Pfizer, Inc.

Trademark Trial and Appeal Board

Dec 9, 2003

No. 76253388 (T.T.A.B. Dec. 9, 2003)

Mailed: 09 DEC 2003
Paper No. 13
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Pfizer, Inc.
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Serial No. 76253388
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Nels T. Lippert of Hale and Dorr LLP for Pfizer, Inc.
Amos Matthews, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Bottorff and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On May 7, 2001, Pfizer, Inc. applied to register the
mark THE PRIME OF OUR LIVES (typed) on the Principal
Register for “providing educational services, namely,
educational programs in the fields of health, health
awareness and health issues related to women over the age
of forty-five” in International Class 41.1
1 Serial No. 76253388. The application contains 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. 76253388
2
The examining attorney2 refused to register applicant’s
mark on the ground that if the mark were used on or in
connection with the identified services, it would so
resemble the registered mark, FOR THE PRIME OF YOUR LIFE
(typed), as to be likely to cause confusion, to cause
mistake or to deceive.3 15 U.S.C. § 1052(d). The services
in the cited registration are identified as “association
services, namely, promoting the interests of people in the
prime of their lives by providing life skills information
in the field of health, finances, career, relationships,
recreational activities, spirituality, and the expansion of
education backgrounds” in International Class 42.
After the examining attorney made the refusal final,
applicant appealed to this Board.
The examining attorney maintains that the marks are
substantially similar in sound, appearance, meaning, and
commercial impression because the dominant portion of both
marks is “prime” and “lives.” He argues that the
differences between the use of the singular and plural and
the different possessive adjectives “our” and “your” are
not significant. Regarding the services, the examining
2 The current examining attorney was not the original examining
attorney in this case.
3 Registration No. 2,340,672 issued April 11, 2000.
Ser No. 76253388
3
attorney introduced evidence to show registration of a
common mark by a single entity for services similar to
applicant’s and registrant’s. The examining attorney also
noted that applicant’s evidence of the weakness of the mark
consisted of the submission of three registrations for
services far removed from the health field.
Applicant asserts that the marks are not nearly
identical and that the examining attorney discounts the
significance of the “FOR THE” and “YOUR” in the registered
mark and “THE” and “OUR” in its mark. The marks are also
alleged to have different commercial impressions because
applicant’s mark “calls consumers to identify with each
other in celebration of a special time in their collective
lives” while the registered mark “connotes a particular
service offered to benefit the particular consumer’s
personal life.” Reply Brief at 1-2. Applicant argues that
there is little chance of overlap of the services because
applicant does not intend to use its mark with an
association or with membership services and it is not
offering life skills information. In addition, applicant
asserts that since applicant’s channels of trade are
limited to women over forty-five, confusion is unlikely.
Applicant also argues that the consumers are sophisticated
Ser No. 76253388
4
and that the registered mark is entitled to only a narrow
scope of protection.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to 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). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by §2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by comparing applicant’s and registrant’s
marks.
Applicant’s mark: THE PRIME OF OUR LIVES
Registrant’s mark: FOR THE PRIME OF YOUR LIFE
Undeniably, there are differences between the marks.
Registrant’s mark adds the preposition “for;” the marks use
slightly different possessive adjectives (“our” and
“your”); and one uses the singular and the other uses the
Ser No. 76253388
5
plural for “life.” Overall, these differences are slight
and they may not even be noticed by many consumers.
Consumers are unlikely to rely on the introductory
preposition “for” to distinguish the marks. In addition,
while the possessive adjectives “our” and “your” have
slightly different meanings in English (first person plural
possessive and second person possessive, singular or
plural), we do note that they are similar in appearance and
pronunciation and even in meaning (possessive adjectives).
As used in the middle of these phrases, it is hardly likely
that consumers would rely on these factors to distinguish
between the marks. The only other difference is the fact
that one mark uses the singular “life” while the other uses
the plural “lives.” This is not significant. Wilson v.
Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It
is evident that there is no material difference, in a
trademark sense, between the singular and plural forms of
the word ‘Zombie’ and they will therefore be regarded here
as the same mark”).
If one were to study the marks THE PRIME OF OUR LIVES
and FOR THE PRIME OF YOUR LIFE, slight differences in
appearance and pronunciation would be apparent, but
consumers would be unlikely to rely on these differences to
distinguish the marks unless the marks have different
Ser No. 76253388
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meanings and commercial impressions. Applicant argues that
its mark calls consumers to identify with each other in
celebration, while registrant’s mark connotes a particular
service offered to benefit the particular consumer’s
personal life. While applicant’s argument regarding the
meanings and commercial impressions of the marks is not
beyond the realm of possibility, it is far more likely that
consumers will understand the marks to suggest virtually
the same thing, i.e. that the services provide information
on how to enhance or extend the prime of the consumer’s
life.
We are mindful that the test for whether marks are so
similar as to be likely to cause confusion is not a simple
comparison of the individual elements of the mark, but
rather whether, when we consider the marks in their
entireties, they are similar. Considered in this way, we
find that the marks are very similar. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)
(“CASH MANAGEMENT ACCOUNT and THE CASH MANAGEMENT EXCHANGE
are, in large part, identical in sound and appearance and
have a general similarity in cadence”). See also In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (Court held that the addition of “The,”
Ser No. 76253388
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“Cafe” and a diamond-shaped design to registrant’s DELTA
mark still resulted in a likelihood of confusion).
Applicant relies heavily on the case of Kellogg Co. v.
Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991). In that case, the Federal Circuit
affirmed the Board’s determination that the marks FROOTEE
ICE and elephant design and FROOT LOOPS were dissimilar in
appearance, sound, connotation, and commercial impression.
Both the Board and the Court noted that the only similarity
between the marks was that one mark began with the word
FROOT and the other began with the word FROOTEE. 21 USPQ2d
at 1144. Obviously, the present case is different in that
both marks contain the same words or slight variations of
these words, THE PRIME OF [Y]OUR LIFE[LIVES].
While we have compared the marks in their entireties,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of the mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data, 224 USPQ at 751. While
the marks are not identical, a “[s]ide-by-side comparison
is not the test. The focus must be on the ‘general
recollection’ reasonably produced by appellant’s mark and a
comparison of appellee’s mark therewith.” Johann Maria
Ser No. 76253388
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Farina Gegenuber Dem Julichs-Platz v. Chesebrough-Pond,
Inc., 470 F.2d 1385, 176 USPQ 199, 200 (CCPA 1972)
(citation omitted).
We find that the marks are dominated by the
phonetically very similar terms THE PRIME OF and LIFE/LIVES
and that they are very similar in their appearance,
pronunciation, meaning, and commercial impression.
Next, we consider whether the services of applicant
and registrant are related. “In order to find that there
is a likelihood of confusion, it is not necessary that the
goods or services on or in connection with which the marks
are used be identical or even competitive. It is enough if
there is a relationship between them such that persons
encountering them under their respective marks are likely
to assume that they originate at the same source or that
there is some association between their sources.”
McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001). We must consider the services as they are
identified in the application and registration. 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”); Dixie
Ser No. 76253388
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Restaurants, 41 USPQ2d at 1534 (punctuation in original),
quoting, Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“‘Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in
applicant’s application vis-à-vis the … services recited in
[a] … registration, rather than what the evidence shows the
… services to be’”).
The applicant’s services are “providing educational
services, namely, educational programs in the fields of
health, health awareness and health issues related to women
over the age of forty-five.” Registrant’s services are
“association services, namely, promoting the interests of
people in the prime of their lives by providing life skills
information in the field of health, finances, career,
relationships, recreational activities, spirituality, and
the expansion of education backgrounds.” Registrant’s
association services involve providing life skills
information in the field of health. Applicant’s services
involve providing educational services in the field of
health. In effect, both services involve providing
information in the field of health. Even if this aspect of
the applicant’s and registrant’s services is not identical,
that is not required. The question is whether potential
Ser No. 76253388
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customers of registrant’s association services of providing
life skills information in the field of health would assume
that there was some relationship between those services and
applicant’s educational programs in the field of health
when the services are identified by similar marks. We hold
that the services are related. Inasmuch as both applicant
and registrant could be providing health information on the
identical subject through their educational and association
services, it is likely that these consumers will assume
that the source of these services is the same, or at least
related in some way.
The examining attorney has provided evidence in the
form of use-based registrations that suggest that
applicant’s and registrant’s services may originate from
the same source. See Registration Nos. 2,671,825
(educational services, namely conducting educational
programs on aspects of internal medicine and association
services promoting the interest of doctors of internal
medicine); 2,679,790 (educational services including
conferences and distributing materials in the field of
breast cancer diagnosis and treatment and association
services promoting breast cancer awareness); 2,684,936
(educational services involving seminars relating to
medicine and association services of promoting the
Ser No. 76253388
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interests of medical professionals); 2,482,550 (educational
services involving conducting courses on cancer and
association services involving promoting the interest of
pancreatic cancer research); and 2,669,161 (association
services involving promoting the interests of end-of-life
healthcare providers and educational services involving
conducting conferences and workshops in the field of end-
of-life care).
The examining attorney also included other
registrations to show that a third party has registered its
mark for educational services and for providing information
in the field of health care. Registration Nos. 2,576,059;
2,562,400; 2,463,658; 2,567,682; 2,564,339; and 2,559,103.
See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988) (Although third-party registrations “are not
evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
[they] may have some probative value to the extent that
they may serve to suggest that such goods or services are
the type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993). These registrations provide some support for
the examining attorney’s conclusion that the services of
applicant and registrant are related.
Ser No. 76253388
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Applicant also argues that “confusion is unlikely
because Applicant’s channels of trade are restricted to
women over forty-five-years-old, which is not the normal
channel in which Registrant’s services are found.” Brief
at 9. While registrant’s services promote the interest of
“people in the prime of their lives,” the examining
attorney has included a definition (Office Action dated
February 13, 2003) of “prime of life” as “the time of
maturity when power and vigor are greatest.” We agree with
the examining attorney that this “meaning would very well
include women over forty-five.” Brief at 9. Thus, there
would be at least some overlap between the potential
customers for applicant’s and registrant’s services.
Applicant also argues that the purchasers of its
services are “sophisticated and likely to make purchasing
decisions.” Brief at 10. While purchasers of health care
services may be more careful, it is not clear from the
record whether consumers interested in association services
and educational services in the field of health care would
make careful choices or be sophisticated purchasers.
Indeed, by their own descriptions, applicant’s and
registrant’s services imply that they will help educate
potential purchasers of health care services to be more
informed purchasers. There does not seem to be any reason
Ser No. 76253388
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why ordinary consumers would not be included with the
normal consumers of both applicant’s and registrant’s
services.4
Applicant also argues that the registered mark is weak
and entitled to only a narrow scope of protection.
However, applicant’s only evidence of the weakness of the
registered mark consists of copies of three registrations
for mail order services, banking services, and credit card
services (Registration Nos. 1,536,927; 2,341,565; and
2,019,766).5 Obviously, these registrations are not
4 Even if we were to find that the customers of applicant’s and
registrant’s services are careful and even sophisticated
purchasers, this would not mean there would be no likelihood of
confusion when marks as similar and services as related as those
in this case are involved. In re Hester Industries, Inc., 231
USPQ 881, 883 (TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here, substantially
identical marks are applied to related products”).
5 Applicant’s brief and request for reconsideration also contain
a list of registrations without copies of the registrations
themselves. These registrations do not appear, in general, to be
any more relevant than the registrations of record. However, we
agree with the examining attorney that these registrations are
not properly of record. In re Duofold, Inc., 184 USPQ 638, 640
(TTAB 1974) (“[T]he submission of a list of registrations is
insufficient to make them of record”). Also, in its briefs,
applicant refers to another of its application as evidence that
the services in this case are not related. No evidence on this
point was submitted. It is well-settled that the Board is not
bound by prior decisions of Trademark Examining Attorneys, and
that we must decide each case on its own merits and on the record
before us. See, e.g., In re International Flavors & Fragrances
Inc., 183 F.3d 1361, 51 USPQ2d 1513, 1518 (Fed. Cir. 1999) (“Each
application for trademark registration must be considered on its
own merits”); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) (“Even if some registrations had some
Ser No. 76253388
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evidence of use and they are for very different services.
Therefore, they do not demonstrate that registrant’s mark
for its services is entitled to only a narrow scope of
protection.
Finally, even if we had any doubts about whether there
is a likelihood of confusion, we must resolve them in favor
of the prior registrant and against the newcomer. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973);
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.
characteristics similar to Nett Designs’ application, the PTO’s
allowance of such registrations does not bind the Board or this
court”); In re Cooper, 254 F.2d 611, 117 USPQ 396, 401 (CCPA
1958)(“…the decision of this case in accordance with sound law is
not governed by possibly erroneous past decisions by the Patent
Office”). In this case, as “in Cooper, we do not here have
sufficient facts before us on which to evaluate whether the
previous action of the Examiner which resulted in issuance of the
previous registration was or was not erroneous. Nevertheless, as
Cooper held, it is sufficient that the facts now before us and
the application to them of sound law persuade us that the mark
does not meet the requirements for registration set forth in
Sections 2(d) … of the statute.” In re National Retail Hardware
Association, 219 USPQ 851, 854 (TTAB 1983).