Merck & Co., Inc.v.Nephro-Tech I, LLC

Trademark Trial and Appeal Board

Aug 31, 2004

No. 91125109 (T.T.A.B. Aug. 31, 2004)

Oral Hearing:
April 20, 2004
Mailed: August 31, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Merck & Co., Inc.
v.
Nephro-Tech I, LLC
_______
Opposition No. 91125109
to Application No. 76263120
filed on May 29, 2001
_______
William R. Hansen and Bridget A. Short of Duane Morris LLP
for Merck & Co., Inc.
Steven H. Mustoe and Justin D. Pulikkan of Seaman Stoll
Mustoe & McCrummen for Nephro-Tech I, LLC.
_______
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Merck & Co., Inc. filed its opposition to the
application of Nephro-Tech I, LLC to register the mark
FORMAX for “pharmaceutical; namely dietary supplement for
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Opposition No. 91152156
2
phosphate binding and calcium supplementation,” in
International Class 5.1
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered mark
FOSAMAX for “pharmaceutical preparations for the treatment
and prevention of bone disease”2 as to be likely to cause
confusion, under Section 2(d) of the Trademark Act. Opposer
also alleges that its mark is distinctive and famous, and
asserts dilution as an additional ground of opposition.
Applicant, in its answer, denies the salient
allegations of the claim.3
The Record
The record consists of the pleadings; the file of the
involved application; a certified status and title copy of
Registration No. 1,710,682; and the responses of applicant
to opposer’s interrogatories, all made of record by
opposer’s notice of reliance; and the testimony deposition
by opposer of David Baker, opposer’s senior director of

1 Application Serial No. 76263120, filed May 29, 2001, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
2 Registration No. 1,710,682, issued August 25, 1992, in International
Class 5. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively; renewed.]
3 Applicant included with its answer a counterclaim to cancel opposer’s
pleaded registration. The Board gave applicant a period of time in
which to submit the required fee in connection therewith; however,
applicant, instead, withdrew its counterclaim.
Opposition No. 91152156
3
marketing for the osteoporosis therapeutic business group,
with accompanying exhibits. Applicant filed no testimony or
other evidence. Both parties filed briefs4 on the case and
an oral hearing was held at which counsel for both parties
appeared.
Factual Findings
Opposer’s FOSAMAX branded product is a prescription
drug used to prevent and treat osteoporosis and to treat
Paget’s disease, both of which are bone diseases. (Baker
Dep. p. 10) Osteoporosis is a bone thinning disease that is
particularly common among post-menopausal women. (Baker
Dep. p. 18.) Since the fall of 1995, opposer has promoted
its FOSAMAX product through sales representative visits and
direct mailings to physicians, patient education material
for physicians to give to patients, samples of the product
provided to physicians, advertising in medical journals, and
direct-to-consumer advertising.5 For example, opposer
spends approximately one million dollars annually on journal
advertising, eight million dollars annually on distributed
samples, and in 2002, approximately 75 million dollars for
its 2,000 sales representatives. The sales representatives

4 On January 17, 2004, the Board expressly accepted applicant’s brief
filed on December 21, 2003. Although, at the oral hearing, opposer
continued its objection to the brief filed by applicant, we find no
error with the Board order and no prejudice to opposer. Therefore,
applicant’s brief has been considered.
5 Direct-to-consumer advertising is conducted by opposer principally via
television, magazines and newspapers.
Opposition No. 91152156
4
target approximately 70,000 U.S. physicians who prescribe
osteoporosis medicine. (Baker Dep., pp. 41-42.)
Opposer’s web site address for information about this
product is www.fosamax.com. In 2002, this web site had
220,842 unique visitors,6 and in the first five months of
2003, the web site had 118,544 unique visitors. (Baker
Dep., p. 82.) Every month, to determine the effectiveness
of its direct-to-consumer advertising, opposer conducts a
market research study of randomly chosen women over the age
of 50 to determine their awareness of opposer’s FOSAMAX
product. The study results show that overall FOSAMAX brand
awareness grew from 31% of women polled in 2000 to 59% of
women polled in 2002. (Baker Dep., pp. 84-85, and exh. 33.)
However, the record contains no information regarding the
methodology involved in these studies or the numbers of
women polled.
There are four competing osteoporosis drugs and
opposer’s FOSAMAX is the market leader, with a 54% market
share, whereas the next closest competing product has a 20%
market share. (Baker Dep., p. 47.) FOSAMAX prescriptions
dispensed increased from 800,000 in January 2000 to
approximately 1.8 million in March 2003. (Baker Dep., p.
46.) Opposer’s FOSAMAX sales totaled approximately $1.3

6 A “unique” visitor represents one individual rather than the number of
times that individual may have visited the site.
Opposition No. 91152156
5
billion in 2001, $1.5 billion in 2002, and $585 million in
the first quarter of 2003. (Baker Dep., p. 51.)
In 2002, opposer partnered with the maker of VIACTIV, a
calcium and vitamin D supplement, to distribute kits that
include samples of VIACTIV and educational information about
bone density testing, osteoporosis and FOSAMAX. Mr. Baker
stated that calcium and vitamin D supplements are
recommended by physicians for the prevention of
osteoporosis; that physicians recommend taking such
supplements along with FOSAMAX or another osteoporosis drug
in the treatment of osteoporosis; and that opposer provides
calcium and vitamin D supplements to all patients involved
in its clinical trials for osteoporosis drugs.
In a letter from applicant to opposer, dated January
21, 2003, (Baker Dep., Exh. 25) applicant asked opposer if
it would be interested in partnering or acquiring
applicant’s calcium supplement technology. Opposer
responded that it was not interested.
Applicant described its proposed FORMAX branded product
as “a calcium supplement containing calcium formate” and
stated that it selected its mark “by combining the words
formate (calcium formate) and maximum, … [which] enables the
marketing by-line ‘for maximum calcium absorption, FORMAX.’”
(Applicant’s answers to opposer’s first set of
interrogatories, No. 4.) Applicant acknowledged that it was
Opposition No. 91152156
6
aware of opposer’s mark used in connection with its
identified goods at the time it selected the FORMAX mark.
Applicant has neither used the FORMAX mark on the identified
goods nor promoted or advertised the mark. However,
applicant stated that it intends to sell its product
directly to consumers through health food stores and other
retail outlets for such products.
Analysis
Likelihood of Confusion
Inasmuch as a certified copy of opposer’s registration
is of record, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative 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). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
Opposition No. 91152156
7
544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Opposer contends that FOSAMAX is a famous mark entitled
to a broad scope of protection; that FOSAMAX and FORMAX are
similar in appearance, sound, connotation and commercial
impression; that the parties’ goods are related and move
through overlapping channels of trade, noting that, while
opposer’s product is available by prescription only, both
products will be available at pharmacies; and that consumers
are likely to mistakenly believe that applicant’s calcium
supplement comes from the same source as opposer’s
prescription osteoporosis medication.
Applicant contends that the marks are different in
appearance, sound, connotation and commercial impression,
noting that the marks share only the suffix MAX; that the
goods are unrelated, noting that the chemical composition of
the products is different and the products are intended for
different purposes; that the goods are not competitive,
noting that its product is an over-the-counter dietary
supplement and opposer’s product is a prescription drug;
that, except for pharmacies, the products will not be sold
in the same store; that opposer’s product is prescribed only
by doctors and dispensed only by pharmacists and, thus, is
purchased with care; and that the fame of opposer’s mark is
Opposition No. 91152156
8
limited to a prescription drug for the treatment and
prevention of osteoporosis.7
The first du Pont factor we consider is the fame of
opposer’s mark. Opposer submitted sufficient evidence of
the extent of its advertising, sales and consumer awareness
to warrant the conclusion that FOSAMAX is a famous mark for
pharmaceutical preparations for the treatment and prevention
of bone disease. As our primary reviewing Court has made
clear, fame of the prior mark plays a dominant role in cases
featuring a famous or strong mark. “Famous or strong marks
enjoy a wide latitude of legal protection” and a famous mark
“casts a long shadow which competitors must avoid.” Kenner
Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d
350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992); and Recot, Inc.
v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed. Cir.
2000). In this regard, the Court has noted that there is
“no excuse for even approaching the well-known trademark of
a competitor … and that all doubt as to whether confusion,
mistake, or deception is likely is to be resolved against
the newcomer, especially when the established mark is one
which is famous.” Kenner Parker Toys, 22 USPQ2d at 1456;
and Nina Ricci S.A.R.L. v. E.T.F. Enterprises, Inc., 889
F.2d 1070, 2 USPQ2d 1901, 1904 (Fed. Cir. 1989). This is so

7 In its reply brief, opposer objected to statements of fact in
applicant’s brief that are outside the record. These statements of
alleged fact have not been considered.
Opposition No. 91152156
9
because “a well-known mark enjoys an appropriately wider
latitude of legal protection, for similar marks tend to be
more readily confused with a mark that is already known to
the public.” Opryland USA, Inc. v. Great American Music
Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1474 (Fed. Cir.
1992). See also Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir.
1984)(involving the marks SPICE ISLANDS and SPICE VALLEY).
Turning to consider the goods of the parties, we
observe that both the goods identified in the application
and the goods identified in the pleaded registration are
“pills”; that both products are used by the consumer in
connection with bone health and, while opposer’s FOSAMAX is
used for the treatment of osteoporosis, it is also used for
the prevention of osteoporosis, as is applicant’s calcium
supplement. Further, the record establishes that calcium
supplements and opposer’s medication are regularly used
together and that opposer has advertised its product
together with a calcium supplement. Indeed, this
complementary relationship is shown by applicant’s attempt
to partner its product with opposer’s product. Thus, in use
and purpose, applicant’s identified calcium supplement is
closely related to the osteoporosis medication identified in
opposer’s registration. This relationship is not mitigated
by the fact that one product is an over-the-counter
Opposition No. 91152156
10
supplement and the other is a prescription medication.
Thus, regardless of the fame of opposer’s mark, we conclude
that the goods of the parties are closely related.
Further, both opposer’s and applicant’s identifications
of goods are broadly worded, without any limitations as to
channels of trade or classes of purchasers. We must presume
that the goods of the applicant and opposer are sold in all
of the normal channels of trade to all of the usual
purchasers for goods of the type identified. See Canadian
Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). In other words, as applicant has
acknowledged, the channels of trade are overlapping and the
class of purchasers of the parties’ goods, i.e., consumers,
are the same.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “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.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Opposition No. 91152156
11
As applicant concedes, both marks consist of the suffix
“MAX.” While applicant indicated what it intends the
connotation of the MAX portion of its mark to be, there is
no evidence that consumers would so understand the suffix or
that it would be perceived as having a different connotation
from the identical suffix in opposer’s mark. Additionally,
both marks begin with the letters “FO.” In view of the
related nature of the goods and the established fame of
opposer’s mark, which entitles it to a broad scope of
protection, we find that the marks FOSAMAX and FORMAX are
substantially similar.
In conclusion, in view of the substantial similarity in
the commercial impressions of applicant’s mark, FORMAX, and
opposer’s mark, FOSAMAX, their contemporaneous use on the
closely related goods involved in this case is likely to
cause confusion as to the source or sponsorship of such
goods.
Dilution
Because we have found that opposer has priority and
that a likelihood of confusion exists, we need not, and do
not, reach opposer’s claim of dilution under Section 43(a)
of the Trademark Act.
Decision: The opposition is sustained.