BULKY DOCUMENTS
`
`(Exceeds 100 pages)
`
`Proceeding/Seria1No: 76690276
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`Filed: 7[23[2010
`
`Title: REQUEST FOR RECONSIDERATION APTER
`FINAL ACTION
`
`Part
`
`1
`
`of
`
`1
`
`
`
`(Exceeds 100 pages)
`
`Proceeding/Seria1No: 76690276
`
`Filed: 7[23[2010
`
`Title: REQUEST FOR RECONSIDERATION APTER
`FINAL ACTION
`
`Part
`
`1
`
`of
`
`1
`
`
`
`Schwabe 355
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`IN THE UNITED STATES PATENT AND TRADEMRRK OFFICE
`
`Applicant
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`Serial No.
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`Filed
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`Mark
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`Class
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`Examiner
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`Dr. Willmar Schwabe Gmbfi & Co. KG
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`76/690,276
`
`June 5, 2008
`
`EPS 7630
`
`5
`
`Suzanne Blane
`
`—----—————————————————————————-.u--.._....._._.._.__—...—————————————————_
`
`Trademark Examining Attorney
`Law Office 114
`
`July 20, 2010
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, VA 2213-1451
`
`PETITION FOR RECONSIDERATION
`
`The fourth Office Action of the Patent and Trademark
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`Office, dated February 7, 2010, has been carefully reviewed.
`
`Applicant appreciates the Examiner's acceptance of the
`
`amended identification of goods, and notes that the only
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`remaining issue is the Examiner's reliance upon Section 2(d)
`
`of the Trademark Act.
`
`NWWWMWMWWWW
`
`B7-‘Z3-2010
`
`U_S‘ Patent & Tflflfc/TH Hal! Ecpl B1
`
`‘B5
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`As discussed in detail below, despite the 200 pages of
`
`documents the Examiner has offered in support of her refusal
`
`to register under 2(d),
`
`the record unequivocally fails to
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`show a likelihood of confusion between the cited
`
`registrations "EP" and "EP 12.5," on the one hand, and
`
`applicant's mark "EPS 7630.”1
`
`Indeed,
`
`in view of the vanishingly small scope that
`
`should be accorded to the cited registrations,
`
`there is
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`clearly no likelihood of confusion here.
`
`1. The distinctive four digit number "7630"
`in applicant's mark
`
`A large portion of the documentation made of record by
`
`the Examiner is, surprisingly, not relevant to any issue
`
`herein. It is a series of registrations where the
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`registrant's mark incorporates a descriptive number which
`
`had to be disclaimed.
`
`Based solely on the fact that there are some
`
`registrations incorporating descriptive numbers,
`
`the
`
`1 Applicant notes that in view of the standard character
`claim in the instant application,
`the spelling of the mark
`sought to be registered is "EPS 7630" rather than "EPs
`7630," as it sometimes appears in the Office Action.
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`Examiner urges that:
`
`"It is likely that the number in the proposed mark,
`
`7630, would also be perceived by prospective customers
`
`as informative rather than as a source indicator."
`
`Plainly, this conclusion does not remotely follow from
`
`the proffered documentation.
`
`The Examiner has not submitted the advertisements,
`
`dictionary definitions, and other documentation from the
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`prosecution histories of these newly cited registrations
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`which would explain the basis for the conclusion in those
`
`cases that the numbers in those cases were considered merely
`
`descriptive.
`
`Nor has she submitted anything to suggest that the four
`
`digit number incorporated in the mark of the instant
`
`application should be considered merely descriptive, or that
`
`a consumer would perceive it as such.
`
`Plainly:
`
`* The Examiner, who has the burden of proof on the
`
`issue of descriptiveness, has failed to offer even a
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`scintilla of evidence indicating that the distinctive "7630"
`
`in applicant's mark is in any way descriptive.
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`* Despite the registrations that the Examiner has
`
`located and made of record, she has failed to locate even a
`
`single one in which anything as complex as a four digit
`
`number has ever had to be disclaimed as descriptive.
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`* A simple search of the Office records shows that the
`
`only mark known to the Patent and Trademark Office, other
`
`than the mark of applicant, which even incorporates the four
`
`digit number "7630" was a mark in which the number was part
`
`of a street address, one which is not relevant here (Exhibit
`
`1).
`
`* Consumers would not consider the "7630" of
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`applicant's mark anything other than what it is, namely, a
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`distinctive component of applicant's mark "EPS 7630."
`
`As has been previously discussed, and is discussed in
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`greater detail below,
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`the "7630" component of applicant's
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`mark is far more distinctive than either of the marks cited
`
`by the Examiner.
`
`Finally if, contrary to law,
`
`the Examiner were correct
`
`in concluding that disclaimers in unrelated registrations
`
`were talismanic on the issue of how a prospective customer
`
`would perceive the marks involved here,
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`then:
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`* "EP" (at the heart of both cited registrations) would
`
`likely be perceived by prospective customers as informative
`
`rather than as a source indicator, as it has been disclaimed
`
`in a large number of registrations and applications.
`
`(See
`
`Exhibit 2); and
`
`* Numbers would not likely be perceived by prospective
`
`customers as informative rather than as source indicators
`
`because even the very simplest of all numbers,
`
`the number
`
`"1," is regularly incorporated into registrations without
`
`the need for a disclaimer.
`
`(See Exhibit 3.)2
`
`2 The Examiner has also submitted a handful of
`
`advertisements where there is a trademark registration
`notice between a word and a number. These advertisements,
`like the registrations discussed above, prove nothing.
`
`There are many reasons why a marketer may do this,
`the fact that:
`
`including
`
`* It may have registered the word alone as a mark in one or
`more countries;
`
`* It may be marketing a variety of such goods, designating
`each with its own number; or
`
`* It may have a printer who has misplaced the trademark
`registration notice for its foreign registration.
`
`Interestingly, one of the Examiner's own advertisements is
`
`directed to the brand "BNO 1095," and here the marketer has
`placed the trademark notice after the four-digit number
`1095. See the Examiner's Bionorica advertisement for "BNO
`1095“."
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`2. Two letter marks, such as "EP,"
`are inherently weak marks
`
`The only portion of the pair of marks cited by the
`
`Examiner having anything to do with applicant's mark are the
`
`letters "EP." But these two letter marks are inherently
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`weak.
`
`There are only a relatively small number of marks that
`
`can be formed from two letters. Absent a strong showing of
`
`fame, granting a broad monopoly to two letter marks is akin
`
`to granting significance to "OF," "IS," "ON" or "T0," the
`
`kind of words Internet search engines typically ignore.
`
`Thus, even in those cases where the two letter marks in
`
`question are not highly suggestive (and, as discussed below,
`
`the two letter "EP" marks cited here are very highly
`
`suggestive) they are weak marks.
`
`Indeed,
`
`two letter marks are often perceived as mere
`
`abbreviations in light of the fact that there are so many
`
`abbreviations that are two letters long. For example,
`
`the
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`web site abbreviations.com lists some 73 expressions for
`
`which the two letters "EP" are an abbreviation.
`
`(Exhibit 4.)
`
`As the Federal Circuit Court of Appeals made clear in
`
`Electronic Design & Sales Inc. v. Electronic Data Systems
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`Co;p., 21 USPQ2d 1388 (Fed. Cir. 1992), marks which are
`
`composed of even three letters are weak marks, so that there
`
`is often no likelihood of confusion, even when the marks of
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`the
`
`two parties are nothing more than the same three
`
`letters.
`
`In the Electronic Design case, although the Opposer's
`
`computer services were sold to the automotive, merchandising
`
`and communications fields under the mark "EDS," and
`
`applicant sold its power supplies in the same fields, under
`
`the substantially identical mark "E.D.S.," the Court
`
`overturned a Trademark Trial & Appeal Board finding of
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`likelihood of confusion.
`
`Focusing upon the close similarity between the parties‘
`
`initials marks "EDS" and E.D.S.," the Court ruled:
`
`The near identity of the marks here is
`
`apparent and is not seriously disputed.
`
`But it ... was given excessive weight by
`
`the Board...." ;g. at 1392, n.2.
`
`To the same effect are Church of the Larger Fellowship
`
`v. Conservation Law Foundation, 221 USPQ 869 (D. Mass. 1983)
`
`and NEC Electronics Inc. v. New England Circuit Sales Inc.,
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`13 USPQ2d 1058 (D. Mass. 1989).
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`In the Church case,
`
`two organizations were using the
`
`same three letter mark "CLF," both in a block letter format,
`
`and both at the top of all of their printed materials. ;g.
`
`at 871. Both organizations were non—profits,
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`located in the
`
`same city.
`
`In finding an absence of conflict,
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`the court noted
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`that:
`
`*
`
`"use by several other concerns across the country,
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`albeit not for plaintiff's precise category of goods,
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`weakens the [plaintiff's] mark." ;g. at 874; and that
`
`*
`
`"although examples of exceptionally strong initialisms
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`may be cited [for example, AT&T and NBC]
`
`these only relegate
`
`this particular mark [CLF]
`
`to its humble place." Ibid.
`
`In the ggg case,
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`the court granted the defendant
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`summary judgment of non-infringement though its mark, NEC
`
`with an "S" as the end --"NECS," was used in the business of
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`being a broker of computer chips, while the plaintiff's
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`federally registered "NEC" mark was used on electronic
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`components, such as computer chips. ;g. at 1089.
`
`The court pointed out that while the parties "are in
`
`the same industry, seek to sell to some of the same
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`organizations and advertise in some of the same media,"
`
`there was no likelihood of confusion. Id. at 1062 and 1061.
`
`In short,
`
`the cited registrations are weak here because
`
`they are merely two-letter marks, which are,
`
`in any event,
`
`inherently weak.
`
`Indeed, a check in the records of the Patent and
`
`Trademark Office shows that there are some 110 applications
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`which have been filed in the US Patent and Trademark Office
`
`just for the exact mark "EP." (Exhibit 5.)
`
`3. The "EP" in the cited registrations is at least
`highly suggestive of the goods and,
`therefore,
`a very weak element of these marks
`
`Applicant has previously shown (Amendment dated March
`
`11, 2009 at 3-8)
`
`that the two letter mark "EP" is a very
`
`weak one in the field of these goods, as those two letters
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`are, at the very least, highly suggestive of the goods in
`
`the cited registrations, That discussion is incorporated by
`
`reference and will not be repeated herein.
`
`Acronym Web sites and Internet advertising also reflect
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`that "EP" is informative rather than a source indicator for
`
`the goods in the cited registrations. See, for example:
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`* The all—acronyms.com entry for "EP" as a definition
`
`for ephedrine:
`
`"What is EP?
`
`one of the definitions of EP is 'ephedrine'"
`
`(Exhibit 6)
`
`* The myfabo1ous1ife.com advertisement for ephedrine:
`
`"Buying Ephedrine Online Without Prescription. Ep."
`
`(Exhibit 7)
`
`* The officia1flo.com advertisement for ephedrine via
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`COD delivery:
`
`"Ephedrine ... Shipped Overnight Express. Buy COD Ep."
`
`(Exhibit 8)
`
`* The nitropharm.com advertisement for ephedrine:
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`"Ephedrine HCL 50 mg!
`
`_ 10 _
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`
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`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`[EP1]"
`
`(Exhibit 9)
`
`* The online advertisement for an Ephedrine Detector
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`Kit:
`
`"EP-1 Ephedrine Detection Kit"
`
`(Exhibit 10)
`
`Plainly,
`
`"EP" is a very weak mark in the field of these
`
`goods. Such descriptive terms are given very narrow
`
`protection by the Federal Circuit. They
`
`"may be given little weight in reaching a conclusion on
`
`the likelihood of confusion." Cunningham v. Laser Golf
`
`Corp., 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting,
`
`In re National Data Co;p., 224 USPQ 749, 752 (Fed. Cir.
`
`1985).
`
`4. Third party "EP" marks for similar goods weaken
`the cited "EP" registrations substantially further
`
`Applicant's mark EPS 7630 coincides with the prior
`
`registrations only insofar as two letters of the respective
`
`...1l_.
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`marks. There are five additional alphanumerics (letters and
`
`nubers) in applicant's mark which are completely different
`
`from anything in either of the cited marks (and three
`
`additional alphanumerics in the cited mark EP 12.5 which are
`
`completely different from anything in applicant's mark).3
`
`On the other hand,
`
`there are three separate
`
`registrations owned by others, and a variety of common law
`
`trademarks of others on the marketplace, all of which:
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`* Are or commence with "EP," and
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`* Are directed to the same or substantially similar
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`goods as those in the cited registrations.
`
`In each case,
`
`the overlap with the registrations cited
`
`by the Examiner is a good deal greater than any overlap
`
`involved in the instant case. Plainly,
`
`"Evidence of third—party use of similar marks on
`
`similar goods is relevant to show that a mark is
`
`3 These three numbers don't add much in the way of
`distinctiveness to the cited mark,
`in any event. As shown in
`Applicant's Amendment dated March 10, 2009, an industry-wide
`standard dosage for ephedrine is 12.5 mg.
`(Exhibit 3 to such
`amendent at pages 1-4)
`
`-12-
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`relatively weak and entitled to only a narrow scope of
`
`protection." Palm Bay Imports, Inc. v. Veuve Clicggot
`
`Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1693
`
`(Fed. Cir. 2005).
`
`a. Registration 2,279,311
`
`Third party registration 2,279,311 is for the mark "EP"
`
`and design, for "dietary supplements." (Exhibit 11.) The
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`mark is owned by Endurance Products, and its "EP" brand
`
`appears in its advertisements and on the labels for its
`
`goods.
`
`One of the dietary supplements advertised and marketed
`
`by Endurance Products is a product which, just like the
`
`goods in the cited registrations, aids the user's lungs.
`
`This dietary supplement:
`
`"exerts its protective effect upon red and white blood
`
`cells that pass through the lungs in addition to the
`
`cells of the lung itself." (Exhibit 12.)
`
`Endurance Products also markets and advertises quite a
`
`few other dietary supplements using its registered "EP"
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`brand,
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`including EP® Plain Niacin; EP® Pantethine, EP®
`
`-13_
`
`
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`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`Phytosterols, EP® L-Arginine, EP® MegaNatural, EP®
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`Resveratrol, EP® PepZin—GI (Ibid.)
`
`A larger photo of Endurance Products‘
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`"EP" brand on its
`
`dietary supplement which,
`
`like the "EP" product of the cited
`
`registration, aids the user's lungs, is annexed as Exhibit
`
`13.
`
`In this connection, Applicant encloses a collection of
`
`registrations showing the overlap between dietary
`
`supplements, on the one hand, and "bronchodilators," on the
`
`other, registrations covering both goods.
`
`(Exhibit 14.)
`
`Endurance Products’
`
`"EP" brand for a dietary supplement
`
`for the beneficial treatment of the lungs, and each of its
`
`other EP marks for dietary supplements discussed above, are
`
`obviously far closer to the cited EP registrations than
`
`applicant's mark is.
`
`There are a number of other third party dietary
`
`supplements, available on the marketplace, which are sold
`
`under the "EP" brand and closely related brands.
`
`-14..
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`b. EP Liver Cleanse Professional Herbal Extract
`
`Additionally available on the marketplace is the
`
`dietary supplement "EP" Liver Cleanse Professional Herbal
`
`Extract, available at thewolfeclinic.com.
`
`(Exhibit 15.)
`
`This EP dietary supplement product is obviously far
`
`closer to the cited EP registrations than applicant's mark
`
`is.
`
`c. Xymogen's "EP" line of dietary supplements
`
`Additionally available on the marketplace, at
`
`healthwarehouse.com is Xymogen's "EP" line of dietary
`
`supplements.
`
`(Exhibit 16.)
`
`For example, Xymogen's Resveratin EP is available at
`
`the acuatlanta.net web site.
`
`(Exhibit 17.)
`
`This EP line of dietary supplements is obviously far
`
`closer to the cited EP registrations than applicant's mark
`
`is.
`
`_l5_
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`d. Dedicated Athlete's "EP—NO"
`
`Additionally available on the marketplace, at ride-
`
`this.com is Dedicated Athlete's "EP-NO" brand of dietary
`
`supplements.
`
`(Exhibit 18.)
`
`This EP dietary supplement product is obviously far
`
`closer to the cited EP registrations than applicant's mark
`
`is.
`
`e. Twice Daily EP w out Iron
`
`Additionally available on the marketplace, at
`
`vitaminpro1ine.com is the dietary supplement Twice Daily EP
`
`w out Iron.
`
`(Exhibit 19.)
`
`This EP dietary supplement product is obviously far
`
`closer to the cited EP registrations than applicant's mark
`
`is.
`
`f. EPI ModuProst and EPI Mbduchol
`
`Additionally available on the marketplace, at hbees.com
`
`are the dietary supplements EPI MbduProst and EPI Mbduchol.
`
`(Exhibit 20.)
`
`_ 15 _
`
`
`
`Serial No. 76/690,276
`Law Office 114
`-
`Examiner: Suzanne Blane
`
`These EPI dietary supplement products are obviously far
`
`closer to the cited EP registrations than applicant's mark
`
`is.
`
`g. Registration 3,625,377
`
`Third party registration 3625377 is for the mark EPIONE
`
`(that is, "EPI 1"). The goods in the registration are
`
`"homeopathic pharmaceuticals for use in the treatment of and
`
`the prevention of disorders of ... the respiratory system."
`
`(Exhibit 21.)
`
`This "EPI 1" for homeopathic pharmaceuticals for use in
`
`the treatment of disorders of the respiratory system is
`
`obviously far closer to the cited EP registrations for such
`
`goods than applicant's mark is.
`
`h. Registration 3,531,161
`
`Third party Registration 3,531,161 is for the mark EPAX
`
`for "dietary supplements for medical ... purposes." (Exhibit
`
`22.)
`
`This registrant is a leading supplier of the EPAX
`
`dietary supplement 0mega—3 (Exhibit 23) which is regularly
`
`-17-
`
`
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`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`advertised as one which may "boost lung function during
`
`sports." (Exhibit 24.)
`
`This EPAX for a dietary supplement for use in the
`
`enhancement of lung function is obviously far closer to the
`
`cited EP registrations for such goods,
`
`than applicant's mark
`
`is.
`
`Under the DuPont standards relating to third party
`
`registrations and third party marks in the marketplace,
`
`the
`
`cited EP registrations are very weak marks indeed. In re E.
`
`I. du Pont de Nemours & Co., 177 USPQ 563, 567 (C.C.P.A.
`
`1973)(see, e.g., Factors 6 and 11)
`
`5. The cited marks are additionally weakened
`by the apparent complete absence of any
`advertising for them
`
`It is hornbook law that the strength of a mark is
`
`dependent,
`
`in significant part, on the degree to which the
`
`trademark owner advertises its goods to its potential
`
`customers using the mark in question. In re E.I. du Pont de
`
`Nemours & Co., 177 USPQ 563, 567 (C.C.P.A. 1973)(Factor 5).
`
`Just as widespread advertising of a registrant's mark
`
`enhances the strength of a mark,
`
`the absence of advertising
`
`clearly weakens it. As the Supreme Court has noted:
`
`_18._
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`"[P]eople float on a psychological current engendered
`
`by the various advertising devices which give a
`
`trademark its potency." Mishawaka Rubber & Woolen Mfg.
`
`Co. v. S.S. Kresge Co., 316 US 203, 208 (1942)(emphasis
`
`added).
`
`In the instant case, however,
`
`the cited marks are
`
`essentially impotent. The Examiner's own search has
`
`confirmed this. She has found same of the advertising of the
`
`cited registrant at supp1ementwarehouse.com, but she has
`
`failed to find any mention of the cited marks.
`
`Applicant's own search confirms the impotency of the
`
`cited marks. If one visits the web site of the registrant,
`
`Dickey's dmdpharm.com, he or she will find multiple
`
`references to its ephedrine products and their "bronchial"
`
`utility. For example, one of its products is advertised as
`
`providing
`
`"fast treatment for ... wheezing due to bronchial
`
`asthma [and] phlegm in bronchial tubes." (Exhibit 25.)
`
`But there is not even a single reference to "EP"
`
`anywhere at the web site. See the results of the Google
`
`search of the dmdpharm.com website, a search which sought to
`
`locate whether there was any reference to "EP" at that web
`
`-19-
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`site.
`
`(Exhibit 26.) At the website, one finds instead ads
`
`for Dickey's other branded goods, such as EPHEDRINE PLUS”,
`
`EPHED PLUS”, EPHED“ 60 and EPHRINE PLUS“.
`
`(See Exhibit 25.)‘
`
`It seems clear that the owner of the cited marks is
`
`spending not a dime to advertise them. The otherwise very
`
`weak "EP" marks cited by the Examiner are weakened still
`
`further by the absence of advertisements for them. In light
`
`of the many other brands advertised at the cited
`registrant's web site,
`the complete absence of online
`
`advertising for the marks cited by the Examiner speaks
`
`volumes on the "impotency" of these two marks.
`
`6. The more significant portion of applicant's
`mark is plainly the distinctive "7630"
`
`Despite the fact that the initial portion of
`
`applicant's mark is composed of letters rather than numbers,
`
`the more significant portion of applicant's mark is plainly
`
`the arbitrary and distinctive "7630," for a variety of
`
`reasons I
`
`* As discussed above,
`
`the four digit number in
`
`applicant's mark is highly distinctive. Indeed, it is
`
`4 These registrations are, of course, also owned by Dickey,
`the owner of the cited registrations.
`(Exhibit 27.)
`
`-20..
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`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`substantially unique, being found in but a single other mark
`
`in the many million records of the Patent and Trademark
`
`Office. Moreover,
`
`in that other mark it is merely part of
`
`some third party's street address in St. Paul, Minnesota.
`
`(Supra at 4.)
`
`* The four digit number in applicant's mark is set
`
`apart from the letters in the mark, and the four digits are
`
`obviously more numerous than the three letters in the mark.
`
`* Except in the case of famous marks, brief letter
`
`marks,
`
`that is, marks composed of just two or three letters,
`
`are afforded a very modest scope of protection under the
`
`trademark law.
`
`(Supra at 6-9.)
`
`Plainly, consumers seeing applicant's mark would
`
`appreciate that the distinctive four digit number in
`
`applicant's mark is the more significant portion of the
`
`mark.
`
`7. Under the applicable case law, where the only
`overlap between the marks is the "highly suggestive"
`earlier mark and the first two letters of
`
`applicant's mark, and applicant's mark incorporates
`five additional alphanumerics,
`including a separate
`distinctive element, confusion is highly unlikely
`
`As discussed above,
`
`the only overlap between the marks
`
`here is the "highly suggestive" earlier mark and the first
`
`_ 21 _
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`
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`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`two letters of applicant's mark. In like circumstances,
`
`the
`
`Board and the Federal Circuit have been extremely reluctant
`
`to approve a finding of likelihood of confusion.
`
`In Industrial Adhesive Company v. Borden, Inc., 218
`
`USPQ 945, 951 (TTAB 1983), opposer's mark "BOND~PLUS" was
`
`completely encompassed by the applicant's mark WONDER BOND
`
`PLUS. ;g. at 951.
`
`Moreover, both marks were for adhesives, that is,
`
`related goods. ;g. at 950.
`
`The Board noted that though the record did not contain
`
`significant evidence of trade usage or understanding of
`
`"BOND" and "PLUS" in the adhesives field,
`
`the common
`
`dictionary meaning of these terms made the case for a narrow
`
`scope of protection. ;g. at 951.
`
`The Borden Board concluded that the opposer's “BOND-
`
`PLUS” mark was weak and could properly be "completely
`
`encompassed" by applicant's mark “WONDER BOND PLUS" without
`
`there being a likelihood of confusion, even though the only
`
`differing term "WONDER" was itself "somewhat laudatory." ;g.
`
`at 951.
`
`“This is primarily because opposer's “BOND-PLUS" mark
`
`is so highly suggestive of adhesive products that it
`
`-22..
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`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`may be regarded as a “weak” mark such that addition of
`
`other matter, even of a suggestive or laudatory
`
`character, would in our judgment be capable of
`
`distinguishing “BOND-PLUS" from other adhesive marks in
`
`the minds of the consuming public." lg. at 951.
`
`In Standard Brands,
`
`Inc. v. Peters, 191 USPQ 168, 172
`
`(TTAB 1975),
`
`the Board held:
`
`"It is settled that, unlike the case of arbitrary
`
`or unique designations, suggestive or highly
`
`suggestive terms, because of their obvious
`
`connotation and possible frequent employment in a
`
`particular trade as part of trade designations,
`
`have been considered to fall within the category
`
`of “weak” marks, and the scope of protection
`
`afforded these marks have been so limited as to
`
`permit the use and/or registration of the same
`
`mark for different goods or a composite mark
`
`comprising this term plus other matter, whether
`
`such matter be equally suggestive or even
`
`descriptive, for the same or similar goods."
`
`The Board concluded that Applicant's "CORN-ROYAL" for
`
`butter and margarine was not confusingly similar to
`
`Opposer's "ROYAL" for liquid shortening.
`
`_23_
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`In Murray Corporation of America v. Red Spot Paint and
`
`Varnish Co., 280 F.2d 158, 126 USPQ 390 (CCPA 1960)
`
`the
`
`owner of a registration for EASY for appliance paint brought
`
`an opposition against EASYTINT for white paint.
`
`The Court recognized that:
`
`* applicant's mark wholly encompassed the Opposer's
`
`mark,
`
`* the overlapping portion of the two marks was
`
`"suggestive,"
`
`* the additional portion of applicant's mark was itself
`
`descriptive; and
`
`* the two products would be sold in the same paint
`
`stores and have the same purchasers.
`
`Nevertheless,
`
`the Court concluded that there was no
`
`likelihood of confusion:
`
`"[A]ppe1lant is not entitled to preempt the use of this
`
`word generally and certainly not in this case just
`
`because appellee has joined ‘Easy’ with a word that
`
`connotes color and is descriptive of its goods. 280
`
`F.2d at 161."
`
`-24..
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`See also Sweats Fashions. Inc. v. Pannill Knitting Co.,
`
`833 F.2d 1560, 1565 (Fed. Cir. 1987)
`
`(no confusion between
`
`Ultra Sweats for sweatshirts and Sweats and design for
`
`active sportswear).
`
`In sum, where, as here, the cited registrations are
`
`extremely weak, and the only overlap between the marks is
`
`the "highly suggestive" earlier mark,
`
`there is no likelihood
`
`of confusion.
`
`Indeed, this case is an a fortiori case for this result
`
`in light of the distinctive element in applicant's mark,
`
`"7630." In the cases cited above,
`
`the applicant's mark
`
`clearly differed from the cited mark only by a laudatory or
`
`descriptive term.
`
`The law has been sumarized as follows in the Trademark
`
`Manual:
`
`"If the common element of two marks is "weak" in that
`
`it is generic, descriptive or highly suggestive of the
`
`named goods or services, consumers typically will be
`
`able to avoid confusion unless the overall combinations
`
`have other commonality." Id. at § l207.0l(b)(viii)
`
`(emphasis added).
`
`-25-
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`Here, however, there is no "other comonality." There
`
`is no likelihood of confusion.
`
`8. Applicant's goods are distinctly different
`from those of the cited registrant
`
`While, as the Examiner notes, it may not be
`
`"controlling," it is quite relevant that applicant's goods
`
`are distinctly different from those of the registrant. The
`
`goods of the cited registrant are "bronchodilators," a term
`
`which is something of a euphemism.
`
`(See infra at 35—37.)
`
`Applicant's goods are very specific
`
`plant-based pharmaceuticals for the treatment of
`
`respiratory diseases, namely,
`
`those based on an
`
`ethanolic extract of the roots of Pelargonium sidoides.
`
`The Examiner has failed to cite any reference which
`
`suggests that applicant's goods share either the
`
`bronchodilator effect of the registrant's goods 9; the
`
`energy boosting/recreational drug effect of the registrant's
`
`goods.
`
`(See Exhibit 28.) A consuer looking for any benefit
`
`derived from the registrant's goods would know to look
`
`elsewhere.
`
`Indeed, The Examiner has failed to find any online
`
`store that offers both registrant's "bronchodilators" sold
`
`_26_
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`under the EP mark and applicant's goods.
`
`The Examiner focuses on the fact that both products
`
`have an effect on the lungs. But there are a number of third
`
`party products on the market which have an effect on the
`
`lungs, and they are sold with marks a good deal closer to
`
`the registrant's mark than applicant's.
`
`(Supra at 11-18).
`
`Finally,
`
`the goods of the cited registrant have a
`
`certain aura about them as they are closely regulated by the
`
`FDA. On the other hand, applicant's goods have no such
`
`regulation. They can be freely purchased without wondering
`
`whether the FDA might come calling.
`
`The Examiner's Arguments
`
`The Examiner's arguments are without merit.
`
`1. The Examiner urges that "trademarks and/or service
`
`marks consisting of the singular and plural forms of the
`
`same term are essentially the same mark." She says that
`
`applicant "uses the plural form of [the cited mark]."
`
`The short answer is that applicant does not use the
`
`plural form of the cited mark. The marks involved here,
`
`unlike the marks involved in the Examiner's cases, do not
`
`-27..
`
`
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`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`"consist of" the singular and plural of the same mark,
`
`differing only by the single letter "s." Instead,
`
`the cited
`
`marks incorporate "EP" whereas applicant's mark is five
`
`alphanumerics away,
`
`"EPS 7630."
`
`Moreover, even if, contrary to fact, applicant's mark
`
`were only "EPS," that would still be a 50% addition,
`
`three
`
`times as large as the 16% addition that you get when you add
`
`an "s" to ZOMIE, NEWPORT and RED DEVIL,
`
`in the Examiner's
`
`cases .
`
`2.
`
`In dealing with the substantial evidence submitted
`
`by applicant with its Amendment dated March 11, 2009 that EP
`
`means ephedrine,
`
`the Examiner argues that "applicant
`
`provides no evidence to support the impression made by the
`
`term EP on the average consumer." (emphasis added).
`
`First,
`
`this is not the correct legal test. In the case
`
`of In re Omaha National Corporation, 24 USPQ2d 1859 (Fed
`
`Cir. 1987),
`
`the applicant argued that its mark "FIRSTIER"
`
`(= "first tier") for banking services was not merely
`
`descriptive because the vast majority of its customers for
`
`the banking services sold under the mark would 59;
`
`understand that "first tier" was a term of art for a type of
`
`bank.
`
`-28..
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`The Federal Circuit ruled, however, that the mark was
`
`nevertheless descriptive:
`
`"descriptiveness in not determined by its meaning only
`
`to the class of regular customers with the largest head
`
`count." (;g. at l861)(emphasis added).
`
`Instead, it is whether any actual or prospective customers
`
`would appreciate that the mark was descriptive.
`
`In the Omaha case,
`
`the mark was deemed descriptive
`
`since some corporate customers would understand that the
`
`term was descriptive. In the instant case,
`
`those customers
`
`with a background in the sciences would understand that the
`
`term "EP" means ephedrine, so that the mark is descriptive
`
`or highly suggestive.
`
`Second, applicant has provided substantial additional
`
`evidence that the average consumer would find the cited "EP"
`
`marks to be extremely weak ones. See generally:
`
`Section 2, supra - Two letter marks, such as the "EP"
`
`of the cited marks, are inherently weak marks
`
`Section 3, supra - Particularly the acronym dictionary
`
`entry for "EP," the online ads calling ephedrine "EP," and
`
`the online references to ephedrine Hcl as "EP1."
`
`-29..
`
`
`
`Serial No. 76/690,276
`Law Office 114
`Examiner: Suzanne Blane
`
`Section 4, supra — Particularly the various third party
`
`"EP" marks being used in the marketplace for the same or
`
`similar goods as those of the cited registrant.
`
`Section 5, supra — The absence of advertising for the
`
`cited brand.
`
`3. The Examiner argues that the owner of the cited
`
`marks has a family of marks, "the same mark followed by
`
`different numbers in multiple registrations," so that the
`
`public would assume that "EP" followed by any number was a
`
`mark of the cited registrant.
`
`But the Examiner has clearly failed to show that the
`
`cited registrant has a recognizable family of marks. As the
`
`Federal Circuit held in J & J Snack Foods Cogp. v.
`
`McDonald's Cogp., 18 USPQ2d 1889 (Fed. Cir. 1991):
`
`"A family of marks is a group of marks having a
`
`recognizable common characteristic, wherein the
`
`marks are composed and used in such a way that the
`
`public associates not only the individual marks,
`
`but the common characteristic of the family, with
`
`_the trademark owner." Lg. at 1891 (emphasis
`
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