Viral Genomix, Inc.

Trademark Trial and Appeal Board

Feb 25, 2008

No. 78714074 (T.T.A.B. Feb. 25, 2008)

Mailed: February 25, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Viral Genomix, Inc.1
___________

Serial No. 78714074
___________

Thomas S. Kim, Esq. for Viral Genomix, Inc.

Peter Chang, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
____________

Before Walters, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Viral Genomix, Inc. has filed an application to
register the mark PICTOVIR on the Principal Register for a
“pharmaceutical product for the treatment of human
immunodeficiency virus (HIV) infection,” in International
Class 5.2

1 While the signature block at the end of applicant’s brief indicates a
change of ownership, there is no recordation with the USPTO. Should
applicant ultimately prevail in this appeal, absent recordation with the
USPTO, the ensuing registration will issue in the name of Viral Genomix,
Inc.

2 Serial No. 78714074, filed September 15, 2005, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78714074

2
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark PICOVIR, previously registered for “antiviral
pharmaceutical preparation,”3 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
As a preliminary matter, applicant submitted evidence
with its appeal brief and the examining attorney has
objected thereto. With regard to evidence not duplicative
of evidence previously submitted, applicant did not comply
with the established rule that the evidentiary record in an
application must be complete prior to the filing of the
notice of appeal or with a request for reconsideration filed
during the period for filing an appeal. See, 37 CFR
2.142(d); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994). We sustain the objection and will not further
consider the exhibits attached to applicant’s brief, except
to the extent the list of applications and registrations
duplicates such a list submitted with applicant’s response

3 Registration No. 2598335 issued July 23, 2002, and is owned by Sanofi-
Aventis.
Serial No. 78714074

3
of October 2, 2006. However, with reference to this list,
it is of very little probative value because it merely
identifies the marks and application and/or registration
numbers with no reference to the nature of the identified
goods or services.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.

Serial No. 78714074

4
We consider, first, whether applicant’s mark and the
registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression. Although the marks at issue must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
The examining attorney contends that the marks are
substantially similar, differing by only the single letter
“T” in applicant’s mark; and that determinations of likely
confusion with respect to marks for pharmaceuticals should
be conservatively made to avoid medical errors.
Applicant submitted a list of third-party
registrations, many of which are expired or cancelled, in
support of its contention that “vir” is commonly used in the
antiviral pharmaceutical industry. However, these
registrations are of no use in establishing this proposition
because no goods or services are shown on the list.
Further, we take judicial notice of the lack of a definition
in Merriam-Webster’s Collegiate Dictionary, 11th ed. 2003,
of the root or word “vir.” On the other hand, the use of
the root or word “vir” in connection with an antiviral
Serial No. 78714074

5
pharmaceutical naturally suggests a viral product. However,
as indicated above, because the list of registrations
without more has essentially no probative value, applicant’s
argument that “vir” is commonly used, or in this case,
commonly registered, is without any evidentiary support.
Applicant also contends that “pico” in the registered
mark is a common prefix denoting a unit of measurement; and,
thus, that the “T” in applicant’s mark sufficiently
distinguishes the “picto” and “pico” portions of the
respective marks. In this regard, we take judicial notice
of the definition in Merriam-Webster’s Collegiate
Dictionary, 11th ed. 2003, of “pico” as “1. one trillionth
(10-12) part of 2. very small.”
With respect to the two marks at issue herein, PICTOVIR
and PICOVIR, which differ by only a single letter in the
middle of applicant’s mark, it is important to remember that
the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impressions that confusion as to the source of
the goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Serial No. 78714074

6
In this case, we find the two marks are substantially
similar in sound, appearance and overall commercial
impression. The first part of the registered mark includes
the root “pico,” which has a specific meaning, and, thus,
potentially lends a connotation to the registered mark that
is different from the connotation of applicant’s mark.
However, on balance, and considering the fact that
prospective purchasers are unlikely to see the marks side-
by-side or at the same time, we find that the du Pont factor
of the similarities of marks weighs strongly against
applicant.
Regarding, next, the goods involved in this case, we
determine the question of likelihood of confusion based on
an analysis of the goods or services recited in applicant’s
application vis-à-vis the goods or services recited in the
registration, rather than what the evidence shows the goods
or services actually are. Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987). See also, Octocom Systems, Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is a general
rule that goods or services need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that goods or services are
Serial No. 78714074

7
related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which could give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein; and Time Warner Entertainment Co.
v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).
The examining attorney contends that HIV is a virus
and, thus, applicant’s goods are encompassed within the
goods identified in the cited registration, which goods are
not limited to certain viruses. In support of his position,
the examining attorney submitted a definition from The
Oxford English Dictionary (obtained from
www.dictionary.oed.com) of “antiviral” as “a drug or
treatment … active or effective against viruses.” He also
submitted copies of three third-party registrations to
support his position that drugs for treating HIV infections
are antiviral drugs.4

4 Registration No. 2437916 for “antiviral and anti-infective
pharmaceutical preparations for the treatment of HIV; antibacterials and
antibiotics excluding those use for the treatment of hepatitis”;
Registration No. 2663930 for “over-the-counter pharmaceutical
preparations, namely an antiviral and antimicrobial for use in the
treatment of herpetic keratitis, conjunctivitis and HIV retinopathy”;
and Registration No. 2946761 for “pharmaceutical preparation with
antiviral and/or antimicrobial properties for herpes related microbial
Serial No. 78714074

8
We agree with the examining attorney that applicant’s
pharmaceutical product used to treat HIV is, by definition,
an “antiviral pharmaceutical preparation”; that the goods
identified in the cited registration are not limited to use
in connection with a particular illness or condition and,
thus, encompass pharmaceutical preparations used to treat
all viral illnesses and conditions, including HIV.
Therefore, applicant’s goods are identical to a subset of
the goods encompassed by the identification of goods in the
cited registration.
Applicant’s argument that its goods are specifically
limited to “pharmaceutical products for the treatment of HIV
infection, whereas the goods of registrant broadly include
all antivirals, [thus] there is little risk of overlap”
(Brief, p. 3, emphasis in original) is illogical and,
accordingly, not well taken.
We turn now to the conditions under which and buyers to
whom sales are made. Applicant admits that the channels of
trade and class of purchasers “will likely have slight
overlap” (id.), but argues that this limits the possibility
of likelihood of confusion. Applicant contends that
intended consumers are highly sophisticated medical

infections,” including for the treatment of HIV retinopathy HIV among
other illnesses.

Serial No. 78714074

9
professionals who exercise a high degree of care when
considering antiviral products for patient treatment.
However, because applicant’s identified goods are
subsumed within the broadly identified antiviral
pharmaceutical preparations in the cited registration, the
trade channels and classes of purchasers for this subset of
goods is the same. See In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992). We agree with applicant that such purchasers
are likely to be discriminating medical professionals who
are determining the proper treatment for their patients
infected with HIV. However, even sophisticated
professionals who are knowledgeable in their fields are not
immune from trademark confusion, especially in this case
where these marks differ by only the single letter “T,” and
this difference is buried in the middle of applicant’s mark.
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that, despite the
sophistication and discrimination of the likely purchasers,
in view of the substantial similarity in the commercial
impressions of applicant’s mark, PICTOVIR, and registrant’s
mark, PICOVIR, their contemporaneous use on the goods
involved in this case, where applicant’s goods are a subset
Serial No. 78714074

10
of registrant’s goods, is likely to cause confusion as to
the source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.