CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the following documents:
`
`1.
`
`2.
`
`NOTICE OF APPEAL; and
`
`COpy OF THE DECISION BY THE TTAB
`
`has been sent via Express Mail and is being served upon the following office of record this
`
`19th day of March, 2012, as follows:
`
`VIA EXPRESS MAIL
`
`Office of the Solicitor
`
`United States Patent and Trademark Office
`
`Mail Stop 8
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313-1450
`
`
`Gregg A. Paradise
`
`ALVOGE 1'ls5P-021
`
`
`
`I hereby certify that a true copy of the following documents:
`
`1.
`
`2.
`
`NOTICE OF APPEAL; and
`
`COpy OF THE DECISION BY THE TTAB
`
`has been sent via Express Mail and is being served upon the following office of record this
`
`19th day of March, 2012, as follows:
`
`VIA EXPRESS MAIL
`
`Office of the Solicitor
`
`United States Patent and Trademark Office
`
`Mail Stop 8
`
`Post Office Box 1450
`
`Alexandria, Virginia 22313-1450
`
`
`Gregg A. Paradise
`
`ALVOGE 1'ls5P-021
`
`
`
`United States Court of Appeals for the Federal Circuit
`
`
`ALVOGEN IP co. S.A.R.L.,
`
`
`Appellant,
`
`v.
`
`DAVID J. KAPPOS,
`
`Appellee.
`
`NOTICE OF APPEAL
`
`Alvogen IP Co. S.a.r.l. hereby appeals the Court for review of the decision of the United
`States Trademark Trial and Appeal Board affinning the Examining Attorney's final refusal to
`register U.S. Trademark Application No. 77/939,659 for "A" LOGO issued on January 19, 2012,
`and entered on January 20,2012. The decision was received on January 20,2012.
`
`Gregg A. Paradise
`
`LERNER, DA VID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`600 South Avenue West
`Westfield, New Jersey 07090
`Tel:
`908.654.5000
`Attorney for Appellant
`
`ALVOGE 1O.5P-021
`
`
`
`THIS OPINION
`IS NOT A PRECEDENT
`OF THE T.T.A.B.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Mailed:
`January 20 t 2012
`
`Trademark Trial and Appeal Board
`
`In re Alvogen IP Co. S.a.r.l.
`
`Serial No. 77939659
`
`Bruce H. Sales t Gregg A. Paradise and Robert B. Hander of
`Lerner David Littenberg Krumholz & Mentlik, LLP for Alvogen
`I P Co. S. a . r. 1.
`
`April Roach t Examining AttorneYt Law Office 115 (John
`Lincoski, Managing Attorney) .
`
`Before Rogers, Chief Administrative Trademark Judge, and
`Zervas and Lykos, Administrative Trademark Judges.
`
`Opinion by Zervas, Administrative Trademark Judge:
`
`On February 19, 2010, Alvogen IP Co. S.a.r.l.
`
`("applicant") filed an application pursuant to Section l(b)
`
`of the Trademark Act, 15 U.S.C. § 1051(b), for registration
`
`on the Principal Register of the following mark,
`
`
`
`Serial No. 77939659
`
`for International Class 5 goods identified as,
`
`pharmaceutical preparations, namely, antibiotics,
`antidiabetics, antihypertensives,
`antidepressants, analgesics, anti-inflammatories,
`antivirals, and antiepileptics; transdermal
`patches for use in the treatment of infections,
`diabetes, hypertension, depression, pain,
`inflammation, and epilepsy; and contraceptive
`sponges,
`
`and International Class 42 services identified as
`
`"pharmaceutical research services." Applicant entered the
`
`following description of the mark into the record:
`
`"The
`
`mark consists of a stylized A in a triangular-like shape."
`
`The examining attorney finally refused registration
`
`pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
`
`§ l052(d), in view of Registration No. 3127143 for the
`
`following mark,
`
`for International Class 5 goods identified as,
`
`pharmaceutical preparations, namely, medicines
`for the treatment of obesity, tobacco withdrawal,
`and for prevention of cardiovascular diseases;
`dietetic foods adapted for medical use; beverages
`for medical use, namely, nutritionally fortified
`beverages and vitamin fortified beverages;
`
`2
`
`
`
`
`Serial No. 77939659
`
`medicinal infusions in the nature of medicinal
`herbs .1
`
`Applicant appealed the final refusal of its
`
`application. Both applicant and the examining attorney
`
`filed briefs. The refusal to register is affirmed.
`
`Evidentiary Issues
`
`Applicant has included an image of a mobius triangle
`
`in its brief, which was not made of record prior to the
`
`filing of the appeal. The examining attorney's objection
`
`to the image is well taken -
`
`the record should be complete
`
`prior to the filing of an appeal. Trademark Rule 2.142(d).
`
`We have not considered the image of the mobius triangle in
`
`applicant's brief or the discussion regarding the image.
`
`In addition, even though the examining attorney
`
`objected to the inclusion of the image of the mobius
`
`triangle in applicant's brief, applicant included pages
`
`from www.new.myfonts.com with its reply brief. As these
`
`1 The registration includes the following description of the
`mark, ftthe mark comprises a mobius triangle shape"; the following
`color claim, "the color(s) yellow, orange and red is/are claimed
`as a feature of the mark"; and the following color location
`statement, "different shades of the color yellow appear mostly in
`the upper portion of the triangle design, different shades of the
`color orange appear mostly on the left portion of the triangle
`design, and different shades of the color red appear mostly on
`the right portion of the triangle design."
`
`Applicant states that the cited registration is a three
`dimensional mark. The Office, however, does not consider the
`cited mark to be in three dimensions. See TMEP § 807.10 (8th ed.
`2011) .
`
`3
`
`
`
`Serial No. 77939659
`
`pages too were not of record prior to the filing of
`
`applicant's appeal, their submission is untimely and they
`
`have not been given any further consideration.
`
`Id. The
`
`"excerpts" from these webpages duplicated in the reply
`
`brief also have not been given any further consideration.
`
`Likelihood of Confusion
`
`Our determination of the issue of likelihood of
`
`confusion is based on an analysis of all of the probative
`
`facts in evidence that are relevant to the factors set
`
`forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
`
`1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
`
`Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
`
`Cir. 2003).
`
`In any likelihood of confusion analysis,
`
`however, two key, although not exclusive, considerations
`
`are the similarities between the marks and the similarities
`
`between the goods and/or services. See Federated Foods,
`
`Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
`
`(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
`
`F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
`
`Turning first to applicant's and registrant's goods,
`
`we find applicant's goods to be identical-in-part to
`
`registrant's goods. Specifically, registrant's
`
`identification of goods includes pharmaceutical
`
`preparations, namely, medicines for the prevention of
`
`4
`
`
`
`
`Serial No. 77939659
`
`cardiovascular diseases; and applicant's identification of
`
`goods includes pharmaceutical preparations, namely,
`
`antihypertensives and anti-inflammatories.
`
`As for the remaining goods and services, the evidence
`
`submitted by the examining attorney establishes that
`
`(i) registrant's and applicant's goods, and (ii)
`
`registrant's goods and applicant's services, are
`
`commercially related to one another. The examining
`
`attorney submitted numerous third-party registrations which
`
`support her contention that, on the one hand, the involved
`
`goods, and, on the other hand, the registrant's goods and
`
`applicant's services, are of a kind that may emanate from a
`
`single source under a single mark. Third-party
`
`registrations which individually cover a number of
`
`different items and which are based on use in commerce are
`
`not evidence of commercial use of the marks shown therein,
`
`or that the public is familiar with them, but have some
`
`probative value to the extent they suggest that the listed
`
`goods emanate from a single source. See In re Albert
`
`Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
`
`Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
`
`In addition, the examining attorney submitted printouts
`
`from the websites of five pharmaceutical manufacturers (for
`
`example, Pfizer, Lilly) that offer (i) one or more of
`
`5
`
`
`
`
`Serial No. 77939659
`
`applicant's and registrant's goods, and (ii) one or more of
`
`registrant's goods and research services. The probative
`
`value of the examining attorney's Internet evidence is
`
`reduced, however, because the common marks for the goods,
`
`and the goods and research services, are house marks. See
`
`In re HerbalScience Group LLC, 96 USPQ2d 1321, 1324 n.3
`
`(TTAB 2010).
`
`It has not escaped our attention that applicant has
`
`not contested the examining attorney's assertion that the
`
`International Class 5 goods of the application are related
`
`to the goods of the cited registration, and in fact did not
`
`even address the issue of the similarity of the goods in
`
`its main brief.
`
`In its reply, applicant stated, "[t]o be
`
`clear, Applicant does not assert that confusion is unlikely
`
`due to the marks being directed to different goods or
`
`consumers, but rather, because the overall connotations and
`
`commercial impression of the applied-for mark and the [mark
`
`in the] cited registration are truly distinct." Reply at
`
`7. With regard to the similarity of registrant's goods and
`
`applicant's services, applicant has not discussed the issue
`
`in its briefs, effectively conceding the issue.
`
`Thus, based on the record before us, and applicant's
`
`concession of the issue, we conclude that applicant's goods
`
`and services are closely related in a commercial sense to
`
`6
`
`
`
`
`Serial No. 77939659
`
`the cited registrant's goods. We therefore find the
`
`du Pont factor regarding the similarity of the goods, and
`
`the goods and services, to weigh in favor of a finding of
`
`likelihood of confusion.
`
`Next, we consider the trade channels and classes of
`
`consumers, and begin with those trade channels and classes
`
`of consumers for applicant's and registrant's respective
`
`goods. Because the goods are in part identical, and
`
`because the identifications of goods lack any restrictions
`
`as to channels of trade and classes of consumers, we must
`
`presume that the channels of trade and classes of
`
`purchasers for the goods overlap with one another. Hewlett
`
`Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62
`
`USPQ2d 1001, 1005 (Fed. eire 2002) ("[A]bsent restrictions
`
`in the application and registration, goods and services are
`
`presumed to travel in the same channels of trade to the
`
`same class of purchasersH)i In re Smith and Mehaffey, 31
`
`USPQ2d 1531, 1532 (TTAB 1994)
`
`("Because the goods are
`
`legally identical, they must be presumed to travel in the
`
`same channels of trade, and be sold to the same class of
`
`purchasers. H) .
`
`There is no information in the record regarding the
`
`trade channels and classes of purchasers for registrant's
`
`goods and applicant's services. The du Pont factor
`
`7
`
`
`
`
`Serial No. 77939659
`
`regarding trade channels and classes of purchasers for
`
`registrant's goods and applicant's services is therefore
`
`neutral.
`
`We now turn to the du Pont factor regarding the
`
`similarity or dissimilarity of the marks in their
`
`entireties as to appearance, sound, connotation and
`
`commercial impression. See Palm Bay Imports, Inc. v. Veuve
`
`Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
`
`USPQ2d 1689 (Fed. Cir. 2005), quoting du Pont, 177 USPQ at
`
`567).
`
`In a particular case, anyone of these means of
`
`comparison may be critical in finding the marks to be
`
`similar.
`
`In re White Swan Ltd., 9 USPQ2d 1534 (TTAB 1988);
`
`In re Lamson oil Co., 6 USPQ2d 1041 (TTAB 1988).
`
`In
`
`addition, 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 impression so that
`
`confusion as to the source of the goods offered under the
`
`respective marks is likely to result. San Fernando
`
`Electric Mfg. CO. V. JFD Electronics Components Corp., 565
`
`F.2d 683, 196 USPQ 1
`
`(CCPA 1977); Spoons Restaurants Inc.
`
`V. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff'd
`
`unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
`
`Further, because the goods are in part identical, the
`
`8
`
`
`
`
`serial No. 77939659
`
`degree of similarity necessary to find a likelihood of
`
`confusion for the goods need not be as great as where there
`
`is a recognizable disparity between the goods. Century 21
`
`Real Estate Corp. v. Century Life of America, 970 F.2d 874,
`
`23 USPQ2d 1698 (Fed. Cir. 1992); In re SL&E Training Stable
`
`Inc., 88 USPQ2d 1216 (TTAB 2008).
`
`Applicant states that "the question on appeal is not
`
`merely how the marks appear, but how they will be perceived
`
`and recalled in the mind of the average consumer; namely,
`
`one as [a] letter, and the other as a shape." Brief at 3
`
`(emphasis in original). According to applicant, consumers
`
`will perceive its mark as the letter "A" because of "the
`
`gap in its right side, [and] the thickening and thinning of
`
`the line which evokes the stroke of a writing implement .'1
`
`Brief at 4-5. Registrant's mark, however I "[q]ue to its
`
`closed circumference, inclined orientation, three
`
`dimensional shading, and multiple colors ... will
`
`overwhelmingly be perceived as a design rather than a
`
`letter." Brief at 5.
`
`Applicant's mark is so highly stylized that it cannot
`
`be presumed that it would be perceived as a letter "Alii it
`
`would take some study to discern a lower-case letter \\A" in
`
`applicant's mark. At best, applicant's mark is in the grey
`
`area between a pure design mark which cannot be vocalized
`
`9
`
`
`
`Serial No. 77939659
`
`and a mark which would readily be identified as a letter.
`
`Cf., Georgia-Pacific Corp. v. Great Plains Bag Co., 614
`
`F.2d 757, 204 USPQ 697, 699
`
`(CCPA 1980) ("It must be
`
`remembered that [the] trademark consists of highly stylized
`
`letters and is therefore in the gray region between pure
`
`design marks which cannot be vocalized and word marks which
`
`are clearly intended to be."). Because applicant has not
`
`introduced any evidence at all into the record, we do not
`
`have the benefit of any information that would bear on how
`
`applicant promotes recognition of its mark or on consumer
`
`perceptions of the mark, and applicant's contention that
`
`its mark would be perceived as a lower case "A" is mere
`
`argument. Hence, as was the case in In re Burndy Corp.,
`
`300 F.2d 938, 133 USPQ 196, 197 (CCPA 1962), we must decide
`
`this case based on the visual similarity of the marks.
`
`Id.
`
`("In our view, this case must be decided primarily on the
`
`basis of visual similarity of the marks. The marks are not
`
`word marks and are not capable of being spoken. They are
`
`design marks
`
`although each is based on a capital letter
`
`'B' .... "). We consider applicant's mark as a pure design
`
`mark rather than simply a stylized display of a letter
`
`mark.
`
`When we visually compare the marks, there are, of
`
`course, certain specific differences between applicant'S
`
`10
`
`
`
`
`Serial No. 77939659
`
`and registrant's marks which are clearly discernible upon a
`
`side-by-side comparison of the marks. However, purchasers
`
`do not always have the opportunity to compare marks on a
`
`side-by-side basis, and thus the test which we must apply
`
`in determining likelihood of confusion is not whether the
`
`marks are distinguishable when compared side-by-side, but
`
`rather whether they so resemble one another as to be likely
`
`to cause confusion. On balance, we find the marks to be
`
`more similar than dissimilar. This, of course is a
`
`subjective determination, and hence we need not comment on
`
`the specific similarities and differences between the marks
`
`asserted in the briefs. See id. at 197 ("Since this is, of
`
`necessity, a subjective opinion, no amount of discussion of
`
`the matter can add to the statement of our conclusion which
`
`is predicated on the apparent visual differences in the
`
`marks.H). See also, The American Sunbathing Ass'n, Inc. v.
`
`American Health Alliance, 157 USPQ 586, 589 (TTAB 1968)
`
`("Each of the parties has made a side-by-side analysis of
`
`the marks in question listing, in support of its position,
`
`features of similarity or features of dissimilarity. This
`
`method of analysis or dissection of marks is improper in
`
`trademark proceedings because the commercial impression of
`
`a mark is generally created or engendered by the mark as a
`
`whole .... "). We therefore resolve the du Pan t factor
`
`11
`
`
`
`Serial No. 779)9659
`
`regarding the similarity of the marks against applicant, in
`
`the context of the goods, and the goods and services.
`
`We have found applicant's and registrant's goods,
`
`trade channels and classes of purchasers to be in part
`
`identical, and applicant's services and registrant's goods
`
`to be related.
`
`In addition, we have found the marks to be
`
`similar. There is no evidence of any uses of marks similar
`
`to registrant's mark, thus we consider registrant's mark to
`
`be a strong design mark. We therefore find that
`
`applicant's mark for the goods and services recited in its
`
`application is likely to cause confusion with registrant's
`
`mark-for the goods recited in its registration. Our
`
`conclusion is consistent with prior decisions which state
`
`that, where the marks are used on pharmaceuticals and
`
`confusion as to source can lead to serious consequences, it
`
`is extremely important to avoid that which will cause
`
`confusion. See Alfacell Corp. v. Anticancer Inc., 71
`
`USPQ2d 1301 (TTAB 2004), citing Glenwood Laboratories, Inc.
`
`v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19
`
`(CCPA 1972); Blansett Pharmacal Co. Inc. v. Carmrick
`
`Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992); Schering
`
`Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980); and American
`
`Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ
`
`357 (TTAB 1976).
`
`12
`
`
`
`Serial No. 77939659
`
`DECISION: The refusal to register under Section 2(d)
`
`of the Trademark Act both the International Class 5 goods
`
`and the International Class 42 services is affirmed.
`
`13
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