Marc H. Blasser

Trademark Trial and Appeal Board

Oct 11, 2000

No. 75371632 (T.T.A.B. Oct. 11, 2000)

Paper No. 11
10/11/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Marc H. Blasser
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Serial No. 75/371,632
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Arthur G. Yeager for Marc H. Blasser
Margery A. Tierney, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney)
_______
Before Seeherman, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Marc H. Blasser has appealed from the final refusal of
the Trademark Examining Attorney to register the rhino design,
shown below, for "urological and erectile dysfunction clinical
services."1

1 Application Serial No. 75/371,632, filed October 10, 1997,
asserting first use and first use in commerce in October 1993. The
application is also for "golf balls" in Class 28, but the refusal of
registration applies only to the Class 42 services. Applicant has
referred to its mark as a "shield and rhino design" in its
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/371,632
2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark so resembles the rhinoceros design, shown
below, and registered for "pharmaceuticals used to treat
sexual dysfunction or to maintain male or female sexual
health"2 as to be likely to cause confusion or mistake or to
deceive. The mark is described in the application as "a
rhinoceros in a circle and the design will be used facing in
either direction."
The appeal has been fully briefed, but an oral hearing
was not requested.
We affirm the refusal of registration.
Our determination 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). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between

application; for ease of reference, we have used the term "rhino
design" in our opinion.
2 Registration No. 2,121,170, issued December 16, 1997.
Ser. No. 75/371,632
3
the goods and/or services. Federated Food, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, we find that they are very
similar in appearance. Both are designs of rhinoceroses.
Applicant goes to great length to detail the specific
differences in the marks, for example, by describing the cited
mark as "a modern caricature of only the head and neck portion
of a flat-bottomed jawed head with an inverted cone above a
stylized eye and with the large horn being sculpted to provide
a very large base with excessive recurve merging into a
circular border, likewise the neck merges into that same
border." Brief, p. 4. However, consumers are unlikely to
make such a detailed analysis of the designs, and thereby note
the various differences in the marks. Under actual marketing
conditions consumers do not have the luxury to make side-by-
side comparisons between marks, and instead they must rely on
hazy past recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). As a result, consumers
are likely to remember the marks as being similar, namely, the
design of a rhinoceros. To the extent that they would
remember that applicant's mark depicts the full body of a
rhinoceros on a rectangle background, while the registered
mark shows only the head on a circle background, they are
likely to think that the marks are variants of each other,
Ser. No. 75/371,632
4
rather than that they represent different sources of the goods
and services.
The marks also have the same connotation, namely, that of
a rhinoceros. Further, although design marks are not normally
articulated, if consumers were to refer to them, they would
describe both as rhinoceros designs, whether the design is a
full view or merely the head.
Accordingly, when considered in their entireties, we find
that the marks are very similar, and convey similar commercial
impressions, a factor that weighs heavily in favor of a
finding of likelihood of confusion.
Moreover, the cited mark must be considered a strong
mark. Another duPont factor is "the number and nature of
similar marks in use on similar goods." Although applicant
has submitted a number of third-party registrations for marks
containing rhinoceros designs, none of these registrations is
for goods or services similar to those of the applicant or
registrant. Specifically, five of the registrations are for
clothing, while the others are for heat protective apparel,
beer, breeding of animals, custom manufacture of shopping
containers, and commercial offset printing. Thus, this factor
too weighs in favor of a finding of likelihood of confusion.
Turning to the respective goods and services, the cited
registration includes "pharmaceuticals used to treat sexual
Ser. No. 75/371,632
5
dysfunction," and applicant's erectile dysfuction clinical
services must be considered a type of sexual dysfunction. As
a result, there is no question that applicant's services and
the registrant's goods are used for the same narrow purpose,
i.e., the treatment of erectile dysfunction. Further, they
would appeal to the same class of consumers, namely, people
with erectile dysfunction.
Applicant argues that drug companies do not practice
medicine, but goes on to state that "if a doctor is under
contract to perform clinical trials of a drug company3 and
seeks permission to use that drug company's mark in connection
with such trials, the public would correctly assume some
association between them." Brief, p. 5. Applicant asserts
that in his case no association would be found because of the
differences in the marks and in the goods and services.
We are not persuaded by applicant's argument. As
indicated above, we find the marks to be very similar.
Further, although applicant renders services, and the cited

3 The Examining Attorney has submitted a story from the NEXIS data
base discussing doctors' performing clinical trials of drugs.
Applicant has objected to this article because it was written one
year after the filing of the application, and over two years after
applicant's first use of his mark. Applicant's objection is not
well taken. The article was properly made of record during the
examination of the application, and is relevant to our assessment of
likelihood of confusion, which is determined as of the time of
appeal, not as of an applicant's first use of its mark or the filing
of its application.
Ser. No. 75/371,632
6
registration is for drugs, we find the services and drugs to
be sufficiently related that, if a similar mark were used for
both, confusion would be likely to occur. It is well
established that it is not necessary that the goods or
services of the parties be similar or competitive, or even
that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that the
respective goods or services of the parties are related in
some manner, and/or that the conditions and activities
surrounding the marketing of the goods or services 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 producer. See In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In this case, the fact that both applicant's services and
the registrant's goods are used for the same, limited purpose,
and would be used by the same class of consumers, is
sufficient to demonstrate that relationship, such that this
factor weighs in favor of a finding of likelihood of
confusion.
We recognize that the channels of trade for applicant's
services and the registrant's goods are different. However, a
doctor or clinic providing erectile dysfunction clinical
Ser. No. 75/371,632
7
services may suggest a pharmaceutical product, such as the
registrant's, to treat sexual dysfunction. Or a patient of
such a clinic may encounter over-the-counter pharmaceutical
products for sexual dysfunction in a drugstore,4 or may be
exposed to such prescription drugs through advertising. It is
common knowledge that pharmaceutical companies advertise
prescription drugs directly to the ultimate consumer through
television and newspaper ads.
Thus, although there are specific differences in the
channels of trade, patients are likely to encounter both
applicant's services and the registrant's identified
pharmaceuticals. Accordingly, this factor is at most neutral
in the likelihood of confusion analysis.
Applicant also asserts that the customers for the
respective services and goods are sophisticated. We agree
that physicians would be both sophisticated and careful
purchasers and because of that sophistication, are not
necessarily likely to believe that clinical services and
pharmaceuticals emanate from the same source, even if offered
under similar marks. However, patients suffering from
erectile dysfunction must also be considered consumers of the
respective services and goods. Although we must assume that

4 The "pharmaceuticals" identified in the cited registration are not
limited to prescription drugs.
Ser. No. 75/371,632
8
they would be careful in their purchase of medical goods and
services, they would not be sophisticated enough about medical
practice to assume that pharmaceutical companies offering a
drug for erectile dysfunction would not sponsor or operate a
clinic treating such a problem, particularly when there has
been publicity about physician's conducting clinical trials of
pharmaceutical products. Because of this, and because of the
similarity of the marks, even if the ultimate consumers were
to exercise care in their purchase of the goods or services,
they are likely to be confused. Thus, although in general the
factor of care in making the purchase would favor an
applicant, in this case it is, at the very best, neutral.
Finally, applicant argues that he is not aware of any
instances of actual confusion as of the filing of his brief in
June 1999. However, the registrant's claimed date of first
use of its mark is December 1996. Not only is this time
period very limited, but we do not have any information about
the extent of either applicant's use and advertising, or the
registrant's use and advertising, for us to conclude that
there has been an opportunity for confusion to occur if it
were likely to occur. In this connection, we note that
applicant appears to render its services only in Orange Park,
Florida, while the registrant is located in California. Thus,
Ser. No. 75/371,632
9
we must count this factor as neutral in our determination of
likelihood of confusion.
After weighing the various factors, as discussed above,
we find that applicant's mark, used in connection with
urological and erectile dysfunction clinical services, is
likely to cause confusion with the registered mark for
pharmaceuticals used to treat sexual dysfunction or to
maintain male or female sexual health.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
T. J. Quinn
D. E. Bucher
Administrative Trademark Judges
Trademark Trial and Appeal Board