Novo NorDisk A/Sv.Innoject, Inc.

Trademark Trial and Appeal Board

Jun 8, 2004

No. 91125203 (T.T.A.B. Jun. 8, 2004)

Mailed:
8 June 2004
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Novo NorDisk A/S
v.
Innoject, Inc.
_____
Opposition No. 91125203
to application Serial No. 78059125
_____
David M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P. for Novo NorDisk A/S.
John A. Thomas of Glast, Phillips & Murray, P.C. for
Innoject, Inc.
______
Before Simms, Chapman, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On April 18, 2001, Innoject, Inc. (applicant) applied
to register the mark INNOJECT (typed) for goods identified
as “medical syringes” in International Class 10.
The application (78059125) is based on an allegation of a
bona fide intention to use the mark in commerce.
Novo NorDisk A/S (opposer) has opposed registration on
the ground that applicant’s mark for medical syringes “so
resembles Opposer’s previously registered INNOLET and INNOVO
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91125203
2
marks as to be likely to cause confusion, or to cause
mistake, or to deceive.” Notice of Opposition at 2.
Opposer relies on its ownership of Registration Nos.
2,349,403 for the mark INNOLET in typed form for “medical
disposable hypodermic syringes” in International Class 101
and 2,378,343 for the mark INNOVO also in typed form for
“syringes for injecting insulin” in International Class 10.2
Applicant has denied the salient allegations of the
notice of opposition.
The Record
The record consists of the pleadings, the file of the
involved application, and opposer’s notice of reliance on
status and title copies of its registration and applicant’s
responses to opposer’s interrogatories. Opposer has also
attached dictionary definitions of “insulin” and
“parenteral” to its brief and it requests that we take
judicial notice of these definitions. Applicant’s objection
to taking judicial notice of these definitions is overruled.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
1 Issued May 16, 2000, and based on the ownership of Danish
Registration No. VR199801199.
2 Issued August 22, 2000, and based on the ownership of Swiss
Registration No. 434252.
Opposition No. 91125203
3
Discussion
Opposer, as plaintiff in the opposition proceeding,
bears the burden of proving, by a preponderance of the
evidence, priority and likelihood of confusion. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000); Cerveceria Centroamericana,
S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989).
Priority is not an issue here inasmuch as opposer
relies on its ownership of two valid registrations. See
King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).3
Therefore, we now address whether there is a likelihood
of confusion between applicant’s mark and opposer’s INNOLET
registration. In likelihood of confusion cases, we analyze
the facts in light of the relevant factors set out in In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). See also In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); and
Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000).
3 For purposes of our likelihood of confusion analysis, we will
only consider the INNOLET registration because it is the closest
registration. If applicant’s mark is not confusingly similar to
that registered mark, then it is less likely that there would be
confusion with the INNOVO registration.
Opposition No. 91125203
4
In this case, we begin by comparing the goods of
applicant and opposer. Applicant’s goods are identified
simply as “medical syringes.” Opposer’s goods are “medical
disposable hypodermic syringes.” Applicant argues that “the
only evidence of actual use of [applicant’s] goods … show[s]
the class of customers to be persons requiring self-
administered automatic injection of particular drugs.”
Applicant’s Brief at 4. Applicant’s argument implies that
its goods are more limited than those described in its
identification of goods. However, in this opposition we
must consider the goods as they are identified in the
respective identifications of goods. Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). We also do
not read limitations into identification of goods. Squirtco
Opposition No. 91125203
5
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
1983)(“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts
the usage of SQUIRT for balloons to promotion of soft
drinks. The Board, thus, improperly read limitations into
the registration”).
Here, applicant’s goods are broadly identified as
medical syringes. Clearly, the term “medical syringes” is
broad enough to include medical disposable hypodermic
syringes. Therefore, we determine that the goods in this
case are very similar, if not legally identical. The Court
of Appeals for the Federal Circuit has held that when “marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
As indicated above, applicant implies that the channels
of trade and the class of purchasers may be different.
Applicant also faults opposer for not presenting any
evidence of its purchasers. However, absent restrictions in
the identification, we must assume that the goods travel in
“the normal and usual channels of trade and methods of
distribution.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983). See also Hewlett-Packard Co. v.
Opposition No. 91125203
6
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005
(Fed. Cir. 2002); Kangol Ltd. v. KangaRoos U.S.A., 974 F.2d
161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992).
While applicant attempts to differentiate the products
based on applicant's selling its products only through
mail orders while opposer's sales of its goods are
through ordinary retail channels of distribution, in
the absence of a restriction in applicant's
identification of goods and in the identification of
goods in opposer's registrations, the respective goods
must be presumed to travel in all channels of trade
suitable for goods of that type.
Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ 954,
956 (TTAB 1985). See also Genesco Inc. v. Martz, 66 USPQ2d
1260, 1268 (TTAB 2003) (“Given the in-part identical and in-
part related nature of the parties’ goods, and the lack of
any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”). Similarly, we have no basis
to find that the class of purchasers or channels of trades
of medical syringes and medical disposable hypodermic
syringes would not at least overlap.
The next issue we address is the similarity or
dissimilarity of the marks INNOJECT and INNOLET. Both marks
begin with the same syllables “inno-" and end with the
letter “T.” The only differences between the marks is that
applicant uses the letter “J” instead of the letter “L” in
the middle of its mark and adds a letter “C.” There are
Opposition No. 91125203
7
differences between the marks but there are also numerous
similarities. First, the marks look similar, INNOLET and
INNOJECT. There is also a strong likelihood that they would
be pronounced similarly. Both start with the same sounds
(In-no”) and end with a “T” sound. In addition, “-ject” and
“-let” are not dissimilar sounds. We hold that the marks
INNOLET and INNOJECT, when considered in their entireties,
are similar in sound and appearance. Canadian Imperial Bank
of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1814 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH
confusingly similar for identical services).
Regarding their meaning and commercial impression, we
again cannot discern noticeable differences. Applicant
during discovery indicated that “inno-” is a truncation of
“innovative.” Applicant’s Response to Interrogatories at 3.
However, both marks would appear to have no specific
meaning, which would tend to indicate that the meanings
would not be used to distinguish the goods. In addition,
there is no evidence that opposer’s mark is weak or entitled
to only a narrow scope of protection.
While undoubtedly if prospective purchasers studied the
marks together, they would eventually notice that there are
differences, a “[s]ide by side comparison is not the test.”
Grandpa Pigeon’s of Missouri, Inc. Borgsmiller, 477 F.2d
586, 177 USPQ 573, 574 (CCPA 1973). Even if purchasers
Opposition No. 91125203
8
noticed the differences between the marks, they are likely
to believe that these medical syringes originate from the
same source.
While not specifically raised as an issue, we have
considered that medical syringes are not ordinary consumer
items that may be purchased on impulse at retail stores.
Even if we consider that the prospective purchasers may be
sophisticated or careful purchasers, it does not mean that
they are experts at noticing slight differences between
trademarks and remembering those differences when purchasing
products. In re Research and Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986). “In any event, even
careful purchasers are not immune from source confusion.”
See also In re Total Quality Group Inc., 51 USPQ2d 1474,
1477 (TTAB 1999). When the marks INNOLET and INNOJECT could
appear on similar, if not identical, medical syringes,
confusion would be likely.
Interestingly, applicant also argues that although it
has filed an intent-to-use application, “there is some basis
for actual confusion to exist” because applicant has entered
into a collaboration agreement with a pharmaceutical
company, and apparently applicant is unaware of any
instances of actual confusion. Applicant’s Brief at 5.
There is no requirement that there be actual confusion
before we can find a likelihood of confusion. Giant Food,
Opposition No. 91125203
9
Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 396 (Fed. Cir. 1983); J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed.
Cir. 1991). Evidence of actual confusion is often difficult
to obtain and in a case like this where there is no evidence
of the extent of applicant’s use, we cannot give this factor
much, if any, weight.
Therefore, in this case, when we consider all the
relevant factors, we determine that, if the marks INNOLET
and INNOJECT were used on the identified goods, confusion
would be likely.
Decision: The opposition is sustained.