Request for Reconsideration afier Final Action
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`Page 1 of 19
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`PTO Fonn 1960 (Rev 9/2007)
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`OMB No. xx)o<-yoocx (Exp. x/xxxx)
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`Request for Reconsideration after Final Action
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`The table below presents the data as entered.
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`LAW OFFICE ASSIGNED
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`LAW OFFICE 107
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`77010647
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`1nP“*Fie'd
`SERIAL NUMBER
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`MARK SECTION (no change)
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`ARGUMENT(S)
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`Responsive to the Final Ofiice Action, dated November 6, 2007, please consider the following
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`response:
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`Likelihood of Confusion.
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`REMARKS
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`15 U.S.C. § 1052(d), because of an alleged likelihood of confusion between Applicant’s mark and
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`In the Office Action, registration of Applicant’s mark was again refused under Section 2(d),
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`United States Registration 3,194,667 for the stylized mark “ZACOL NMX” (“the ‘667 Registration”).
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`The Office Action indicated that Applicant’s arguments were considered but
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`the refusal was
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`maintained. Applicant respectfully requests that the examining attorney reconsider this determination
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`in light of the following arguments in addition to the arguments and evidence previously submitted by
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`Applicant in its Response dated July 20, 2007.
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`Applicant respectfillly submits that no likelihood of confusion exists under Section 2(d) of the
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`Trademark Act between its mark “ZUCOL” and the mark covered by the ‘667 Registration.
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`Accordingly, Applicant requests reconsideration of the Examining Attomey’s position in light of the '
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`following remarks.
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`A.
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`Availability of Goods Sold under the Marks
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`Applicant’s goods are used to treat colds and other diseases of the respiratory tract and are sold
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`Request for Reconsideration afier Final Action
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`‘
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`Page 2 of 19
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`through mass retailers. The ‘667 Registration includes a lengthy description of goods.
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`However, as discussed in more detail below, Applicant respectfully submits that the goods sold under
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`the ‘667 Registration are directed to treatment of issues relating to the digestive tract or colon. Putting
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`that issue aside, Applicant has thoroughly searched the intemet to find goods sold under the ‘667
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`Registration that could be purchased by consumers. Further, Applicant has searched several stores in
`person and on-line in an attempt to actually find any products sold under the ‘667 Registration.
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`Applicant has not been successful. Applicant notes that the ‘667 Registration was filed as an
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`application pursuant to 15 U.S.C. § 1141f(a) (Section 66(a) of the Lanham Act) and as such has never
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`made a declaration that Registrant is in fact using the mark in the United States. The results of
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`Applicant’s investigation are consistent with Registrant’s promotional materials on the intemet which
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`states that “ZACOL NMX is launched for the local market in It 3:,” ye Exh. A, p. 1, and that
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`“Zacol NMX, is marketed in Italy.” Si Exh. A, at p. 4. Accordingly, it appears that Registrant’s
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`goods sold under the Zacol NMX mark are not available in the United States.
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`B.
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`Similarity or Dissimilarity of the Marks.
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`It is well established under the relevant case law that the marks must be Considered in their
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`entireties which is the way consumers encounter the marks. Additionally, the marks must be
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`considered as a whole because “the commercial impression of a trademark is derived from it as a
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`whole, not from elements, separated and considered in detail.” Qpryland USA Inc. v. Great
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`American Music Show, Inc., 970 F.2d 847, 23 U.S. P.Q. 2d 1471, 1473 (Fed. Cir. 1992). The courts
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`have made clear that the marks should be considered as a whole and not be broken into component
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`parts to reach a conclusion of confusing similarity. Si In re Hearst Corp, 25 U.S.P.Q.2d 1238, 1239
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`(Fed. Cir. 1992) (stating “marks tend to be perceived in their entireties, and all components thereof
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`must be given appropriate weight”).
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`In spite of this, and without a recitation to supporting authority,
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`the Office Action
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`impermissibly parses the marks and then asserts “that the commercial impression of the marks is
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`highly similar because applicant’s mark, ZUCOL, and the dominate portion of the registered mark
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`‘ZACOL’ begin with the letter ‘Z’ and end in ‘-COL’. The only difference is the use of a different
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`vowel.” Such parsing and breaking into components is improper and ignores that the registered mark
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`Request for Reconsideration afier Final Action
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`Page 3 of 19
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`as a whole is “ZACOL NMX.” Such an analysis violates the relevant legal standards for an
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`analysis of the similarity of marks that has been well established by the courts.
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`Likewise, the Ofiice Action goes on to allege that consumers are accustomed to seeing letters
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`or acronyms used at the end of a name or mark, and again without legal authority, apparently
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`concludes that the second word of Registrant’s mark can be ignored for the purposes of the analysis of
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`a likelihood of confusion because it is allegedly common to have letters afier the mark for different
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`versions of these type of products. As support,
`the Office Action cites to examples of other
`registrations, such as the registrations for EFFEXOR and EFFEXOR XR and CLARINEX and
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`CLARINEX-D. Such an argument completely ignores the fact that unlike the cited examples,
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`Registrant did not register the term alone, in this case “ZACOL,” and in any event that the Registrant
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`prominately points out the importance of the letters NMX in its advertising materials as showing that
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`Registrant’s product utilizes the patented delivery system. See generally Exh. A, at p. 3. Registrant
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`expressly states on its promotional materials that the letters “NMX” of its mark “Zacol NMX” refer to
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`its use of the patented MMX technology. 111; The Registrant clearly believes the NMX portion of its
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`mark “ZACOL NMX” is important, and in fact, wants to make sure it is clear to consumers that its
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`product is related to its MMX technology. For example, on the page of the web site directed to the
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`Zacol NMX product Registrant’s lead paragraph states, in relevant part, “Zacol.NMX is a dietary
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`supplement based on the MMX technology.
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`.
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`.
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`. NlVlX is a nutraceutical version of MMX
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`technology.” [1] fie Exh. A, at p. 3.
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`Whether or not the “NMX” portion of Registrant’s mark “ZACOL NMX” is considered in the
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`analysis of the similarity of Applicant’s markpto Registrant’s marks affects all the factors considered
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`in a proper analysis under the similarity of the marks prong, including but not limited to appearance,
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`sound, and connotation. Applicant respectfiilly subrriits that it is impermissible to ignore the letters
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`“NMX” of Registrant’s mark “ZACOL NMX” and that such an analysis is improper. Further,
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`Applicant submits that the Office‘Action has not provided any legal authority to the contrary
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`supporting such an analysis.
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`Therefore, while Applicant’s “ZUCOL” mark and the ‘667 Registration for the mark “ZACOL
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`NMX” have several letters in common, the marks must be considered as a whole. Accordingly,
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`Request for Reconsideration after Final Action
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`Page 4 of 19
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`Applicant respectfiilly submits that when an analysis is performed that is consistent with the
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`relevant legal authorities, the differences between the marks are sufficient such that there is not a
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`likelihood of confusion.
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`_Se_e General Mills Inc. v. Kellogg Co., 824 F.2d 622, 627, 3 U.S.P.Q.2d
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`1442, 1445 (8th Cir. 1987). For these reasons, Applicant reasserts the arguments in its Response
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`submitted July 20, 2O07.[2]
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`C.
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`Similarity or Dissimilarity of the Goods or Services.
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`In the Office Action, it is asserted that some of the goods identified in the ‘667 Registration are
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`not, in fact, directed to the colon. A search of the intemet reveals that the product offered by the
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`owner of the ‘667 Registration is in actuality specifically directed to treating various problems
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`associated with the colon. S_e§ Exh. A. Further, such an assertion ignores that Registrant expressly
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`states that it is a “specialty pharmaceutical company that aims to become a global leader in the market
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`of optimized therapies for selected gastro-intestinal diseases.” m Exh. A, at p. 4. Similarly,
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`Registrant states that one of its business fields is “[d]evelopment and commercialization of proprietary
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`drugs, primarily focused on the treatment of Inflammatory Bowel Diseases and colon infections.” _S_e§
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`Exh. A, at p. 5.
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`As mentioned earlier, Applicant has thoroughly investigated and searched the internet to find
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`goods sold under the ‘667 Registration, including those allegedly not directed to the colon as asserted
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`in the Office Action. Applicant has not been successful in finding any products under the mark
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`“ZACOL NMX” which could be purchased. Rather, the only information Applicant is able to locate
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`is provided in Exhibit A, which specifically and expressly states that the product sold by Registrant
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`under its mark “ZACOL NMX” is directed to treating problems associated with the colon. E Exh.
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`A. The corporation’s materials state “The Company’s proprietary clinical development pipeline
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`specifically addresses innovative treatments for Inflammatory Bowel Diseases, with the group’s lead
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`product Lialda launched in the US market and Zacol NMX launched for the local market in Italy.”
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`Exh. A, at p. 1. More specifically, with regard only to its product Zacol NMX, Registrant expressly
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`states that the product is to treat “Intestinal disorders,” Exh. A., at p. 2, and that “Zaco1 NMX is a
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`dietary supplement .
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`.
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`. directed to the colon.” Exh. A, at p. 3.
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`'
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`Further, as discussed above, Applicant has also searched several stores in person and on-line
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`Request for Reconsideration afier Final Action
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`Page 5 of 19
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`and is unable to actually find products sold under the ‘667 Registration. Applicant would note
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`that the ‘667 Registration was filed as an application pursuant to U.S.C. § l141f(a) (Section 66(a) of
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`the Lanham Act), and as such, has never made a declaration that Registrant is in fact using the mark in
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`the United States.
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`In the Office Action it
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`is asserted that
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`the ‘667 Registration includes “Pharmaceutical
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`preparations .
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`.
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`. namely anti-inflammatories, anti-infectives, antacids, anti-flatulars, and anti-
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`parasitics.” Office Action, at p. 3. The Office Action, however, ignores the commonality of these
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`specifically identified medical issues and then attempts to make the naked assertion that the “anti-
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`infectives may be for use in the respiratory tract.” Q There is no support for the proposition that
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`while all the other specifically identified items deal with the digestive system that somehow the anti-
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`infectives are for the respiratory tract. The Ofiice Action attempts to prop up this argument with the
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`statement that some newspaper articles allegedly support a hypothetical argument that respiratory tract
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`infections can be treated by supplements and preparations. LL Applicant points out that one of the
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`alleged newspaper articles is really an advertisement for the product that the “article” is allegedly
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`discussing. S_ee_ Ofiice Action, Attachment 88-89, copyright 2007 Xlear, Inc.
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`The Office Action did not even attempt to support this argument using the promotional
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`materials from Registrant. Further, the newspapers are not conclusive of anything in this matter and
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`do not and carmot refute Registrant’s own statements in their promotion materials. Likewise, the
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`Office Action has no evidence of how the product allegedly sold under the ‘667 Registration utilizing
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`the recited NMX technology to make sure the active ingredient in the product is released only in the
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`colon allegedly treats the respiratory tract. Such arguments are untenable and unsupportable based on
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`the clear and express statements in Registrant’s promotional materials clearly stating that the goods
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`are for the colon.
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`S_e_e_ Exh. A.
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`Applicant has also reviewed the registrations provided with the Office Action which allegedly
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`suggest that the goods at issue are the kind that could emanate from a single source. Applicant
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`respectfully disagrees and asserts that these registrations do not show anything conclusive as it relates
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`to Registrant’s goods and cannot and do not overcome the evidence of Registrant’s own advertising
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`materials which state that the goods allegedly sold under the ‘667 Registration are directed to the
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`Request for Reconsideration afier Final Action
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`. Page 6 of 19
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`colon. Accordingly, the trademark protected under the ‘667 Registration is likely encountered
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`by those consumers having colon or intestinal issues and needing a nutraceutical directed to that
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`specific problem. The Office Action fails to produce evidence showing otherwise.
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`In contrast, Applicant’s goods are encountered by those individuals who are seeking cold or
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`respiratory pharmaceutical preparations. Applicant’s advertising materials focus on cold and flu
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`treatment. _S_e_e Exh. D (“Zucol is a new approach to cold re1ief.”). Therefore, it is unlikely that an
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`individual who is a potential purchaser of the nutraceutical directed to the colon or dietary tract which
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`is sold under the ‘667 Registration will encounter Applicant’s mark and believe that Applicant’s
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`pharmaceutical product sold under the mark “ZUCOL” for treatingicolds or other respiratory issues is
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`sponsored by or afiiliated with the owner of the ‘667 Registration. It is also unlikely that a consumer
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`purchasing Applicant’s “ZUCOL” product for the treatment of colds and respiratory problems would
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`assume that Applicant’s product is produced by the manufacturer of a product for treating colon or
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`intestinal issues.
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`Applicant further asserts that the evidence provided in the Office Action to show that a
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`consumer will allegedly encounter both goods does not, when thoroughly examined, support such an
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`argument.
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`In fact, this argument is contrived and inaccurate. Specifically, if a consumer goes to the
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`cited websites, “shop.safeway.com” and “peapod.com”,
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`it
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`is clear that the consumer does not
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`encounter both types of products at the same time. Q; Office Action, attachments 119 and 120. For
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`example at “shop.safeway.com” the products are listed by broad categories. §e_e Ofiice Action,
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`attachment 119; figalsg Exh. B, at p. 1. To see the products the consumer must click on the box
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`identified by the broad category and the website takes the consumer to a separate page which
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`specifically shows a subset of the general category. See generally Exh. B, at pp. 2-3. For example, on
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`the “shop.safeway.com” site “Cold & Allergy” is specifically identified as one group while “Antacid
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`& Digestive Aids are another. E B, at p. 1. A consumer has to go several pages into the
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`website to even see products within each general category.
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`_S_e;e_ Exh. B, at pp. 2 and 3. As a result, the
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`assertion that both a product for the treatment of a respiratory tract infection and a product for the
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`digestive system or colon would be on the same page or “aisle” is inconsistent with the attached
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`materials and is unsupported. Even on the materials attached with the Office Action, nothing more
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`Request for Reconsideration after Final Action
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`Page 7 of 19
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`than the general categories were shown on the same page. Office Action, attachment 119 and
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`120.
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`Such is also the case at “peapod.com”. $3 Exh. C; 113 Office Action, attachment 120.
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`The goods are again characterized in broad categories and the user must go several levels in to the
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`website to see the products. E Exh. C. The products under the general category, “Cold, Cough and
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`i
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`l
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`Flu”, do not include products which would be in the “Stomach Remedies” categories. Exh. C,
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`compare pp. 3-8 with pp. 9-14.
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`Afier Applicant’s intensive search both on the internet and in several mass retail stores, Where
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`Applicant was unable to locate any products sold under the ‘667 Registration, Applicant submits that
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`it is a vast overstatement to say both products will be encountered by the same purchasers.
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`In fact,
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`there is no such evidence. Applicant performed an intemet search for the goods sold under the ‘667
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`Registration, and was unable to locate goods sold under the ‘667 Registration which are being sold in
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`the United States. Rather, Applicant found Registrant’s advertising materials which expressly state
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`that the Zacol NMX product is sold only in Italy. Exh. A, at p. 1. Accordingly, the Ofiice Action has
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`provided no evidence showing that Registrant’s nutraceutical products sold under the ‘667
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`Registration which are directed to colon and intestinal issues are even sold in the" United States let
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`alone in the cold and flu section of a store. Likewise, there is no evidence they are on the same web
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`page (other than broad categories which include dozens of products) or in the same aisle.
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`Therefore, Applicant submits when the differences between the types of goods identified in the
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`description of goods for the ‘667 Registration and Applicant’s trademark application, and,
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`particularly, the expressly stated use of each product are considered, there is a significant dissimilarity
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`between Applicant’s pharmaceutical preparation for treatment of colds and respiratory tract ailments
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`and Registrant’s nutraceuticals for treating colon related issues.
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`Finally, Applicant respectfully asserts that the Ofiice Action attempts to apply certain
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`presumptions and alleged probative value of certain evidence in support of its argument of a
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`likelihood of confusion between Applicant’s mark and Registrant’s mark when in fact there is
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`absolutely _l\_IQ evidence that Registrant’s goods are being sold in the United States. There is not one
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`piece of evidence or support showing the presence of these products in the United States. The entirety
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`Request for Reconsideration after Final Action
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`Page 8 of 19
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`of the argument regarding the conditions under which the products are encountered and the
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`alleged presumption because they are allegedly medically related and they should be given added
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`protection are based on the hypothesis that Registrant’s product is, in fact, sold in the United States.
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`Accordingly, Applicant asserts that any likelihood of confusion between products sold under
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`Applicant’s mark and a product that is allegedly sold under Registrant’s mark is only conjecture and is
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`completely unsupported. Such an assertion is actually contrary to the facts in this case.
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`In summary, with regard to the ‘667 Registration, Applicant respectfully submits that when the
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`list of factors established In re E.I. DuPont deNemours & Co. 476 F.2d 1357, 177 U.S.P.Q. 563
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`(C.C.P.A. 1973), are considered in evaluating likelihood of confusion, no likelihood of confusion
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`exists between Applicant’s mark and the ‘667 Registration.
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`II.
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`Conclusion.
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`In view of the foregoing, Applicant submits that the application is now in an allowable
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`condition. Prompt, favorable action is, therefore, courteously requested.
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`In the event there remains
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`any impediment to allowance of the mark which could be clarified in a telephonic interview, the
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`Examining Attorney is respectfully requested to initiate such atelephone contact.
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`[ 1] The recited MMX technology appears to somehow control that release of the active ingredient in the
`product sold under the ‘667 Registration such that it is only released in the colon. See id.
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`[2] Applicant notes that the Office Action is correct in that the stylization of the ‘667 Registration should not be
`considered because Applicant’s mark is for standard characters. Accordingly, Applicant withdraws that portion of its
`arguments made in its Response dated July 20, 2007.
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`EVIDENCE SECTION
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`ORIGINAL
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`CONVERTED
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`Request for Reconsideration after Final Action
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`Page 10 of 19
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`ORIGINAL
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`§§§;’IEL1;}('$”
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`DESCRIPTION OF EVIDENCE FILE
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`SIGNATURE SECTION
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`DATESIGNED
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`CONCURRENT APPEAL NOTICE FILED
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`TEAS STAMP
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`USPTO/RFR-209.218.lO7. 140
`-20080506170447098400-770
`10647-420beeb939df522eOcd
`9b999a27f33bd733—N/A-N/A-
`200805061 54018593051
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`PTO Form 1960 (Rev 9/2007)
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`OMB No. xxxx-x)o<x (Exp. xlxxxx)
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`file://\\ticrs-ai5-01\ticrsexport\HtmlToTifi"Input\RFROO012008_O6_1 1_1 l_3 8_59_TTABO...
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`6/1 1/2008
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`Request for Reconsideration afier Final Action
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`Page 11 of 19
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`Request for Reconsideration after Final Action
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`To the Commissioner for Trademarks:
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`Application serial no. 77010647 has been amended as follows:
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`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
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`Responsive to the Final Ofiice Action, dated November 6, 2007, please consider the following
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`I‘CSp OIISCZ
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`I.
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`Likelihood of Confusion.
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`REMARKS
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`In the Office Action, registration of Applicant’s mark was again refused under Section 2(d),
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`15 U.S.C. § l052(d), because of an alleged likelihood of confusion between Applicant’s mark and
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`United States Registration 3,194,667 for the stylized mark “ZACOL NMX” (“the ‘667 Registration”).
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`The Office Action indicated that Applicant’s arguments were considered but
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`the refusal was
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`maintained. Applicant respectfitlly requests that the examining attorney reconsider this determination in
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`light of the following arguments in addition to the arguments and evidence previously submitted by
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`Applicant in its Response dated July 20, 2007.
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`Applicant respectfully submits that no likelihood of confusion exists under Section 2(d) of the
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`Trademark Act between its mark “ZUCOL” and the mark covered by the ‘667 Registration.
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`Accordingly, Applicant requests reconsideration of the Examining Attomey’s position in light of the
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`following remarks._
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`A.
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`Availabilitv of Goods Sold under the Marks
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`Applicant’s goods are used to treat colds and other diseases of the respiratory tract and are sold
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`through mass retailers. The ‘667 Registration includes a lengthy description of goods. However, as
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`discussed in more detail below, Applicant respectfully submits that the goods sold under the ‘667
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`Registration are directed to treatment of issues relating to the digestive tract or colon. Putting that issue
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`aside, Applicant has thoroughly searched the intemet to find goods sold under the ‘667 Registration that
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`could be purchased by consumers. Further, Applicant has searched several stores in person and on-line
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`in an attempt to actually find any products sold under the ‘667 Registration. Applicant has not been
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`file://\\ticrs-ais-01\ticrsexport\HtmlToTifiInput\RFR00012008_O6_l 1_1 1_3 8_59_TTABO...
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`6/1 1/2008
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`Request for Reconsideration afier Final Action
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`Page 12 of 19
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`successful. Applicant notes that the ‘667 Registration was filed as an application pursuant to 15
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`U.S.C. § l14lf(a) (Section 66(a) of the Lanham Act) and as such has never made a declaration that
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`Registrant is in fact using the mark in the United States. The results of Applicant’s investigation are
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`consistent with Registrant’s promotional materials on the intemet which states that “ZACOL NMX is
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`launched for the local market in Italy,” §e_e Exh. A, p. l, and that “Zacol NMX, is marketed in Italy.”
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`_S_e§ Exh. A, at p. 4. Accordingly, it appears that Registrant’s goods sold under the Zacol NMX mark are
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`not available in the United States.
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`B.
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`Similarity or Dissimilarity of the Marks.
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`It is well established under the relevant case law that the marks must be considered in their
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`entireties, which is the way consumers encounter the marks. Additionally,
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`the marks must be
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`considered as a whole because “the commercial impression of a trademark is derived from it as a whole,
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`not from elements, separated and considered in detail.” Opryland USA, Inc. v. Great American Music
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`Show Inc. 970 F.2d 847, 23 U.S. P.Q. 2d 1471, 1473 (Fed. Cir. 1992). The courts have made clear that
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`the marks should be considered as a whole and not be broken into component parts to reach a conclusion
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`of confusing similarity. E In re Hearst Corp, 25 U.S.P.Q.2d 1238, 1239 (Fed. Cir. 1992) (stating
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`“marks tend to be perceived in their entireties, and all components thereof must be given appropriate
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`weight”).
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`In spite of this, and without a recitation to supporting authority, the Office Action impermissibly
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`parses the marks and then asserts “that the commercial impression of the marks is highly similar because
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`applicant’s mark, ZUCOL, and the dominate portion of the registered mark ‘ZACOL’ begin with the
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`letter ‘Z’ and end in ‘-COL’. The only difference is the use of a different vowel.” Such parsing and
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`breaking into components is improper and ignores that the registered mark as a whole is “ZACOL
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`NMX.” Such an analysis violates the relevant legal standards for an analysis of the similarity of marks
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`that has been well established by the courts.
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`Likewise, the Office Action goes on to allege that consumers are accustomed to seeing letters or
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`acronyms used at the end of a name or mark, and again without legal authority, apparently concludes
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`that the second word of Registrant’s mark can be ignored for the purposes of the analysis of a likelihood
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`of confusion because it is allegedly common to have letters after the mark for different versions of these
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`file://\\ticrs-ais-01\ticrsexport\HtmlToTiff[nput\R_FR00O12008_O6_l l_l l_3 8_59_TTABO...
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`6/ 1 1/2008
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`Request for Reconsideration afier Final Action
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`Page 13 of 19
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`type of products. As support, the Office Action cites to examples of other registrations, such as
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`the registrations for EFFEXOR and EFFEXOR XR and CLARINEX and CLARINEX-D. Such an
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`argument completely ignores the fact that unlike the cited examples, Registrant did not register the term
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`alone, in this case “ZACOL,” and in any event that the Registrant prominately points out the importance
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`of the letters NMX in its advertising materials as showing that Registrant’s product utilizes the patented
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`delivery system. See generally Exh. A, at p. 3. Registrant expressly states on its promotional materials
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`that the letters “NMX” of its mark “Zacol NMX” refer to its use of the patented MMX technology. Ld_.
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`The Registrant clearly believes the NMX portion of its mark “ZACOL NMX” is important, and in fact,
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`wants to make sure it is clear to consumers that its product is related to its MMX technology. For
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`example, on the page of the web site directed to the Zacol NMX product Registrant’s lead paragraph
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`states, in relevant part, “Zacol NMX is a dietary supplement based on the MMX technology. .
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`.
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`. NMX
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`is a nutraceutical version of MMX technology.” [1] S3 Exh. A, at p. 3.
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`Whether or not the “NMX” portion of Registrant’s mark “ZACOL NMX” is considered in the
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`analysis of the similarity of App1icant’s mark to Registrant’s marks affects all the factors considered in a
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`proper analysis under the similarity of the marks prong, including but not limited to appearance, sound,
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`and connotation. Applicant respectfully submits that it is impermissible to ignore the letters “NMX” of
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`Registrant’s mark “ZACOL NMX” and that such an analysis is improper. Further, Applicant submits
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`that the Office Action has not provided any legal authority to the contrary supporting such an analysis.
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`Therefore, while Applicant’s “ZUCOL” mark and the ‘667 Registration for the mark “ZACOL
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`NMX” have several
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`letters in common, the marks must be considered as a whole. Accordingly,
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`Applicant respectfully submits that when an analysis is performed that is consistent with the relevant
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`legal authorities, the differences between the marks are sufficient such that there is not a likelihood of
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`confiision. See General Mills Inc. v. Kellogg Co., 824 F.2d 622, 627, 3 U.S.P.Q.2d 1442, 1445 (8th Cir.
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`1987). For these reasons, Applicant reasserts the arguments in its Response submitted July 20, 2007.[ ]
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`C.
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`Similaritlor Dissimilarity of the Goods or Services.
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`In the Office Action, it is asserted that some of the goods identified in the ‘667 Registration are
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`not, in fact, directed to the colon. A search of the intemet reveals that the product offered by the owner
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`of the ‘667 Registration is in actuality specifically directed to treating various problems associated with
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`6/ l 1/2008
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`Request for Reconsideration after Final Action
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`Page 14 of 19
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`the colon. §e_e Exh. A. Further, such an assertion ignores that Registrant expressly states that it
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`is a “specialty pharmaceutical company that aims to become a global leader in the market of optimized
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`therapies for selected gastro-intestinal diseases.” §_e_e_ Exh. A, at p. 4. Similarly, Registrant states that
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`one of its business fields is “[d]evelopment and commercialization of proprietary drugs, primarily
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`focused on the treatment of Inflammatory Bowel Diseases and colon infections.” S_ee_ Exh. A, at p. 5.
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`As mentioned earlier, Applicant has thoroughly investigated and searched the intemet to find
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`goods sold under the ‘667 Registration, including those allegedly not directed to the colon as asserted in
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`the Office Action. Applicant has not been successful in finding any products under the mark “ZACOL
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`NMX” which could be purchased. Rather, the only information Applicant is able to locate is provided
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`in Exhibit A, which specifically and expressly states that the product sold by Registrant under its mark
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`“ZACOL NMX” is directed to treating problems associated with the colon.
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`§e_e Exh. A. The
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`corporation’s materials state “The Company’s proprietary clinical development pipeline specifically
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`addresses innovative treatments for Inflammatory Bowel Diseases, with the group’s lead product Lialda
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`launched in the US market and Zacol NMX la