SmithKline Beecham Pharma-ceuticals Co.v.L. Molteni & C. dei F.lli Alitti S.p.A.

Trademark Trial and Appeal Board

Sep 18, 2000

No. 91105213 (T.T.A.B. Sep. 18, 2000)

Paper No. 35
GDH/gdh
9/18/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
SmithKline Beecham Pharmaceuticals Company
v.
L. Molteni & C. dei F.lli Alitti S.p.A.
_____
Opposition No. 105,213,925 to application Serial No. 75/024,925
filed on November 28, 1995
_____
Roberta Jacobs-Meadway, Karol A. Kepchar and Scott W. Goode of
Panitch Schwarze Jacobs & Nadel, P.C. for SmithKline Beecham
Pharmaceuticals Company.
Lawrence E. Abelman and Julie Seyler of Abelman, Frayne & Schwab
for L. Molteni & C. dei F.lli Alitti S.p.A.
______
Before Hanak, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
L. Molteni & C. dei F.lli Alitti S.p.A. has filed an
application to register the mark "DIABREZIDE" for "pharmaceutical
preparations for diabetes."1
SmithKline Beecham Pharmaceuticals Company has opposed
registration on the ground that applicant’s mark, when applied to
applicant’s goods, so resembles the mark "DYAZIDE," which opposer

1 Ser. No. 75/024,925, filed on November 28, 1995, based upon an
allegation of a bona fide intention to use such mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 105,213
2
has previously used in connection with "diuretics and
antihypertensive pharmaceuticals" and has registered for a
"diuretic,"2 as to be likely to cause confusion, mistake or
deception.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.3
The record includes the pleadings; the file of the
involved application; and, as part of opposer’s case-in-chief,
the testimony, with exhibits, of Meg Begley, its "DYAZIDE"
product manager. As the rest of its case-in-chief, opposer has
submitted notices of reliance upon (i) a certified copy of its
pleaded registration showing that the registration is subsisting
and owned by opposer; (ii) applicant’s answers to certain of
opposer’s interrogatories; and (iii) copies of various articles
from printed publications of general circulation. Applicant, as
its case-in-chief, has furnished the testimony, with exhibits, of
Giuseppi Seghi Recli, its managing director, and has filed
notices of reliance on (i) opposer’s answers to certain of
applicant’s interrogatories; (ii) copies of a number of third-
party registrations; (iii) copies of excerpts from several
medical reference works, including medical dictionaries; and (iv)
copies of selected articles from printed publications of general

2 Reg. No. 755,837, issued September 3, 1963, which sets forth dates of
first use of January 7, 1963; first renewal.
3 While the answer also sets forth various allegations as "AFFIRMATIVE
DEFENSES," the allegations are merely amplifications of applicant’s
denials of the salient allegations of the notice of opposition and
therefore are not, properly speaking, affirmative defenses.
Opposition No. 105,213
3
circulation. The record contains no rebuttal evidence. Briefs
have been filed, but an oral hearing was not requested.
Priority is not in issue inasmuch as the certified copy
of opposer’s pleaded registration shows that such registration,
as noted above, is subsisting and owned by opposer. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974). In any event, the record also sufficiently
establishes, as discussed below, that opposer is the prior user
of its pleaded "DYAZIDE" mark in the United States. The only
real issue to be determined, therefore, is whether applicant’s
"DIABREZIDE" mark, when used in connection with pharmaceutical
preparations for diabetes, so resembles opposer’s registered
and/or previously used "DYAZIDE" mark for, respectively,
diuretics and antihypertensives as to be likely to cause
confusion as to the source or sponsorship of the parties’ goods.
According to the record, opposer is one of the top ten
pharmaceutical companies and is very well known in the
pharmaceutical field. Opposer sells a variety of prescription
drugs, including central nervous system products, antiarthritics,
antiinfectives, antivirals, oncology products, cardiovascular
products and endocrinology products. Opposer also sells over-
the-counter drugs through its consumer health care subsidiary.
One of its top three pharmaceuticals is a diuretic which, since
the introduction thereof in the early 1960s, has continuously
been sold by opposer under the mark "DYAZIDE" for use chiefly as
an antihypertensive. Opposer’s "DYAZIDE" product lowers blood
pressure in patients through diuresis; that is, it removes water
Opposition No. 105,213
4
from the body but is potassium sparing. The "DYAZIDE" product,
however, is a prescription rather than an over-the-counter drug
and has always been such.
Opposer sells its "DYAZIDE" product only to
wholesalers, who in turn distribute it to hospitals, pharmacies,
managed care facilities and nursing homes for use by patients for
control principally of hypertension (high blood pressure). While
opposer’s witness testified that the "DYAZIDE" mark was coined by
opposer, it is clear from the record that the suffix "-ZIDE" is
derived from, and hence is suggestive of, hydrochlorothiazide,
which is one of the active ingredients in opposer’s diuretic as
well as a number of other antihypertensives, and that the prefix
"DY-," which is the phonetic equivalent of the prefix "DI-," is
derived from, and thus is suggestive of, a diuretic. For many
years, "DYAZIDE" has been "a considerable product" for opposer
and, in 1994, opposer reformulated such product so as to make it
available in a new strength. (Begley dep. at 12.) However,
according to Ms. Begley, who from 1991 to 1995 was a sales
representative for opposer before becoming "DYAZIDE" product
manager in August of 1995, such product "was so well known [among
doctors that] there was not a lot of educational effort involved"
insofar as making physicians aware of the drug’s benefits for
patients with hypertension. (Id. at 14.) Moreover, despite the
expiration of patent protection for opposer’s "DYAZIDE" product
and the increasing availability of generic substitutes since
1997, such product has remained the standard for antihypertensive
diuretics of its kind.
Opposition No. 105,213
5
Ms. Begley affirmed that hypertension is a condition
which can occur in persons with diabetes. While, as a graduate
of Rosemont College with a Bachelor’s degree in French, she
conceded that she is "not a diabetics expert," she indicated that
"because of what’s going on endocrinologically they ... have more
problems cardiovascularly than others, and hypertension is one of
the ways that that manifests itself." (Id. at 20-21.) In
particular, she testified that:
Q. Do you have any idea what
percentage of diabetic patients may suffer
from hypertension?
A. I would say it’s more than half,
maybe 60%.
(Id. at 21.) She additionally pointed out that opposer’s
"DYAZIDE" product would be prescribed by a wide variety of
doctors and specialists, including endocrinologists and "anyone
who’s treating a patient who would likely have high blood
pressure." (Id. at 17.)
Opposer advertises and otherwise promotes its "DYAZIDE"
product to doctors by detailing it in consultations conducted by
sales representatives,4 staffing booths at medical conventions,
running advertisements in medical journals, sending direct mail
flyers, providing product literature and free samples for
distribution to patients, and furnishing other "give-aways," such

4 The term "detailing," according to Ms. Begley, involves a process of
first calling on doctors and "explaining a ... disease state and what
to look for, and then ... explain[ing] to them why your product works
in this disease state. And then you may explain to them why your
product should be the one chosen or used over a competitor." (Begley
dep. at 14.) While a detailing session can last a couple of minutes
to a half an hour, on average the duration is "eight to ten minutes."
(Id. at 37.)
Opposition No. 105,213
6
as writing tablets, pocket lab test guides and calipers for quick
reading of EKG charts, which bear the mark. While ads appearing
in certain journals target the "DYAZIDE" product to, for example,
primary care physicians, family practitioners, general
practitioners and cardiologists, the product is also advertised
in publications "that every doctor reads regardless of their
specialty," such as the Journal of the American Medical
Association and the New England Journal of Medicine. (Id. at
38.) Opposer also runs ads for its "DYAZIDE" product which are
directed to pharmacists in such journals as Drug Topics, Pharmacy
Times, U.S. Pharmacist, Triple I Prescribing Guide and Monthly
Prescribing Reference. The "DYAZIDE" product, furthermore, is
listed, as is the case with other medications in actual use, in
the Physicians’ Desk Reference, an annual compilation which sets
forth indications5 for pharmaceuticals and their prescribing
information.6
The "DYAZIDE" mark is used on packaging, product
literature and prescribing information. The product itself is
available in single unit packages of 100 capsules, patient
starter packages of four capsules, and bottles of 100 and 1,000
capsules. Sales of the "DYAZIDE" product in 1997, the last year
for which such figures were available (and not stated to be
confidential), were in excess of $48.9 million. According to Ms.

5 According to Ms. Begley, an "indication" is "clearance that the FDA
has given for a particular product to be sold for a particular disease
state." (Id. at 19.)
6 Ms. Begley noted in her testimony that, in addition to physicians,
nurses and pharmacists, she "know[s] a lot of lay people who read"
such publication. (Id. at 46.)
Opposition No. 105,213
7
Begley, during the time in the 1990s in which she has been
involved with the "DYAZIDE" product, sales thereof have been
substantial and such drug has been an important product for
opposer.7 Moreover, while it appears that annual sales of the
"DYAZIDE" product peaked around 1986 and have steadily declined
since then, annual sales have remained "considerable," with
several million prescriptions for the product having been written
in 1997 and another couple of hundred thousands therefor having
been written in January 1998 alone. (Id. at 59.) In the case of
advertising and promotional expenditures, Ms. Begley conceded
that, with the coming of generic substitutes in 1997, opposer has
backed off its spending thereon, but it is still the case that it
has expended appreciable sums, totaling in the neighborhood of a
couple hundred million dollars, to advertise and promote its
"DYAZIDE" product since the introduction thereof around 1963.8
However, at present the product is not actively promoted.
In addition, as to the commercial success of opposer’s
"DYAZIDE" product and the asserted fame of such mark, Ms. Begley
testified as follows:

7 Although opposer’s witness did not testify as to any specific sales
figures other than those for 1997, she did identify opposer’s Exhibit
17 as a listing of sales and advertising amounts for the years 1964
through 1996. Furthermore, even though marked "CONFIDENIAL ATTORNEY’S
EYES ONLY," opposer’s main brief nevertheless sets forth specific
sales and advertising totals for such period as well as for the late
1980s. While we will not state those figures in this opinion since
they were offered as confidential business information, suffice it to
say that sales of opposer’s "DYAZIDE" product during the 33-year
period covered by Exhibit 17 exceed several billion dollars and
totaled a few hundred million dollars in the late 1980s.
8 Again, while opposer’s main brief lists a specific total amount, such
amount is not set forth in this opinion since it was indicated at
trial to be confidential business information.
Opposition No. 105,213
8
Q. Do you believe that the Dyazide
product is well known among patients who have
hypertension?
....
A. I believe it, yes.
Q. Based on what?
A. Based on the fact that so many
people are still using Dyazide.
(Id. at 69.) Furthermore, opposer also offered, by means of a
notice of reliance, a number of unsolicited articles appearing in
the popular press which happen to mention its "DYAZIDE" product.
As of the March 19, 1998 date of her testimony, Ms.
Begley noted that opposer does not sell a drug for the treatment
of diabetes. She added, however, that opposer does have plans
for a diabetes drug, but conceded that she does not have any
involvement therewith and did not provide any specifics as to
such plans. Finally, with respect to any third-party marks which
are similar to opposer’s mark, she testified as follows:
Q. Are you aware of any trademarks
other than "Dyazide" that start with a D-Y-A
and end in Z-I-D-E?
A. No.
Q. Are you aware of any trademarks
that start with D-I-A and end in Z-I-D-E?
A. No.
(Id. at 73-74.) Ms. Begley admitted on cross-examination,
however, that she was familiar with competitors of opposer using
marks, such as "MAXZIDE," which utilize as a portion thereof the
suffix "-ZIDE" in connection with diuretics/antihypertensives in

Opposition No. 105,213
9
which a major ingredient, like opposer’s "DYAZIDE" product, is
hydrochlorothiazide.
Applicant is an Italian pharmaceutical company located
in Florence, Italy. Its "DIABREZIDE" product, of which the
active ingredient is gliclazide, is "for the treatment of non-
insulin dependent diabetes mellitus." (Rechi dep. at 2.)
Although applicant’s managing director has no direct knowledge of
the derivation of such mark since applicant bought the mark and
its associated product from another Italian pharmaceutical
company in 1991, Mr. Rechi testified that he suspected that the
"-ZIDE" suffix is reflective of the suffix portion of the name of
the active ingredient in the "DIABREZIDE" product while the
prefix "DIAB-" is obviously suggestive of a diabetes treatment.
Although applicant is currently using its "DIABREZIDE"
mark in Italy on product packaging for its prescription
pharmaceutical preparation for diabetes, such mark is not in use
in the United States for any goods nor is the associated product
sold in the United States. Likewise, applicant has not
advertised or otherwise promoted its "DIABREZIDE" product in the
United States; such product has not been discussed at any
conferences or professional meetings here; and it has not been
the subject of any clinical trials conducted here or of any other
studies that have been reviewed or presented here. In short,
while the "DIABREZIDE" product is not sold or marketed in the
United States, applicant insists that it intends to use such mark
in the United States, but only in connection with a prescription
product for treatment of non-insulin dependent diabetes millitus.
Opposition No. 105,213
10
Applicant, moreover, does not manufacture or sell a
prescription or non-prescription diuretic/antihypertensive drug
and it is not in applicant’s "actual foreseeable plans" to do so.
(Id. at 18.) Mr. Rechi admitted, however, that patients with
diabetes may suffer from hypertension, but he claimed to lack the
medical background necessary to know whether such conditions
occur often in the same patient as claimed by Ms. Begley.
In addition, Mr. Rechi conceded on cross-examination
that he is not aware of any pharmaceutical mark other than
"DIABREZIDE" which combines both a "DIA-" prefix and a "-ZIDE"
suffix. Similarly, he stated that he knows of no pharmaceutical
mark other than "DYAZIDE" which combines both a "DYA-" prefix and
a "-ZIDE" suffix. He further testified, however, that based upon
consultation of the 1998 edition of Physicians’ Desk Reference,
he has personal knowledge that the following marks are in use in
the United States for diuretics and/or antihypertensives which
have hydrochlorothiazide as an active ingredient: "PRINZIDE,"
"CAPOZIDE" and "ALDACTAZIDE". Nevertheless, Mr. Rechi also
testified that he had never seen any packaging for such products
nor did he have any knowledge as to how long the products have
been sold in the United States.
Like opposer, applicant promotes its "DIABREZIDE"
product by having sales representatives detail the goods to
physicians and intends to detail such product to doctors in the
United States.9 However, unlike the "DYAZIDE" antihypertensive

9 Mr. Rechi testified that, in the context of promoting pharmaceutical
products, he understood the term "detailing" to mean "bringing to the
Opposition No. 105,213
11
sold by opposer, applicant obviously has no need to detail its
"DIABREZIDE" diabetes drug to cardiologists. While applicant,
like opposer, has distributed samples of its product to doctors,
Mr. Rechi claims that whether applicant intends to do such in the
United States "will depend on the marketing strategy adopted."
(Id. at 41.) Applicant, in addition, details its "DIABREZIDE"
product directly to hospitals, but whether it intends to do so as
to hospitals in the United States likewise "will depend on the
marketing strategy adopted." (Id.)
Applicant’s "DIABREZIDE" product, unlike opposer’s
"DYAZIDE" product, has not received any coverage in the media.
The former also has not been submitted to the U.S. Food and Drug
Administration or any other U.S. regulatory agency for approval.
According to Mr. Rechi, he first became aware of applicant’s
"DYAZIDE" product on receiving the notice of opposition which
commenced this proceeding. He also testified that he is unaware
of any occasion in which there was confusion between the
respective marks, noting that no one has ever expressed a concern
or otherwise mentioned to him that the marks "DIABREZIDE" and
"DYAZIDE" are similar.
Finally, by notice of reliance applicant has shown that
a number of articles appearing in printed publications of general
circulation make mention of third-party marks featuring the
suffix "-ZIDE" for various medications, including preparations

physician’s attention the product’s properties." (Rechi dep. at 37.)
He further noted, however, that applicant is not certain whether it
will detail pharmacists in the United States with respect to its
"DIABREZIDE" product.
Opposition No. 105,213
12
for treatment of hypertension such as "OPTIZIDE," "MICROZIDE,"
"RAUZIDE," "MINIZIDE," "PRINZIDE," "MAXZIDE," "APRESAZIDE,"
"HYDRA-ZIDE" and "ALDACTAZIDE," while two other articles refer to
the third-party mark "DIABEX," which utilizes the prefix "DIA-"
in connection with a product which is an oral antidiabetic drug.
Another notice of reliance by applicant reveals that primary or
active ingredients listed for various brands of antihypertensives
are polythiazide in the case of the "MINIZIDE" product and
hydrochlorothiazide in instances of the "PRINZIDE," "CAPOZIDE"
and "ALDACTAZIDE" products. Additionally, a notice of reliance
by applicant is accompanied by copies of numerous third-party
registrations for marks with the suffix "-ZIDE," including those
for diuretics and/or antihypertensives such as "LOZIDE,"
"MICROZIDE," "RAUZIDE," "MINIZIDE," "PRINZIDE," "MAXZIDE,"
"APRESAZIDE," "ALDACTAZIDE," "HYDROZIDE" and "VISKAZIDE," along
with several other third-party registrations for marks with the
prefix "DIA-," including those for pharmaceutical preparations
for treating diabetes such as "DIAMICRON" and "DIABEX."
Turning to the issue of likelihood of confusion, we
find upon consideration of the pertinent factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), that on this record confusion as to source or
affiliation is not likely to occur. As a starting point, it is
plain that while the respective goods are prescription
pharmaceutical preparations which would be sold through the same
channels of trade, such as wholesale, retail and hospital
pharmacies, managed care facilities and nursing homes, and would
Opposition No. 105,213
13
be prescribed by physicians for purchase and use, ultimately, by
patients from the general public, the goods are nevertheless
specifically directed to different indications. Opposer’s
diuretic is principally utilized as an antihypertensive while
applicant’s product is for the treatment of diabetes. Although
the record indicates that hypertension and diabetes can coincide
in the same patients and that, in particular, hypertension can
occur in up to 60 percent of persons with diabetes, the fact
remains that such medical conditions are not the same illness.
Hence, the drug treatments therefor, even though they may be
prescribed in many instances by the same doctor, are not
identical.
Moreover, on this record, there is nothing which shows
that the same pharmaceutical companies market both diuretics
and/or antihypertensives, on the one hand, and preparations for
the treatment of diabetes, on the other, much less that such is
done under the same or similar marks. Here, not only does
applicant not market an antihypertensive and has no plans to do
so in the foreseeable future, but it is particularly telling that
opposer, which is a top ten pharmaceutical company and is very
well known in such field, does not sell a drug for the treatment
of diabetes. Although opposer’s witness testified to a
generalized intent on the part of opposer as to plans for a
diabetes drug, she provided nothing specific. Physicians,
pharmacists, nurses and others in the pharmaceutical field would
thus not be conditioned to expect that the same drug company
Opposition No. 105,213
14
typically makes and/or sells any and all kinds of pharmaceutical
preparations.
The conditions of sale surrounding prescription
pharmaceuticals also lessen the prospects for any likelihood of
confusion as to product origin or affiliation. Specifically, the
industry standard practice of company sales representatives
calling upon doctors and pharmacists to educate and advise them
with respect to the company’s prescription drugs and their
indications necessarily means that such customers would typically
know the source of the pharmaceutical preparations they prescribe
and/or buy. Notwithstanding that such detailing sessions on
average last only eight to ten minutes, physicians, pharmacists
and nurses are, by the very nature of their professions, highly
knowledgeable and sophisticated customers when it comes to
medications, given their training in pharmacology and the care,
due to the recognized potential for harmful drug interactions,
they must exercise in prescribing medications for particular
indications. See, e.g., Warner-Hudnut, Inc. v. Wander Co., 280
F.2d 435, 126 USPQ 411, 412 (CCPA 1960) [physicians and
pharmacists constitute "a highly intelligent and discriminating
public"]. While patients, as the ultimate consumers, would
admittedly lack such specialized knowledge, it must be remembered
that unlike the case with over-the-counter medications, it is the
patient’s doctor or pharmacist which, in the case of prescription
drugs, selects the medication and the patient, relying upon the
expertise of the medical practitioner, simply has his or her
prescription filled without the need for any deliberation.
Opposition No. 105,213
15
Furthermore, while the record contains testimony that
it is becoming an increasingly common practice in the industry,
due to a generalized shortage of and the expenses associated with
sales representatives, for pharmaceutical companies to detail the
prescription drugs of other such companies as well as those of
their own, this development does not increase the prospects for
confusion as to origin or affiliation to occur. In particular,
it is highly unlikely that if, as contended by opposer, confusion
as to source or sponsorship is likely from the contemporaneous
sale and marketing of its "DYAZIDE" diuretic/antihypertensive and
applicant’s "DIABREZIDE" diabetes treatment, opposer would detail
applicant’s product in conjunction with its own or authorize
applicant to detail opposer’s product along with applicant’s
pharmaceutical preparation. Contrary to opposer’s contentions,
circumstances simply do not exist which, as a practical matter,
would foster a likelihood of confusion among the parties’
prescription drug products.10 The conditions of sale, instead,
are such that the respective goods would be marketed primarily to
careful and sophisticated medical professionals who plainly would

10 While it is possible that another pharmaceutical company might
detail both opposer’s products as well as those of applicant, it seems
unlikely that opposer would knowingly allow such a situation to occur.
Moreover, as our principal reviewing court has cautioned in this
regard:
We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake
or with de minimis situations but with the
practicalities of the commercial world, with
which the trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), quoting from Witco
Opposition No. 105,213
16
not impulsively select and prescribe the products for their
patients.
As to the respective marks, we agree with applicant
that they are distinguishable, both by those in the medical and
pharmacy fields as well as by patients, with respect to sight,
sound, connotation and commercial impression. Admittedly, there
are similarities between the marks "DYAZIDE" and "DIABREZIDE" in
that both begin, respectively, with the same sounding prefixes,
"DYA-" and "DIA-," and both end with the identically appearing
and pronounced suffix, "-ZIDE." However, when considered in
their entireties, not only is the letter "Y" in the first
syllable of opposer’s three-syllable mark visually distinct, but
significantly, the additional syllable "BRE" in applicant’s four-
syllable mark is totally dissimilar in sight and sound from
opposer’s mark. While there is no correct pronunciation of a
mark, we essentially concur with applicant that, overall, even
allowing for "[t]he fact that the letter ’y’ will be pronounced
as in ’why’, DYAZIDE or DIE-A-ZIDE sounds not at all like DI-A-
BRE-ZIDE" and that, furthermore (emphasis by applicant):
Given the presence of the BRE-syllable,
it would be highly unlikely for a purchaser
to fail to pronounce Applicant’s mark as
DI[-]A-BRE-ZIDE. Similarly, a purchaser
would only pronounce DYAZIDE as DY[-]A[-]ZIDE
... [and] would not insert an extra middle
syllable. Thus, taking into account the
fundamental principle of law that any inquiry
as to whether the marks "sound alike" must
focus on the "usual pronunciation by the
ordinary consumer," Smithkline Beckman, Corp.
v. Proctor & Gamble Co., 223 U.S.P.Q. 1230,

Chemical Co. v. Whitfield Chemical Co., 418 F.2d 1403, 1405, 164 USPQ
43, 44-45 (CCPA 1969), aff’g, 153 USPQ 412 (TTAB 1967).
Opposition No. 105,213
17
1237 (N.D.N.Y 1984), it becomes apparent that
the marks bear no [significant] verbal
similarity.
Additionally, we concur with applicant that the marks
at issue are connotatively distinguishable. Opposer’s "DYAZIDE"
mark is registered for a diuretic used as an antihypertensive.
The compound hydrochlorothiazide is one of the active ingredients
in opposer’s "DYAZIDE" product and is also an active component of
several third-party diuretics/antihypertensives available in the
United States under such registered marks as "ALDACTAZIDE,"
"PRINZIDE" and "MAXZIDE" and the mark "CAPOZIDE". All of such
marks feature the suffix "-ZIDE," which is also a formative in
several other marks which are the subjects of third-party
registrations for diuretics and/or antihypertensives, such as
"LOZIDE," "MICROZIDE," "RAUZIDE," "MINIZIDE," "APRESAZIDE,"
"HYDROZIDE" and "VISKAZIDE." Although third-party registrations
do not establish that the marks which are the subjects thereof
are in use and that the purchasing public is familiar therewith,
such registrations may be given some weight to show the meaning
of a mark in the same way that dictionaries are used. See, e.g.,
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693,
694-95 (CCPA 1976).
Here, it is apparent that, rather than being arbitrary,
the suffix "-ZIDE" is highly suggestive of an active ingredient
of diuretic/antihypertensive pharmaceutical products and it is
plain, in light of the several third-party marks acknowledged to
be in actual use, that physicians, pharmacists, nurses and others
in the medical field are accustomed to distinguishing among marks
Opposition No. 105,213
18
containing the suffix "-ZIDE." Moreover, irrespective of the
presence of a "Y" instead of an "I" in the first syllable of
opposer’s mark, it is clear that that the prefix "DY-" is the
phonetic equivalent of the prefix "DI-" and is thus suggestive of
a diuretic.
Consequently, to those with training in medicine,
pharmacology or nursing, opposer’s "DYAZIDE" mark is suggestive
of a diuretic which contains hydrochlorothiazide as a major
ingredient. Applicant’s "DIABREZIDE" mark, by contrast, is
connotatively different in that the "-ZIDE" suffix thereof is
suggestive of a different active ingredient, namely, gliclazide,
and the prefix "DIA-," as confirmed by the third-party
registrations for such marks as "DIAMICRON" and "DIABEX" for
pharmaceutical preparations for treating diabetes, is suggestive
of a diabetes treatment. Applicant’s mark, therefore, intimates
to doctors, nurses and pharmacists that it is a gliclazide-based
preparation for use against diabetes.
Overall, given the above-noted differences in sound,
appearance and connotation, we find that applicant’s "DIABREZIDE"
mark for its pharmaceutical preparations for diabetes so differs
in commercial impression from opposer’s "DYAZIDE" mark for its
diuretic for antihypertensive use that confusion as to the source
or sponsorship of the parties’ prescription drug products would
not be likely to occur. The differences in suggestiveness of the
first and last syllables of each mark, as well as the differences
in sound and appearance due to the presence of the additional
syllable "BRE" in applicant’s mark, sufficiently distinguish the
Opposition No. 105,213
19
marks at issue, notwithstanding that such marks, as argued by
opposer, "incorporate both a ’DYA/DIA’ prefix and a ’-ZIDE’
suffix ...." See, e.g., Tektronix, Inc. v. Daktronics, Inc.,
supra at 694 ["[b]ecause marks, including any suggestive portions
thereof, must be considered in their entireties, the mere
presence of ... common, highly suggestive portion[s] is usually
insufficient to support a finding of likelihood of confusion"].
Furthermore, as to the patients for whom the parties’
medications have been prescribed, including those who are under
treatment for both diabetes and hypertension, it is conceded that
while the differences in suggestiveness of the "-ZIDE" suffix
would not be apparent, it is still the case that the marks are
sufficiently distinguishable. Plainly, even if patients are
unaware of its meaning, the "-ZIDE" suffix is a commonly adopted
formative for pharmaceutical preparations and the suggestiveness
of the prefix "DY-" as used in connection with a diuretic and the
prefix "DIA-" for a diabetes medication would still be readily
apparent, even to persons lacking in medical, pharmacological or
nursing backgrounds. Thus, even among the ultimate consumers of
the parties’ prescription pharmaceutical products, the marks
"DYAZIDE" and "DIABREZIDE" are distinguishable and confusion,
including the risk of harm from mistaking one brand of medication
for another, is not likely.11

11 It would appear to be speculative at best as to whether applicant’s
"DIABREZIDE" product for treatment of diabetes, if it is cleared for
sale in the United States, and opposer’s "DYAZIDE" product for control
of hypertension would both be routinely prescribed for diabetes
patients with hypertension. As stated in the excerpt about "DYAZIDE"
made of record by opposer from The Pill Book (7th ed.), consumers are
cautioned under the heading of "Drug Interactions" that "[i]f you
Opposition No. 105,213
20
Opposer, however, claims in the recitation of facts in
its initial brief that its "DYAZIDE" mark is famous and, hence,
is entitled to a broad scope of protection. As indicated by our
principal reviewing court in Kenner Parker Toys Inc. v. Rose Art
Industries Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992), cert. denied, 506 U.S. 862, 113 S.Ct. 181 (1992), "the
fifth duPont factor, 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." We
find, however, that on this record opposer simply has not proven
its assertion of fame for its "DYAZIDE" mark.
In particular, while Ms. Begley testified, as noted
earlier, that "DYAZIDE" has been "a considerable product" for
opposer for many years, that it has remained the standard for
pharmaceuticals of its kind and that she believes that such
product "was so well known [among doctors that] there was not a
lot of educational effort involved" insofar as detailing the
drug’s benefits, such opinions do not mean that opposer’s
"DYAZIDE" product had in fact become famous and/or that it still

begin taking Insulin or an oral antidiabetic drug and begin taking
Dyazide, the Insulin or antidiabetic dose may have to be modified."
Further, under the heading of "Special Information," such publication
warns that "[d]iabetic patients may experience an increased blood-
sugar level and a need for dosage adjustments of their antidiabetic
medicines." If true, it would thus seem questionable as to whether
applicant’s and opposer’s products would be the prescription drugs of
choice for treatment of diabetic patients who develop or have
hypertension. Clearly, as pointed out in the excerpt from the
Physicians’ Desk Reference (52d ed. 1998), made of record by opposer
as Exhibit 10 to Ms. Begley’s deposition, "DYAZIDE" is contraindicated
for use in diabetic patients with hyperkalemia (preexisting elevated
serum potassium) in that: "Hyperkalemia has been reported in diabetic
patients with the use of potassium-sparing agents even in the absence
Opposition No. 105,213
21
is. Although the record also establishes, in particular, that
opposer has enjoyed substantial sales of its "DYAZIDE" product,
amounting to nearly $49 million in 1997 alone, and since the
early 1960s has had significant and continuing commercial success
with such product, despite recently declining sales due in part
to the introduction in 1997 of generic substitutes, the record
gives no indication as to the overall size of the market for
diuretics/antihypertensives and, thus, what percentage share
thereof the "DYAZIDE" product constitutes for opposer.
Therefore, while we again note that opposer is presently one of
the top ten pharmaceutical companies and its "DYAZIDE" product is
one of its top three products, we cannot conclude therefrom that
the "DYAZIDE" mark is necessarily famous.
Moreover, opposer has submitted only a few examples of
its advertising and promotional efforts over the years for its
"DYAZIDE" product, such as a direct mail flyer distributed to
physicians and pharmacists over five years ago to announce the
reformulation of the "DYAZIDE" product in 1994. Of the other
examples of its advertising and promotional materials in the
record, including photographs of convention exhibit booths,
sample give-a-ways, a couple of trade journal ads and a piece of
educational patient literature, only the latter has additionally
been directed to members of the general public rather than solely
to pharmacists and those in various medical professions.

of apparent renal impairment. Accordingly, serum electrolytes must be
frequently monitored if Dyazide is used in diabetic patients."
Opposition No. 105,213
22
Opposer appears, from its notice of reliance on
excerpts from publications of general circulation, to base its
claim of fame for its "DYAZIDE" mark in large measure on articles
mentioning such mark principally in medical and pharmaceutical
journals and occasionally in general interest newspapers and
magazines. In particular, opposer points to an article from the
July 1991 issue of FDA Consumer in which "DYAZIDE" is ranked
sixth on a list of ten prescription drugs most often dispensed in
U.S. pharmacies in 1990. In addition, it has not escaped our
notice that a survey reported in the April 1994 edition of
American Druggist listed "DYAZIDE" as thirtieth among the top 200
most prescribed drugs during 1993, down from its ranking as
twenty-fourth in 1992. A similar survey appearing in the
February 1997 issue of the same publication reveals, however,
that among the top 200 most frequently dispensed drugs by
community pharmacies, "DYAZIDE" had dropped to number 116 by
1996, with roughly 3,857,000 prescriptions, falling from number
76 in 1995. Nevertheless, opposer concludes from such evidence
and passing mentions of "DYAZIDE" in the popular press as the
brand name of a diuretic that: "As a result of Opposer’s efforts
and expenditures, ’DYAZIDE’ product has received substantial
unsolicited press coverage as being among the leading
pharmaceuticals for the treatment of hypertension ...."
There are several reasons why we cannot agree with
opposer’s conclusion. First, to the extent that opposer is
relying upon the articles excerpted from publications in general
circulation for the truth of the statements therein (e.g., the
Opposition No. 105,213
23
ranking in prescription popularity of its "DYAZIDE" product for
certain years), as opposed to what they show on their face (e.g.,
the mentioning of the mark "DYAZIDE"), such evidence constitutes
inadmissible hearsay which has not been shown to be within any
exception thereto. Fed. R. Evid. 801, 802 and 803; and TBMP
Section 708. Second, the exceedingly small number of excerpts
furnished by opposer scarcely amounts to a demonstration of
"substantial unsolicited press coverage," especially when
consideration is given to the fact that its "DYAZIDE" product has
been on the market since the early 1960s. Finally, even if the
articles were to be accepted, in light of the lack of any
objection from applicant in its brief, for the truth of the
statements contained therein, it is apparent that any possible
renown which opposer’s "DYAZIDE" product may have at one time
otherwise enjoyed has eroded appreciably, given the plunge in
prescriptions for such medication during the 1990s.
In view thereof, and inasmuch as opposer, after the
introduction of competition from generic substitutes in 1997, in
any event no longer actively promotes its "DYAZIDE" product, we
cannot concur with the assertion in opposer’s initial brief that
its "’DYAZIDE’ product is ... extremely well known among the
physicians who write the prescriptions and the pharmacists that
fill them, as well as among patients who receive treatment for
hypertension, including diabetics ...." That is, notwithstanding
that opposer, since about 1963, has expended appreciable sums,
totaling in the neighborhood of a couple hundred million dollars,
to advertise and promote its "DYAZIDE" product and has had and
Opposition No. 105,213
24
continues to have considerable (although declining) sales
thereof, it simply cannot be said, in the notable absence of any
indication as to market share, that as of the close of the trial
herein opposer has proven that its "DYAZIDE" mark is famous for a
diuretic/antihypertensive and that such mark is entitled to a
correspondingly broad scope of protection.
Decision: The opposition is dismissed.
E. W. Hanak
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board