Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA406302
`ESTTA Tracking number:
`04/29/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77939659
`Alvogen IP Co S.a.r.l.
`A
`GREGG A. PARADISE
`LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK
`600 SOUTH AVE W
`WESTFIELD, NJ 07090-1497
`UNITED STATES
`trademarkadmin@ldlkm.com
`Appeal Brief
`1395802_1.pdf ( 15 pages )(110362 bytes )
`ROBERT B. HANDER
`trademarkadmin@ldlkm.com
`/ROBERT B. HANDER/
`04/29/2011
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`ALVOGE 10.0-006
`ALVOGE-67
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`Law Office: 115
`
`Examining Attorney:
` April K. Roach
`
` :
` :
` :
` :
` :
` :
` :
`X
`
`In re Alvogen IP Co S.a.r.l.
`
`Serial No. 77/939,659
`
`Filed: February 19, 2010
`
`Mark: A Logo
`
`
`
`Trademark Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`APPLICANT'S APPEAL BRIEF
`
`1395802_1.doc
`
`

`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES .......................................................................................................... ii
`
`I.
`
`II.
`
`III.
`
`IV.
`
`DESCRIPTION OF THE RECORD AND RECITATION OF THE
`FACTS .................................................................................................................................1
`
`STATEMENT OF THE ISSUES.........................................................................................1
`
`INTRODUCTION ...............................................................................................................2
`
`ARGUMENT.......................................................................................................................3
`
`A.
`
`There Is No Likelihood Of Confusion: Applicant's Mark
`And The Cited Registration Are Materially Different In
`Appearance, Connotation, And Commercial Impression ........................................3
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Applicant's Mark Is A Letter; The Cited
`Registration Is A Geometric Shape..............................................................3
`
`Applicant's Mark Is Two-Dimensional; The Cited
`Registration Is Three-Dimensional ..............................................................5
`
`Applicant's Mark Has Varying Line Widths; The
`Cited Registration Has Uniform Line Widths .............................................7
`
`Applicant's Mark Has A Gap; The Cited
`Registration Is Fully Enclosed.....................................................................8
`
`The Heightened Standard For Pharmaceutical
`Products Is Applied Only To Drug Names, Not
`Logos............................................................................................................9
`
`V.
`
`SUMMARY.......................................................................................................................10
`
`
`
`1395802_1.doc
`
`i
`
`

`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`
`Alfacell Corp. v. Anticancer Inc.,
`71 U.S.P.Q.2d 1301 (T.T.A.B. 2004) ..........................................................................10
`
`Blansett Pharmacal Co. v. Camrick Labs., Inc.,
`25 U.S.P.Q.2d 1473 (T.T.A.B. 1992) ..........................................................................10
`
`Chemetron Corp. v. Morris Coupling & Clamp Co.,
`203 U.S.P.Q. 537 (T.T.A.B. 1979) ................................................................................5
`
`Alberto-Culver Co. v. F.D.C. Wholesale Corp.,
`16 U.S.P.Q.2d 1597 (T.T.A.B. 1990), overruled in part by Eurostar v.
`"Euro-Star" Reitmoden GmbH & Co. KG, 34 U.S.P.Q.2d 1266 (T.T.A.B.
`1994) ..............................................................................................................................4
`
`In re E.I. Du Pont de Nemours & Co.,
`476 F.2d 1357 (C.C.P.A. 1973) .....................................................................................3
`
`Eurostar v. "Euro-Star" Reitmoden GmbH & Co. KG,
`34 U.S.P.Q.2d 1266 (T.T.A.B. 1994) ............................................................................4
`
`Glenwood Labs., Inc. v. Am. Home Prods. Corp.,
`455 F.2d 1384 (C.C.P.A. 1972) ...................................................................................10
`
`One Indus., LLC v. Jim O'Neal Distrib., Inc.,
`578 F.3d 1154 (9th Cir. 2009) .......................................................................................9
`
`In re Warner Commc'ns Inc.,
`189 U.S.P.Q. 157 (T.T.A.B. 1975) ................................................................................4
`
`
`Statutes, Rules & Other Authorities
`
`
`37 C.F.R. § 2.142(b)(1)........................................................................................................1
`
`
`
`
`1395802_1.doc
`
`ii
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`

`
`I.
`
`DESCRIPTION OF THE RECORD AND RECITATION OF THE FACTS
`
`Applicant Alvogen IP Co S.a.r.l seeks registration on the Principal Register of its stylized
`
`"A" mark, for pharmaceutical research services; 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. The
`
`subject application was filed on February 19, 2010, and received U.S. Trademark Application
`
`Serial No. 77/939,659.
`
`The Examining Attorney initially refused registration of Applicant's mark under Lanham
`
`Act § 2(d), 15 U.S.C. § 1052(d) in a Non-final Office Action dated March 2, 2010, contending
`
`that there was a likelihood of confusion between Applicant's mark and U.S. Registration
`
`No. 3,127,143. Applicant responded on August 10, 2010, and identified key differences between
`
`the appearance, connotation, and commercial impression of its stylized "A" logo and the cited
`
`mark for a multi-colored, shaded "mobius triangle shape."
`
`The Examining Attorney issued a Final Office Action on August 31, 2010, again refusing
`
`to register the mark based on a likelihood of confusion with U.S. Registration No. 3,127,143. In
`
`response to the Final Action, on February 28, 2011, Applicant filed a Notice of Appeal. Thus,
`
`Applicant hereby submits its Appeal Brief pursuant to 37 C.F.R. § 2.142(b)(1).
`
`II.
`
`STATEMENT OF THE ISSUES
`
`The issue on appeal is whether there would be a likelihood of confusion between
`
`Applicant's stylized "A" mark and the cited multi-colored, shaded "mobius triangle shape" mark,
`
`U.S. Registration No. 3,127,143.
`
`1395802_1.doc
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`

`
`III.
`
`INTRODUCTION
`
`There are numerous key differences between the Applicant's mark and the cited
`
`registration. And while Applicant respectfully asserts that the number and significance of those
`
`differences should be enough to obviate any refusal for likelihood of confusion, this is truly a
`
`case where the whole is greater than the sum of its parts. Indeed, while the Applicant's mark is
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`an open, two-dimensional, color-neutral, script letter "A," and the cited registration is a fully
`
`enclosed, three-dimensional, multi-colored and shaded Möbius triangle shape, the devil is not in
`
`those details alone, but in the net effect that those distinguishing features will have on the way
`
`both marks will be perceived in the mind of the consumer. In short, all of those individual
`
`distinctions add up to one overwhelming difference: while the cited registration is merely a
`
`shape, the Applicant's mark will be perceived and recalled as a letter "A." Applicant thus
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`respectfully asserts that there will be no likelihood of confusion between its mark and the cited
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`registration.
`
`1395802_1.doc
`
`2
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`

`
`IV. ARGUMENT
`
`It is well settled that a likelihood of confusion analysis requires consideration of the
`
`marks in their entireties as to appearance, sound, connotation, and commercial impression.
`
`In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). For the reasons
`
`that follow, Applicant submits that the applied-for-mark and the cited registration are materially
`
`different in appearance, connotation, and commercial impression. Therefore, Applicant
`
`respectfully requests that the decision of the Examining Attorney be reversed.
`
`A.
`
`There Is No Likelihood Of Confusion: Applicant's Mark
`And The Cited Registration Are Materially Different In
`Appearance, Connotation, And Commercial Impression
`
`1.
`
`Applicant's Mark Is A Letter;
`The Cited Registration Is A Geometric Shape
`
`The Examining Attorney correctly notes that "the test of likelihood of confusion is not
`
`whether the marks can be distinguished when subjected to a side-by-side comparison," but rather
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`"whether the marks create the same overall impression." (Office Action 2, Aug. 31, 2010
`
`(citations omitted; emphasis added).) Thus, 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 letter, and the other as a shape.
`
`While it goes without saying that letters can resemble shapes, and vice versa, it is
`
`likewise beyond dispute that letters and shapes are nevertheless perceived entirely differently,
`
`and thus make widely divergent overall impressions. Indeed, though differences between letters
`
`and shapes may be subtle or "minor" to the eye (as the Examining Attorney asserts), those same
`
`differences will literally dictate how the mind both perceives and recalls a given symbol. Thus,
`
`for the very same reason that a side-by-side comparison of two arbitrary arrangements of letters
`
`(e.g., FDC and FDS) may unjustifiably emphasize differences, which nevertheless are unlikely to
`
`make a lasting impression on an average consumer, a side-by-side comparison of a letter and a
`
`1395802_1.doc
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`3
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`

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`similar shape may just as unfairly emphasize similarities between two marks, which nevertheless
`
`are likely to be perceived and recalled entirely differently. Compare Alberto-Culver Co. v.
`
`F.D.C. Wholesale Corp., 16 U.S.P.Q.2d 1597, 1602 (T.T.A.B. 1990), overruled in part by
`
`Eurostar v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 U.S.P.Q.2d 1266 (T.T.A.B. 1994)
`
`(holding that confusion was likely between "FDC" and "FDS" despite differing third letter
`
`because, inter alia, being "unpronounceable letter combinations . . . they may be inherently
`
`difficult to remember and thus more susceptible of confusion or mistake than are word marks,
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`particularly where, as here, the marks consist of three letters and only the last letters are
`
`different"); In re Warner Commc'ns Inc., 189 U.S.P.Q. 157, 158 (T.T.A.B. 1975) (holding that
`
`confusion was not likely between cited bulls-eye design and Applicant's stylized "Q" mark which
`
`incorporated three concentric rings because the marks "create[d] individual and separate and
`
`distinct impressions").
`
`Notably, the Examining Attorney appears to have largely ignored Applicant's extensive
`
`prior remarks regarding the reasons why its mark will be perceived as a letter "A," and instead,
`
`based her final rejection solely on "visual" similarities divorced from overall connotation and
`
`commercial impression. (Office Action 2.) As explained, that approach unfairly emphasizes
`
`similarities that are unlikely to confuse the average consumer, and Applicant respectfully
`
`submits that the Examining Attorney should have taken into account the pervading perceptual
`
`differences that exist between the Applicant's mark and the cited registration.
`
`Approached from the proper perspective, it is highly unlikely that consumers would fail
`
`to appreciate the differences between the Applicant's letter mark and the cited design registration.
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`Applicant's mark is a stylized script letter "A" (for "Alvogen"), and will be perceived as such for
`
`several reasons (to be discussed further below), including the gap in its right side, and the
`
`1395802_1.doc
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`4
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`

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`thickening and thinning of the line which evokes the stroke of a writing implement. The cited
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`mark, on the other hand, is described as a multi-colored, shaded "mobius triangle shape." Due to
`
`its closed circumference, inclined orientation, three-dimensional shading, and multiple colors,
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`the cited mark will overwhelmingly be perceived as a design rather than a letter. In the mind of
`
`the average purchaser, who normally retains a general rather than specific impression of
`
`trademarks, the significant conceptual difference between Applicant's letter and the cited shape
`
`will dominate over any visual similarities that might otherwise exist. See, e.g., Chemetron
`
`Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537, 540-41 (T.T.A.B. 1979) (holding that
`
`despite differences between a "tt" and "TT" logo, "it is the letters 'TT' which form the salient
`
`feature of the mark, and it is this feature which creates the commercial impression of the mark
`
`which the ordinary purchaser is likely to remember and rely upon as an indication of origin"
`
`(emphasis added)). Thus, given the markedly different overall impressions created by the
`
`Applicant's mark and the cited registration, it is highly unlikely that consumers will be confused
`
`into believing that they identify a common source.
`
`2.
`
`Applicant's Mark Is Two-Dimensional;
`The Cited Registration Is Three-Dimensional
`
`Just as the mind places significance on the differences that distinguish letters from mere
`
`shapes, it also seizes on cues that indicate dimensionality. While the Applicant's mark is
`
`rendered in two dimensions, the cited registration clearly depicts a three-dimensional shape.
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`This dimensional difference between the cited registration and the Applicant's mark dramatically
`
`changes the way both will be perceived, and will cause the marks to have very different
`
`connotations and commercial impressions in the mind of the average consumer. Again, though
`
`the Applicant specifically discussed these substantial perceptual differences in its original
`
`1395802_1.doc
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`5
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`

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`remarks, the Examining Attorney did not address dimensionality at all in her final rejection,
`
`instead resting solely on what she asserts is a "general" overall similarity between the marks.
`
`The cited registration is for a Möbius triangle shape (Fig. 1A), and is depicted below next
`
`to a similar Möbius triangle sculpture by the Swiss artist Max Bill (Fig. 1B) (albeit turned upside
`
`down relative to the cited mark). As can readily be appreciated, the cited mark's claimed use of
`
`shading and color is essential to convey the three-dimensional nature of the object it is depicting.
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`When the eye traces the cited mark or the sculpture, the curious properties of the Möbius strip
`
`become apparent: were an ant to walk the cited mark counterclockwise from the bottom point, it
`
`would cross over (out of sight) to the back surface of the shape at the first turn; only upon
`
`reaching the bottom point again and starting a second lap would the ant come back into sight as it
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`traversed the top right corner and proceeded along the yellow surface of the mark. Thus, as with
`
`any Möbius strip, three-dimensionality is a defining characteristic of the mark.1
`
`
`
`
`Fig. 1A: Cited Registration
`
`
`
`Fig. 1B: Sculpture by Max Bill
`
`
`
`
`1 Though the uninitiated may not be familiar with a Möbius triangle, and may thus mistake the
`cited mark for a stylized shield, something akin to the St. Louis arch, or even an uppercase block
`letter "D" (tipped skyward), Applicant respectfully asserts that, due to its shading and
`orientation, the one symbol the cited mark will not evoke is that of a letter "A."
`
`1395802_1.doc
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`6
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`

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`In stark contrast to the cited registration, the Applicant's mark is a two-dimensional logo,
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`and is dependent neither upon color nor shading to convey its message. Applicant's mark simply
`
`depicts a two-dimensional stroke across a page, and in so doing, conveys a script letter "A." This
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`is a substantial and significant difference, in that the Applicant's mark is thus capable of
`
`conveying its meaning in any color. The cited registration, on the other hand, must be rendered
`
`in specific colors with careful attention to shading, and therefore creates a very distinct
`
`impression that will cause consumers to readily differentiate it from the Applicant's mark.
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`3.
`
`Applicant's Mark Has Varying Line Widths;
`The Cited Registration Has Uniform Line Widths
`
`A further critical distinction between the Applicant's logo and the cited mark is their
`
`respective uses of line width. The cited mark relies on substantially uniform line width to
`
`convey the constant thickness and twisting nature of the Möbius shape. In contrast, the
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`Applicant's mark relies upon dramatic variations in its line width to convey the swooping nature
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`of a handwritten, script letter "A." Notably, the Examining Attorney casually dismissed these
`
`substantial differences, and asserted that "[t]he marks are visually similar . . . with a thicker line
`
`on the left bottom side" and "a thinner left top line." (Office Action 2.) But the Examining
`
`Attorneys' position is clearly contradicted by the pictures themselves: in fact, none of the
`
`transitions in line thickness match up between the two marks, with the cited registration's
`
`thickest point being the left-most corner and the applied-for-mark's thickest point being the
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`right-most "tail" of the script letter "A."
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`More specifically, as can be seen below (Fig. 2), the Applicant's mark depicts a fat
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`upstroke, which quickly diminishes to a thin and slanting downstroke, which then transitions
`
`back into a thick and substantially horizontal finishing stroke. By varying the line widths in this
`
`manner, the mark gives the impression of a handwritten script letter "A": (1) the fat beginning to
`
`1395802_1.doc
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`7
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`

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`the upstroke conveys the welling of ink as the writing implement first touches the paper and
`
`begins moving; (2) the thin downstroke conveys the fastest movement of the implement; and
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`(3) the fat finishing stroke again conveys the deceleration and pressure applied in finishing the
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`letter. While the Examining Attorney characterized such differences as "minor," Applicant again
`
`respectfully submits that in discerning between writing and mere shapes or designs, these
`
`differences carry heavy weight in the mind of the viewer. (Id.) For example, consider how
`
`simple variations in line thickness change the shape of the negative space and allow an observer
`
`to easily differentiate between the letter "O" and a normal circle (Fig. 3).
`
` O »"
`
`Fig. 3: Letter "O" vs. Circle
`
`
`
`
`Fig. 2: Applicant's Mark
`
`4.
`
`Applicant's Mark Has A Gap; The
`Cited Registration Is Fully Enclosed
`
`As can be seen from the above (Fig. 2), the Applicant's mark also has a gap in its
`
`circumference which is missing from the cited registration. Though perhaps "small" (as the
`
`Examining Attorney asserted), this gap makes a monumental difference in how the Applicant's
`
`mark is perceived. (Id.) Upon viewing the Applicant's mark, the eye immediately registers the
`
`broken circumference as a signal to recognize a line rather than a shape. Moreover, by virtue of
`
`the gap being small rather than large, the Applicant's mark registers in the mind as an "A" rather
`
`than a "C." In stark contrast, by virtue of its closed circumference and inclined orientation, the
`
`cited mark will instead register simply as a shape of some kind.
`
`1395802_1.doc
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`8
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`

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`These circumferential differences likewise create very different negative spaces. While
`
`the cited mark has an obvious dome-shaped interior space, the gap in the Applicant's mark
`
`creates a distinctive leaf-like or "p"-shaped negative space, which helps cue the mind to
`
`recognize the mark as script letter "A" rather than a shape. The Ninth Circuit has recently
`
`credited the significance of differing negative spaces in finding no likelihood of confusion
`
`between two marks. See One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154, 1163 (9th
`
`Cir. 2009) ("The One Icon consists of 'two angular symbols . . . placed in such a way that a
`
`'Z'-shaped space appears between the two,' while the 'Rounded O is clearly a letter 'O' with a
`
`prominent apostrophe and is slightly angled.'"). Notably, while the Ninth Circuit was
`
`considering two marks that were intended to convey the same letter "O" (see below Figs. 4A,
`
`4B), in the present case, the differing negative spaces are even more significant in that they
`
`signify differences between both the appearance of the marks and what each is intended to
`
`convey.
`
`
`
`
`
`Fig. 4A
`
`
`
`Fig. 4B
`
`
`
`5.
`
`The Heightened Standard For Pharmaceutical
`Products Is Applied Only To Drug Names, Not Logos
`
`Finally, though the Examining Attorney notes that many courts have applied a higher
`
`standard in likelihood of confusion cases involving medicinal and pharmaceutical products,
`
`Applicant respectfully submits that the reasons supporting the cited decisions do not justify a
`
`similarly heightened standard in the present case. (Office Action 3.)
`
`All of the decisions cited by the Examining Attorney considered confusingly similar
`
`individual drug names, which unquestionably do warrant careful attention as any mistake could
`
`1395802_1.doc
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`9
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`

`
`result in the wrong drug being dispensed and consumed. See Glenwood Labs., Inc. v. Am. Home
`
`Prods. Corp., 455 F.2d 1384 (C.C.P.A. 1972) (comparing MYOCHOLINE with MYSOLINE);
`
`Alfacell Corp. v. Anticancer Inc., 71 U.S.P.Q.2d 1301 (T.T.A.B. 2004) (comparing ONCASE
`
`with ONCONASE); Blansett Pharmacal Co. v. Camrick Labs., Inc., 25 U.S.P.Q.2d 1473
`
`(T.T.A.B. 1992) (comparing NOLEX and NALEX). In stark contrast, the Applicant's mark and
`
`the cited mark are merely logos, and will thus never be used by themselves to identify a
`
`particular drug, dosage form, or any other critically important detail.2 Accordingly, no physician
`
`or pharmacist will ever write or fill prescriptions based on the Applicant's mark or the cited
`
`registration, and no average consumer will ever select products based solely on the marks in
`
`question. Thus, as the Applicant's mark and the cited registration carry with them no special
`
`dangers warranting a heightened standard, Applicant respectfully submits that the Board weigh
`
`the present appeal under the normal standard for likelihood of confusion.
`
`V.
`
`SUMMARY
`
`In sum, this appeal brings to light an obvious truism: three-sided marks will all bear at
`
`least some resemblance. However, trademark law, and the likelihood of confusion analysis in
`
`particular, is not so formalistic as to grant a virtual monopoly to the first user of any generic
`
`shape. Indeed, the very law cited by the Examining Attorney confirms that the proper test for
`
`considering whether a likelihood of confusion exists takes into account not only appearance, but
`
`also connotation and commercial impression. And further reasoned opinions of this Board
`
`confirm that the true focus of the likelihood of confusion inquiry is whether the average
`
`
`2 This fact is further evident from the broad and varied scopes of use claimed for both marks.
`For example, the cited registration applies to a number of classes of pharmaceutical preparations,
`as well as dietetic foods, nutritionally fortified beverages, and various medicinal and herbal
`infusions. The Applicant's mark also applies to a number of classes of pharmaceuticals, as well
`as nondrug items such as pharmaceutical research services and even contraceptive sponges.
`
`1395802_1.doc
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`10
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`

`
`consumer will perceive and recall the differences between two marks. Approached from that
`
`perspective, a likelihood of confusion cannot exist between the Applicant's mark and the cited
`
`registration. The visual differences between the Applicant's mark and the cited registration are
`
`many: (a) the cited registration is three-dimensional, whereas the Applicant's mark is only
`
`two-dimensional; (b) the cited registration both claims and necessarily relies on color and
`
`shading to convey its meaning, whereas the Applicant's mark is color-neutral; (c) the cited
`
`registration is nearly uniform in thickness, whereas the Applicant's mark both employs and relies
`
`upon dramatic variations in line thickness to convey its meaning; and (d) the cited registration is
`
`a fully enclosed triangle, whereas the Applicant's mark is simply a line evocative of handwriting.
`
`But most importantly, these are not merely differences of form, but differences of substance.
`
`The Applicant's mark ____ a letter "A" ____ and the cited registration ____ a pictorial, triangular
`
`design ____ are truly different in connotation and commercial impression, and that dominant
`
`conceptual difference ensures that the perception and lasting impression of both marks in the
`
`average consumer's mind will be unquestionably distinct.
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`1395802_1.doc
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`11
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`

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`Thus, in light of all of the foregoing, Applicant respectfully requests that the decision of
`
`the Examining Attorney regarding her position with respect to the pending application be
`
`reversed, and that the application be allowed.
`
`Respectfully submitted,
`
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
`600 South Avenue West
`Westfield, NJ, 07090-1497
`Telephone:
`908.654.5000
`Facsimile:
`908.654.7866
`Attorneys for Applicant
` Alvogen IP Co S.a.r.l.
`By: s/ Robert B. Hander
`Robert B. Hander
`
`
`
`
`
`
`
`
`Dated:
`
`April 29, 2011
`
`
`
`
`
`1395802_1.doc
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`12