Novartis Int’l. Pharma-ceutical, Ltd.v.Genetic Immunity, LLC

Trademark Trial and Appeal Board

Feb 24, 2004

No. 91124457 (T.T.A.B. Feb. 24, 2004)

Mailed: 2/24/04
Paper No. 26
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Novartis International Pharmaceutical, Ltd.
v.
Genetic Immunity, LLC
_____
Opposition No. 91124457
to application Serial No. 78052908
filed on March 13, 2001
_____
Peter S. Sloane of Ostrolenk, Faber, Gerb & Soffen, LLP for
Novartis International Pharmaceutical, Ltd.
Valerie E. Looper of The Law Office of Valerie E. Looper for
Genetic Immunity, LLC.
______
Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Novartis International Pharmaceutical, Ltd. has opposed
the application of Genetic Immunity, LLC to register
DERMAVIR as a trademark for "vaccines and vaccine
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91124457
2
adjuvants."1 As grounds for opposition, opposer has alleged
that it manufactures and sells a wide variety of
pharmaceutical products; that it has used the trademark
DENAVIR for an antiviral to treat cold sores and related
skin disorders since as early as 1996, and prior to the
March 13, 2001 filing date of applicant's intent-to-use
application; that it owns a number of registrations for
DENAVIR and DENAVIR and design marks for "pharmaceutical
preparations, namely antivirals" and for "pharmaceutical
preparations, namely anti-viral preparations and
preparations for treatment of cold sores and related skin
disorders; and that applicant's use of DERMAVIR for vaccines
and vaccine adjuvants is likely to case confusion, mistake
and/or deception.
In its answer, applicant has admitted that it is aware
that opposer is a large international pharmaceutical company
that sells a number of pharmaceutical and other products;
that it is aware that opposer uses the mark DENAVIR for
penciclovir cream 1%, which is marketed and sold as a
topical treatment for cold sores; that it is aware that
opposer uses the trademark DENAVIR on labeling, packaging,
materials, product literature and advertisements for
penciclovir cream 1%, which is marketed and sold as a
1 Application Serial No. 78052908, filed March 13, 2001 and
asserting a bona fide intention to use the mark in commerce.
Opposition No. 91124457
3
topical treatment for cold sores; and has denied the
remaining salient allegations in the notice of opposition.
The record includes the pleadings; the file of the
opposed application; the testimony, with exhibits, of
opposer's witness, Jennifer Stuart; various documents made
of record by opposer pursuant to a notice of reliance; and
materials made of record by applicant under a notice of
reliance.
Only opposer filed a brief; an oral hearing was not
requested.2
The opposition is sustained.
The record needs further discussion. First, it is
noted that both opposer and applicant have submitted with
their notices of reliance material taken from certain
Internet websites. Generally material which is available
only on a website does not qualify as a printed publication
under Trademark Rule 2.122(e). See Raccioppi v. Apogee
Inc., 47 USPQ2d 1368 (TTAB 1998). However, because both
parties have treated such material as though it may be made
2 It is noted that, although opposer timely filed its brief on
the case on March 31, 2003 (with a certificate of mailing dated
March 28, 2003), it was not initially associated with the file,
and therefore, on May 27, 2003, the Board issued an order to show
cause because opposer had presumably not filed its brief. The
brief was subsequently associated with the file, and on June 25,
2003, the Board set aside the order to show cause. Applicant's
brief was due by April 28, 2003, prior to the Board's order to
show cause. Therefore, it is clear that no confusion was caused
to applicant by the Board's show cause order, and that applicant
simply chose not to file a brief on the case.
Opposition No. 91124457
4
of record in this manner, we deem the parties to have
stipulated to the admission of these documents, and have
considered them.
With its notice of reliance, applicant submitted its
request for production of documents and opposer's written
responses thereto, although it did not submit the actual
documents that were produced. Trademark Rule
2.120(j)(3)(ii) provides that documents obtained under Rule
34 of the Federal Rules of Civil Procedure may not be made
of record by notice of reliance. In this case, because
applicant has not actually submitted any documents, and
because opposer has treated applicant's entire notice of
reliance of record, we have considered the responses to be
of record for whatever probative value they may have.
Applicant also filed a "motion for estoppel sanction
and objection to notice of reliance," which motion was
deferred by the interlocutory motions attorney until final
hearing. Thus, we now take up this motion for
consideration. Applicant contends that certain exhibits to
the testimony of Jennifer Stuart, and testimony related
thereto, as well as two exhibits submitted under opposer's
notice of reliance,3 should not be considered by the Board
3 The specific evidence to which applicant objects are Exhibits
2, 3, 5, 8-31 and 33-35 to the testimony deposition of Jennifer
Stuart (and the testimony relating thereto), and Exhibits C and D
submitted with the notice of reliance.
Opposition No. 91124457
5
because opposer had not made these materials available in
response to applicant's discovery requests.
Applicant has asserted that case law precludes opposer
from introducing evidence that it previously refused to
furnish during discovery. That is certainly the general
rule. In this case, opposer objected to many of applicant's
discovery requests, generally on the basis that the
particular request was vague or overbroad or would require
the disclosure of confidential commercial information.
There is no indication that, upon receiving the responses
and objections, applicant made any effort to confer with
opposer in order to have its discovery requests satisfied.
The Board frowns on such actions. Discovery is
designed to be a cooperative process, and if applicant
believed that its discovery requests were appropriate, it
should have contacted opposer to make a good faith effort to
resolve any discovery disputes and, with respect to its need
for confidential material, to arrange for a protective
order. Applicant has provided no explanation as to why,
after receiving the responses, it did not make such
attempts. For all we know, applicant may have done so in a
strategic ploy to limit opposer's evidence to the discovery
documents which were provided. Whatever applicant's
motives, because applicant did not contact opposer in order
to make clear that it still sought particular information
Opposition No. 91124457
6
through discovery, and thereby seemingly acceded to
opposer's objections, we consider applicant to have waived
its rights for more complete responses. See Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002)
(despite applicant's apparent dissatisfaction with opposer’s
interrogatory responses, applicant never filed a motion to
compel further responses from opposer; applicant will not
now be heard to complain that opposer’s discovery responses
were inadequate).
In support of its motion, applicant relies on Weiner
King, Inc. v. The Weiner King Corporation, 615 F.2d 512, 204
USPQ 820, 828 (CCPA 1980). However, the facts of that case
are distinguishable from the case at hand. Weiner King had
served interrogatories upon WKNC, seeking to discover facts
upon which WKNC would rely to establish the chronology and
geographical extent of its use of its marks. WKNC objected
to and refused to answer interrogatories on the ground that
the requested information was irrelevant and immaterial.
Later, during its testimony period, WKNC attempted to
introduce into evidence facts bearing on those very issues.
The Court stated that where a party seeks to discover facts
which it expects the other party to introduce into evidence
and the other party represents that all of those facts are
already of record, the first party has a right to expect
reliance by the other party on only those facts which were
Opposition No. 91124457
7
of record. Further, the Court found that WKNC's objection
to the interrogatories amounted to a representation that
this information would not be the subject of testimony. As
a result, it would have been absurd for Weiner King to have
made a motion to test the sincerity of this representation.
In the present case, however, opposer's objections were
to the form of the interrogatories and document production
requests. This is not a situation in which opposer claimed,
in response to the discovery requests, that the information
sought was irrelevant, and then took an inconsistent
position during testimony, submitting such evidence and
claiming that it was relevant to its position. This case,
thus, is more akin to Linville v. Rivard, 41 USPQ2d 1731
(TTAB 1996), aff'd on other grounds, Rivard v. Linville, 133
F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998), in which
respondent objected to interrogatory and production requests
as "vague and ambiguous, and overly burdensome." The Board
held that these objections were not of a nature which would
have led petitioner to believe that no such documents
existed. As a result, and because petitioner did not file a
motion to compel, petitioner's complaint that the documents
were not identified and produced was not given any
consideration.
For similar reasons, we find that opposer is not
precluded from making of record evidence which it had
Opposition No. 91124457
8
stated, in response to applicant's discovery requests, was
confidential. Opposer did not refuse to make such
information available to applicant; on the contrary,
opposer's responses to applicant's first set of discovery
requests to opposer stated only that "opposer will not
disclose [the confidential information] unless appropriate
confidentiality safeguards are in place." Definition No. 2.
It reiterated this offer in responses to specific
interrogatories, including its response to Interrogatory No.
12, which requested annual sales revenues for the DENAVIR
products, and Interrogatory No. 13, which requested the
annual cost of advertising the products sold under the
DENAVIR mark: "Opposer will provide this information once a
confidentiality agreement is in place." Applicant never
made any attempt to pursue such an agreement. Nor did
opposer take an inconsistent position with respect to the
confidential nature of its materials by asserting during
discovery that the discovery requests called for
confidential information, and then, during its testimony
period, treating such information as not confidential.
Rather, opposer moved the Board to put a protective order in
place so that it could make such evidence of record during
its testimony period. Compare, Super Valu Stores Inc. v.
Exxon Corp., 11 USPQ2d 1539 (TTAB 1989); Visual Information
Opposition No. 91124457
9
Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB
1980).
In addition to applicant's overall position that
documents and information not provided during discovery may
not be made of record by the responding party during its
testimony period, applicant has discussed the particular
exhibits and why they should have been furnished in response
to specific discovery requests. The objections to the
exhibits, and the number of exhibits, are extensive, and we
will not further burden this opinion with an exhaustive
discussion of them. Applicant's motion is not a motion to
compel, and we will not treat it as such. More importantly,
even if we were not to consider the objected-to exhibits and
related testimony, we would still find that opposer has met
its burden of proof, and that the opposition should be
sustained. Therefore, because we have not discussed the
objected-to evidence in our rendering out decision, we will
not discuss the particular objections to such evidence. We
will say only that, for the most part, we do not agree with
applicant's claim that particular exhibits should have been
provided by opposer in response to the specific discovery
requests listed by applicant in its motion for estoppel
sanction.
This brings us to the substantive issue in this
proceeding, priority and likelihood of confusion.
Opposition No. 91124457
10
The record shows that opposer, through its sister
company Novartis Consumer Health, uses the mark DENAVIR in
the United States on a prescription antiviral medication for
the treatment of cold sores. The DENAVIR mark has been used
in the United States since December 1996. It was originally
used by SmithKline Beecham p.l.c. The product is sold in
the form of a cream, and its active ingredient, penciclovir,
penetrates the skin to target the infected cells and attack
the herpes simplex type 1 virus, and also blocks the virus
from replicating.
Approximately 40 million Americans suffer from cold
sores each year; the consumers for opposer's product are
both men and women, age 18 and above. In its website
(www.denavir.com) and other advertising and promotional
materials, opposer advises sufferers of cold sores to see
their doctor or dentist for a diagnosis, since the DENAVIR
product is sold only by prescription. The medical personnel
who prescribe DENAVIR medication are primarily OB/GYN's,
dermatologists, primary care physicians and dentists.
Until September 10, 2002, DENAVIR medication was the
only FDA-approved prescription drug to treat cold sores; as
a result, opposer had 100% of the market share of FDA-
approved prescription medications to treat this problem.
Opposer sells its DENAVIR product primarily to drug
wholesalers, who then sell to retail pharmacies. It also
Opposition No. 91124457
11
sells its product through hospitals, long-term care
facilities, and mail order and Internet pharmacies.
Opposer has operated the DENAVIR Internet website since
1999. It is directed to consumers who have cold sores and
those who prescribe DENAVIR for cold sores. In addition,
opposer advertises its DENAVIR medication through direct-to-
consumer advertising such as mass media, television and
print. These advertisements encourage potential consumers
to talk to their doctors or dentists about the benefits of
using the DENAVIR product to treat their cold sores.
Opposer also does medical promotions, using over 1,000
company sales reps and 40 contract sales reps to educate
prescribers about the benefits of the DENAVIR product.
Opposer's reps contact approximately 40% of primary care
physicians. Doctors and dentists are often given single-use
samples to give to their patients, with approximately 1.5
million samples having been given to physicians in both 2001
and 2002. Opposer also planned to launch patient education
brochures through direct mail in 2003.
Applicant filed its application based on an intention
to use the mark, and has not filed an amendment to allege
use. However, its responses to discovery requests state
that is now using the mark DERMAVIR in the United States in
connection with its research and development activities
relating to its vaccine for HIV infection. Applicant
Opposition No. 91124457
12
expects that its vaccine will be available only through
physicians, and the ultimate customers will be people
infected with HIV. Applicant's market research indicates
that customers might pay $8,000-$10,000 per year for
treatment.
Priority is not in issue, in that opposer has made of
record status and title copies of its pleaded registrations
for DENAVIR. King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). See, for
example, Registration No. 2,139,789, issued February 24,
1998 for "preparations for the treatment of cold sores and
related skin disorders"; Registration No. 2,139,703, issued
February 24, 1998 for "pharmaceutical preparations, namely,
antivirals."
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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003).
Opposer's mark is DENAVIR; applicant's mark is
DERMAVIR. The similarities in appearance are obvious. Both
begin with the letters "DE" and end with the letters "AVIR."
The only differences in the mark, the letter "N" in
Opposition No. 91124457
13
opposer's mark and the letters "RM" in applicant's mark, are
buried in the center of the marks. And even the letters
which are different look similar, at least in terms of the
"N" and "M."
The pronunciation of the marks is also similar.
Although there is no correct pronunciation of an invented
term, as these marks appear to be, they are likely to be
pronounced in a similar manner, both having three syllables
with an accent on the first syllable. Both also begin with
the "DE" sound, and end with the "AVIR" sound. The
similarities in pronunciation between "M" and "N" are
obvious. Although there is no "R" sound in opposer's mark,
this letter conveys a "soft" sound which is not emphasized
when applicant's mark is spoken.
With respect to the connotation of the marks, the
evidence shows that "VIR," with which both marks end,
indicates an antiviral substance. See USP Dictionary, 2002
(Exhibit J to opposer's notice of reliance)). The third-
party registrations submitted by applicant for various "VIR"
marks reinforce that "VIR" has such a meaning. See, for
example, COMBIVIR for “anti-viral pharmaceutical
preparations and substances” (Reg. No. 2,158,546); DOCOSAVIR
for "jojoba plant extract used to help alleviate symptoms
associated with envelope virus infections" (Reg. 2,586,423);
and EPIVIR for "pharmaceutical preparations, namely anti-
Opposition No. 91124457
14
infectives, antibiotics and anti-bacterials."4 Third-party
registrations are probative to the extent that they serve to
suggest that the "VIR" portion of the various marks,
including opposer's and applicant's, convey their dictionary
meaning. See Tektronix, Inc. V. Daktronics, Inc., 187 USPQ
588 (TTAB 1975).
The presence of this element in both marks would not,
alone, be sufficient to find a likelihood of confusion;
however, the overall similarities in appearance and sound
between the marks is far greater than the fact that both
include "VIR." In this connection, we note that the only
third-party registrations submitted by applicant for a "VIR"
mark that begins with the letter "D" are DOCOSAVIR,
mentioned above, and DOXOVIR (Reg. No. 2771047).5 Moreover,
opposer's witness testified that she was unaware of any
other trademarks for pharmaceuticals that begin with the
letter "D" and end with the letters "VIR."
Although we take judicial notice that "DERMA," which
forms the beginning of applicant's mark, may have the
meaning of "a layer of skin,"6 there is nothing in the
4 In addition to the third-party registrations, applicant also
submitted a significant number of third-party applications. Such
applications have limited probative value, showing only that the
applications were filed.
5 This mark was the subject of an application at the time
applicant filed its notice of reliance, but has since been
registered.
6 The American Heritage Dictionary of the English Language, ©
1970).
Opposition No. 91124457
15
record to indicate that this would be the connotation
accorded to applicant's mark because of the goods on which
it is used. Thus, with the exception of the "VIR" suffix,
we must assume that both opposer's mark and applicant's mark
have arbitrary connotations.
We therefore find that the factor of the similarity of
the marks favors opposer. We further find that there is no
evidence of use of similar marks on similar goods, the mere
fact that other marks include the element "VIR" not being
sufficient to show that such third-party marks are similar.7
Thus, this factor, too, favors opposer.
Turning to the goods, opposer's registrations for
DENAVIR include goods identified simply as "pharmaceutical
preparations, namely antivirals." These registrations do
not limit opposer's goods to antivirals used for any
particular purposes. Similarly, applicant's application is
not limited to vaccines for the prevention of any particular
ailment; the identification is simply for "vaccines and
vaccine adjuvants."8 Thus, any distinctions between the
7 The third-party registrations submitted by applicant are not
evidence that the marks shown therein are in use. However, in
its responses to applicant's requests for admissions, opposer has
admitted third-party use of, inter alia, IMMUVIR for a herbal and
nutritional supplement, NORVIR for an inhibitor of HIV protease,
RETROVIR for a pyrimidine nucleoside analogue active against HIV,
EIPIVIR, a synthetic nucleoside analogue with activity against
HIB and hepatitis B virus; COMBIVIR for synthetic nucleoside
analogues with activity against HIV, and TRIZIVIR for synthetic
nucleoside analogues.
8 Adjuvants are chemicals which enhance the antigenicity of other
biochemicals, and therefore the inclusion of adjuvants in
Opposition No. 91124457
16
actual uses to which opposer puts its antiviral preparations
and applicant puts its vaccines is of no moment. It is well
established that the question of likelihood of confusion
must be determined based on an analysis of the mark as
applied to the goods and/or services recited in applicant's
application vis-à-vis the goods and/or services recited in
an opposer's registration, rather than what the evidence
shows the goods and/or services to be. Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987).
Opposer has shown that there is a clear connection
between antiviral preparations and vaccines. First,
vaccines are generally made of viruses which have been
weakened or killed. See Exhibit I to opposer's notice of
reliance. Second, antivirals and vaccines are both used in
the fight against viral diseases. For example, an article
in the September 18, 2002 issue of "Vaccine Weekly"
discusses the costs and benefits of flu vaccination and
treatment of patients with antiviral medication. An article
in the June 12, 2002 issue of the same publication
speculates about a vaccine-antiviral combination which could
be used to break immune tolerance in humans infected with
hepatitis B virus. Third, companies are engaged in
vaccines greatly increases the effectiveness of the vaccine. See
Atlas, Microbiology, © 1984, Exhibit I to opposer's notice of
reliance.
Opposition No. 91124457
17
developing and manufacturing both antivirals and vaccines.
A July 31, 2002 article from PR Newswire reports on Panacos
Pharmaceuticals, "a privately held antiviral drug and
vaccine development company." In addition, an August 6,
2002 article from PR Newswire reports on the
biopharmaceutical company, Novavax, Inc., stating that its
products "include certain hormone, anti-bacterial, and anti-
viral products and vaccine adjuvants."
It is not necessary that the goods 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 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 producer. In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). In this case, because of the close
relationship between antivirals and vaccines, their use in
fighting the same illnesses, including their possible
combined effect in such treatment, and their development by
the same companies, we find that the parties' goods are
related. Accordingly, this factor favors opposer.
Opposition No. 91124457
18
In terms of classes of customers, both opposer's
antivirals and applicant's vaccines may be sold to
physicians and to hospitals for dispensing to those patients
requiring such medications. These sophisticated customers
would be aware of the connections between antivirals and
vaccines discussed above, and are likely to believe that
both products would emanate from a single source if they
were sold under such similar marks as DENAVIR and DERMAVIR.
Moreover, such goods may also be sold to the ultimate users
as prescription drugs. That is, in fact, the way in which
opposer's goods are sold. We also note applicant's
admissions that its product is intended to be made available
by the prescription of a medical professional, and that
vaccines may be “admitted” [sic, should be “administered”]
orally. Given these admissions, we must assume that
applicant's vaccines can be prescribed for and used by the
ultimate consumer. Such consumers, although careful about
the medications that they use, may very well confuse the
source of an antiviral sold under the mark DENAVIR and a
vaccine sold under the mark DERMAVIR, or may even misrecall
the marks, since they are unfamiliar terms. Consumers do
not necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). A consumer to whom
Opposition No. 91124457
19
applicant's DERMAVIR product has been proscribed may well
believe that the trademark is the same as that of the
DENAVIR product that he has seen advertised.
Moreover, as opposer has pointed out, there is a
concern that a pharmacist, getting a prescription over the
phone, would have trouble distinguishing between the marks
DENAVIR and DERMAVIR, or may have trouble deciphering the
marks in a handwritten prescription. Thus, although the
opposer's and applicant's products would not be purchased on
impulse, we find that this duPont factor favors opposer.
There is no evidence of actual confusion, but given
that there is no real information on the extent of
applicant's use of its mark, which appears to still be in a
development stage, we find that this factor is neutral.
As stated previously, we have elected not to discuss
opposer's evidence to which applicant has objected, but we
point out that if we did consider it, it would support
opposer on the factor of the strength and fame of its mark.
Finally, we note the well-established principle that,
if there are any doubts on the issue of likelihood of
confusion, they must be resolved against the newcomer and in
favor of the prior user. See San Fernando Electric Mfg. Co.
v. JFD Electronics Components Corporation, 565 F.2d 683,196
USPQ 1 (CCPA 1977); Fricks' Foods, Inc. v. The Mar-Gold
Corporation, 163 USPQ 619 (CCPA 1969). Following that
Opposition No. 91124457
20
principle is all the more important where the products in
question are pharmaceuticals, where it is imperative that
even a slight possibility of confusion should be avoided.
In re Merck & Co., Inc., 189 USPQ 355 (TTAB 1975).
In view of the foregoing, we find that opposer has
established that if applicant were to use DERMAVIR on
vaccines and vaccine adjuvants, it would be likely to cause
confusion with opposer's mark DENAVIR for antivirals.
Decision: The opposition is sustained.