceutical preparations,
Ser. No. 78160932
13
namely, medications for suppressing, reducing, or eliminating
smoking and the urge to smoke," would be likely to believe, upon
encountering applicant's substantially identical "NICCIN" mark
for "anti-smoking pharmaceutical preparations in the form of
tablets," that such legally identical and otherwise very closely
related goods emanate from, or are sponsored by or associated
with, the same source. See, e.g., Blansett Pharmacal Co. Inc. v.
Carmrick Laboratories Inc., 25 USPQ2d 1473, 1477 (TTAB 1992)
[confusion is likely, even for drugs prescribed by doctors and
dispensed by pharmacists, "where ... similar goods are marketed
under marks which look alike and sound alike"]. For instance,
such persons could readily believe, with potentially dangerous
results, that applicant's "NICCIN" anti-smoking tablets
constitute another product line or formulation of registrant's
"NICOCIN" medications for suppressing, reducing, or eliminating
smoking and the urge to smoke, or vice versa.
Decision: The refusal under Section 2(d) is affirmed.