From: Lam, Hai-Ly
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`Sent: 9/15/2011 12:13:05 PM
`
`To: TTAB EFiling
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`CC:
`
`Subject: U.S. TRADEMARK APPLICATION NO. 79076253 - EVER NEURO
`PHARMA - NY2T10625098 - EXAMINER BRIEF
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`
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 79076253.doc
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`
` APPLICATION SERIAL NO.
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`79076253
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`
`
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`*79076253*
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`
`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
`
`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
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`
`
`
`
` MARK: EVER NEURO PHARMA
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`
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` EVER Neuro Pharma GmbH
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`
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` CORRESPONDENT ADDRESS:
` BHARATI BAKSHANI
` LADAS & PARRY LLP
` 1040 AVENUE OF THE AMERICAS
` NEW YORK, NY 10018-3738
`
`
`
` APPLICANT:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
` NY2T10625098
` CORRESPONDENT E-MAIL ADDRESS:
` NYUSTMP@ladas.com
`
`
`
`EXAMINING ATTORNEY'S APPEAL BRIEF
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`INTERNATIONAL REGISTRATION NO. 1021882
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`INTRODUCTION
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`The limited liability company, EVER Neuro Pharma GmbH (Applicant) has
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`appealed the trademark examining attorney’s final refusal to register the mark EVER
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`NEURO PHARMA for (as amended) “Pharmaceutical preparations used for the
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`treatment of central nervous system diseases and neurodegenerative diseases; Nutritional
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`additives for medical purposes for use in foods and dietary supplements for human
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`consumption” in International Class 005.
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`Registration was refused because the mark when used in connection with the
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`aforementioned goods, is likely to cause confusion as to the source of the goods in U.S.
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`Registration No. 3,329,636, NEUROPHARMA for use in association with
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`“Pharmaceutical and veterinary preparations, in particular preparations for combating
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`neuron diseases; natural and synthetic bioactive preparations for application in the fields
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`

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`of human or animal medicine, namely, pharmaceutical and veterinary preparations acting
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`on the central nervous system; intermediate pharmaceutical and veterinary preparations,
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`namely, anaesthetic and analgesic ingredients sold as components of pharmaceutical and
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`veterinary preparations acting on the central nervous system and for combating neuron
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`diseases” in International Class 005 under Trademark Act Section 2(d), 15 U.S.C. Section
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`1052(d).
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`Registration was also refused on the Principal Register pursuant to the Trademark
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`Act, 15 U.S.C. §1056(a) for Applicant’s failure to provide the required disclaimer of
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`“NEURO PHARMA.”
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`It is respectfully requested that the refusals to register be affirmed for the reasons
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`set forth below.
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`STATEMENT OF THE FACTS
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`On October 22, 2009, Applicant applied for registration of the mark EVER
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`NEURO PHARMA on the Principal Register by requesting an Extension of Protection
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`from its International Registration for use with the goods (as amended) “Pharmaceutical
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`preparations used for the treatment of central nervous system diseases and
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`neurodegenerative diseases; Nutritional additives for medical purposes for use in foods
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`and dietary supplements for human consumption” in International Class 005.
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`In the Office action dated February 2, 2010, registration of the mark was refused
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`based on a likelihood of confusion with the mark in U.S. Registration No. 3,329,636
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`under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Applicant was also
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`required to clarify particular wording in the identification of goods and submit a
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`disclaimer of the wording “NEURO PHARMA.”
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`

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`Applicant responded on July 30, 2010, by presenting arguments in support of
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`registration, clarifying particular wording in the identification of goods and submitting a
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`disclaimer of “NEURO” and “PHARMA.” The trademark examining attorney found
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`Applicant’s arguments unpersuasive and continued and made final the refusal to register
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`due to the likelihood of confusion with the registered mark. The trademark examining
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`attorney determined that the amended identification of goods was acceptable. However,
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`the trademark examining attorney found that Applicant’s disclaimer of “NEURO” and
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`“PHARMA” was not acceptable and continued and made final the refusal to register due
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`to Applicant’s failure to submit the required disclaimer.
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`In the subsequent request for reconsideration dated February 28, 2011, Applicant
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`made additional arguments traversing the refusal. Furthermore, Applicant withdrew its
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`disclaimer. The trademark examining attorney denied Applicant’s request for
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`reconsideration, and maintained the refusal to register under Section 2(d) and for
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`Applicant’s failure to provide the required disclaimer of “NEURO PHARMA.”
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`Applicant filed a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB or
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`the Board) on February 28, 2011 and its appeal brief thereafter.
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`ISSUES ON APPEAL
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`There are two issues on appeal.
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`The first issue on appeal is whether Applicant’s mark EVER NEURO PHARMA
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`for use in association with “Pharmaceutical preparations used for the treatment of central
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`nervous system diseases and neurodegenerative diseases; Nutritional additives for
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`medical purposes for use in foods and dietary supplements for human consumption,” is
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`likely to cause confusion with the mark in U.S. TM Reg. No. 3,329,636 -
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`

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`NEUROPHARMA for use in association with “Pharmaceutical and veterinary
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`preparations, in particular preparations for combating neuron diseases; natural and
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`synthetic bioactive preparations for application in the fields of human or animal
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`medicine, namely, pharmaceutical and veterinary preparations acting on the central
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`nervous system; intermediate pharmaceutical and veterinary preparations, namely,
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`anaesthetic and analgesic ingredients sold as components of pharmaceutical and
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`veterinary preparations acting on the central nervous system and for combating neuron
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`diseases,” under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
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`The second issue on appeal is whether a disclaimer of the wording “NEURO
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`PHARMA” is required in the present application because the wording is descriptive of a
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`characteristic or feature of the goods.
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`
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`ARGUMENTS
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`I. THE MARKS ARE HIGHLY SIMILAR AND THE GOODS ARE IDENTICAL AND
`CLOSELY RELATED SUCH THAT THERE IS A LIKELIHOOD OF CONFUSION
`UNDER §2(D) OF THE TRADEMARK ACT, 15 U.S.C. §1052(D)
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`The Applicant seeks registration of the mark EVER NEURO PHARMA for goods
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`consisting of “Pharmaceutical preparations used for the treatment of central nervous
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`system diseases and neurodegenerative diseases; Nutritional additives for medical
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`purposes for use in foods and dietary supplements for human consumption.” Applicant’s
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`mark, when used in association with the identified goods, is likely to cause confusion as
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`to the source of the “Pharmaceutical and veterinary preparations, in particular
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`preparations for combating neuron diseases; natural and synthetic bioactive preparations
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`for application in the fields of human or animal medicine, namely, pharmaceutical and
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`veterinary preparations acting on the central nervous system; intermediate pharmaceutical
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`and veterinary preparations, namely, anaesthetic and analgesic ingredients sold as
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`components of pharmaceutical and veterinary preparations acting on the central nervous
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`system and for combating neuron diseases” identified in the NEUROPHARMA
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`registration.
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so
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`resembles a registered mark that it is likely that a potential consumer would be confused
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`or mistaken or deceived as to the source of the goods and/or services of the applicant and
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`registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co.,
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`476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be
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`considered when determining whether there is a likelihood of confusion under Section
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`2(d). See TMEP §1207.01. However, not all the factors are necessarily relevant or of
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`equal weight, and any one factor may be dominant in a given case, depending upon the
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`evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98
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`USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315,
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`65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62,
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`177 USPQ at 567. In this case, the following factors are the most relevant: similarity of
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`the marks, similarity of the goods, and similarity of trade channels of the goods. See In
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`re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
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`A. THE MARKS ARE CONFUSINGLY SIMILAR
`
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`In a likelihood of confusion determination, the marks are compared for
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`similarities in their appearance, sound, meaning or connotation, and commercial
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`impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,
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`567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements
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`may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8
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`USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d
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`1581, 1586 (TTAB 2007); TMEP §1207.01(b).
`
`The question is not whether people will confuse the marks, but whether the marks
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`will confuse people into believing that the goods and/or services they identify come from
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`the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558,
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`558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of likelihood of
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`confusion is not whether the marks can be distinguished when subjected to a side-by-side
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`comparison. The question is whether the marks create the same overall impression. See
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`Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir.
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`2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980).
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`Thus, the focus is on the recollection of the average purchaser who normally retains a
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`general rather than specific impression of trademarks. Chemetron Corp. v. Morris
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`Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott
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`Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
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`With the above in mind, Applicant seeks to register the mark EVER NEURO
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`PHARMA. The mark in the cited registration is NEUROPHARMA. The marks are
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`similar in that they share the identical terms, “NEURO” and “PHARMA” and the terms
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`appear in the same order. Marks may be confusingly similar in appearance where there
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`are similar terms or phrases or similar parts of terms or phrases appearing in both
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`applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of
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`Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of
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`Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
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`

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`1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228
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`USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass
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`Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re
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`Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF
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`CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558
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`(TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424
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`(TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
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`Applicant argues that the addition of the term EVER in Applicant’s mark renders
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`the marks to be dissimilar. This argument is unpersuasive because as noted above, the
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`test of likelihood of confusion is not whether the marks can be distinguished when
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`subjected to a side-by-side comparison. Rather, the question is whether the marks create
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`the same overall impression and whether the marks will confuse people into believing
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`that the goods and/or services they identify come from the same source. Furthermore,
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`the mere addition of a term to a registered mark generally does not obviate the similarity
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`between the marks nor does it overcome a likelihood of confusion under Trademark Act
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`Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
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`2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E.
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`Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and
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`BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ
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`406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91
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`USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN); In re El Torito Rests.,
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`Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning
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`Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re
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`U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST
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`CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and
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`RICHARD PETTY’S ACCU TUNE); TMEP §1207.01(b)(iii).
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`Moreover, when marks are otherwise virtually the same, the addition of a house
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`mark is more likely to add to the likelihood of confusion than to distinguish the marks; it
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`is likely that the two products sold under such marks would be attributed to the same
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`source. In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (holding GLUE
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`STIC for general purpose adhesive in stick form likely to be confused with UHU GLU
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`STIC for adhesives for paper and stationery); Key West Fragrance & Cosmetic Factory,
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`Inc. v. Mennen Co., 216 USPQ 168, 170 (TTAB 1982) (holding SKIN SAVERS for face
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`and throat lotion likely to be confused with MENNEN SKIN SAVER for hand and body
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`lotion); see Hammermill Paper Co. v. Gulf States Paper Corp., 337 F.2d 662, 663, 143
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`USPQ 237, 238 (C.C.P.A. 1964) (holding HAMMERMILL E-Z CARRY PAK and E-Z
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`PAPER PAK for carrying cases or boxes for typewriter or duplicator paper likely to be
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`confused with E-Z PAK and E-Z CARI for paper bags); TMEP §1207.01(b)(iii).
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`Applicant also argues that “Applicant’s mark represents NEURO PHARMA as
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`two separate words, with a visually perceptible gap in between” and “this feature is
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`absent in the cited mark where the two terms are displayed as a single word.” This
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`argument is not persuasive. As previously stated, the test of likelihood of confusion is
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`not whether the marks can be distinguished when subjected to a side-by-side comparison.
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`The question is whether the marks create the same overall impression. Moreover, this
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`slight difference does not change the sound or overall commercial impression of the
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`marks. Consumers would still pronounce the terms “NEURO PHARMA” and
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`“NEUROPHARMA” in the identical manner, i.e. as a single unit, regardless of the
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`absence or presence of a space between the terms.
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`Applicant argues that the applied-for mark is part of a family of marks and that its
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`existing registration for the mark EVER PHARMA, U.S. Registration No. 3,896,576,
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`obviates any likelihood of confusion. However, the Trademark Trial and Appeal Board
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`has found that a family-of-marks argument is “not available to an applicant seeking to
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`overcome a likelihood-of-confusion refusal.” In re Cynosure, Inc., 90 USPQ2d 1644,
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`1645-46 (TTAB 2009). Specifically, an applicant’s ownership of other similar marks has
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`little relevance in this context because the focus of a likelihood-of-confusion analysis in
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`an ex parte case is on the mark applicant seeks to register, rather than other marks
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`applicant has used or registered. In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald,
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`Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi). Even if the Board were
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`to consider Applicant’s argument, the mark EVER PHARMA is different from the marks
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`at hand and is thus, irrelevant in this proceeding. Specifically, EVER PHARMA was
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`approved for publication because it does not share the terms, “NEURO” and
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`“PHARMA” that are present in both the proposed mark and the cited registration.
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`Applicant then argues that “if the combined terms NEURO PHARMA are
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`required to be disclaimed as merely descriptive of the goods, then those same terms
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`should not serve as the basis for a likelihood of confusion refusal”. This argument is
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`unmeritorious. First, the marks must be considered in their entireties when determining
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`whether there is likelihood of confusion. A disclaimer does not remove the disclaimed
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`portion from the mark for the purposes of this analysis. In re Nat’l Data Corp., 753 F.2d
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`1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distribs.,
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`

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`Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984); In re Iolo Techs., LLC, 95 USPQ2d
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`1498, 1499 (TTAB 2010). Purchasers are not aware of disclaimers that reside only in the
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`records of the Office.
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`Second, the combined wording “NEURO PHARMA” is strong on the register.
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`The trademark examining attorney had attached a screen shot of the X-Search strategy
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`and the results for the search of the terms “NEURO” and “PHARMA.” The search
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`retrieved only three marks with the terms “NEURO” and “PHARMA,” one of which one
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`is the proposed mark, the second is Applicant’s other pending mark and the third is the
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`cited registration.
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`Third, the Court of Appeals for the Federal Circuit and the Trademark Trial and
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`Appeal Board have recognized that marks deemed “weak” or merely descriptive are still
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`entitled to protection against the registration by a subsequent user of a similar mark for
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`closely related goods and/or services. In re Colonial Stores, Inc., 216 USPQ 793, 795
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`(TTAB 1982); TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen,
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`Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974). This protection extends
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`to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re
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`Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978); In re Hunke &
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`Jochheim, 185 USPQ 188 (TTAB 1975).
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`Applicant also argues that the presence of other registrations containing either the
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`terms “NEURO” or “PHARMA” contradicts the trademark examining attorney’s position
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`that the cited registration for NEUROPHARMA is strong on the register. However, this
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`argument is unsound since none of these other registrations contain both the terms
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`“NEURO” and “PHARMA” and thus, they fail to show that the relevant composite
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`wording “NEUROPHARMA” is weak or diluted.
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`Moreover, even if the shared element is descriptive, there is only one single
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`registration that contains both the terms “NEURO” and “PHARMA” and fundamentally,
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`any doubt regarding a likelihood of confusion determination is resolved in favor of the
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`registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281
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`F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio),
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`Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
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`Ultimately, the marks share identical terms, the identical terms are present in only
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`one registered mark and the additional matter in Applicant’s mark is a house mark that
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`would only add to the likelihood of confusion. Due to these factors, purchasers are likely
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`to be confused as to the source of the goods by the contemporaneous use of the marks.
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`Thus, the marks are confusingly similar.
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`B. THE GOODS ARE IDENTICAL AND CLOSELY RELATED
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`In determining whether a likelihood of confusion exists, the goods and/or services
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`are compared to determine whether they are similar or commercially related or travel in
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`the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
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`1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver
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`Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01,
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`1207.01(a)(vi).
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`The trademark examining attorney notes that Applicant has not made any
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`arguments pertaining to the goods. Nonetheless, the trademark examining attorney
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`maintains that Applicant’s pharmaceutical preparations are identical to the registrant’s
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`pharmaceutical preparations. Both parties provide pharmaceutical preparations that are
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`used for treating diseases and conditions of the central nervous system and for treating
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`neurological diseases. As such, not only are the goods identical in nature but the purpose
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`and function of the goods are identical also.
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`Furthermore, Applicant’s remaining goods are closely related to the registrant’s
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`goods because there is evidence that third parties that provide nutritional additives and/or
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`dietary supplements also offer pharmaceuticals that are used for treating diseases and
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`conditions of the central nervous system and for treating neurological diseases. The
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`evidence attached to the previous Office actions, establishes that nutritional additives,
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`dietary supplements and neurological pharmaceuticals commonly emanate from a single
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`source. The first evidence used to establish such relationship included printouts from the
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`USPTO X-Search database, which show at least seventeen third-party registrations for
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`marks associated with nutritional additives, dietary supplements and neurological
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`pharmaceuticals.
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`A sampling of those third-party registrations includes the following:
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`• U.S. Reg. No. 3459028 - NEUROAID 10 for use in association with
`“Pharmaceutical preparations for the treatment of neurological disorders; dietetic
`substances adapted for medical use; pharmaceutical preparations for the treatment
`of neurological and cardiovascular diseases; dietetic substances for medicinal
`purposes, dietary supplements with herbal ingredients for persons with special
`dietary requirements;”
`
` •
`
`
`
` U.S. Reg. No. 3641598 – OMAX for use in association with “pharmaceutical
`preparations for the treatment of heart disease, central nervous system disease,
`inflammatory disease, and related cardiovascular diseases; dietary supplements
`containing Omega-3 fatty acids, Omega-6 fatty acids, or other fatty acids;”
`
`• U.S. Reg. No. 3568718 – Yellow Sun Design for use in association with
`“Pharmaceutical preparations for the treatment of diseases of the central nervous,
`cardiovascular, gastrointestinal and upper respiratory systems as well as allergies,
`kidney and gallstones, gout and metabolic disease; Topical preparations for the
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`

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`treatment of a variety of skin irritations and skin diseases; Antiseptic ointment and
`skin protectant; Anti-itch cream; Anti-inflammatory ointment; Dietary
`supplements; Nutritional supplements; Allergy medication; Multi-vitamin
`preparations; Vitamin and mineral supplements; Medicated diaper rash ointment;
`Anti-cavity dental coating preparations containing fluoride;”
`
`•
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` U.S. Reg. No. 3558746 – BIG DOUBLE for use in association with “dietary
`supplements; pharmaceutical stimulants for the central nervous system;”
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`• U.S. Reg. No. 3253325 – NEUROPREVIN for use in association with “Dietary
`supplement, nutritional supplement, and pharmaceutical preparation for the
`prevention and reduction of neurodegenerative disorders;”
`
`• U.S. Reg. No. 3789550 – S design for use in association with “Active
`pharmaceutical ingredients sold as an integral component of pharmaceutical
`preparations and medicines for use in humans both for the treatment of cancer,
`autoimmune diseases,
`infectious diseases,
`inflammatory diseases, genetic
`diseases, respiratory diseases, diseases of the circulatory system, metabolic
`diseases, eye diseases, digestive disease, nervous and mental diseases, blood and
`hemopoietic diseases, diseases of the urinary system, endocrine diseases, bone
`and muscle diseases; nutritional additives for medical purposes for use in foods
`and dietary supplements for human consumption;”
`
`• U.S. Reg. No. 3191128 – BUNAOGAO for use in association with “Botanical,
`dietary and nutraceutical supplements; pharmaceutical preparations for the
`treatment of neurological disorders, namely, head and spinal cord injuries, and
`neurodegenerative diseases; herbal supplements derived from plants and herbs or
`containing plant and herb extracts; dietetic substances adapted for medical uses,
`namely, tablets, capsules, powders, syrups and vitamin supplements; food for
`babies; pharmaceutical preparations in the nature of medical and herbal pills for
`the treatment of neurological disorders, namely, head and spinal cord injuries, and
`neurodegenerative diseases; dietary supplements in the nature of tablets, capsules,
`powders, syrups and vitamins for nutraceutical and pharmaceutical purposes;
`herbal preparations and substances, namely, herbal supplements for human use;
`nutritional supplements for medical and dietary use;”
`
`• U.S. Reg. No. 3175496 – OTCEUTICAL for use in association with “Vitamin
`and mineral supplements; Herbal, dietary and food supplements; Nutraceuticals
`for use as a dietary supplement and for use for the prevention and treatment of
`diseases and disorders of the audiovisual systems, cardiovascular systems, central
`nervous systems, digestive systems, endocrinologic systems, gastroenterologic
`systems, genito-urinary
`systems, hematology, mental and psychologic
`functioning, musculo-skeletal systems, nephrologic systems, ophthalmologic
`systems, respiratory system, sensory systems, and skin and body tissues, and for
`the treatment of pain and cancer; Pharmaceutical preparations for the prevention
`and treatment of diseases and disorders of the audiovisual systems, cardiovascular
`
`

`
`systems, central nervous systems, digestive systems, endocrinologic systems,
`gastroenterologic systems, genito-urinary systems, hematology, mental and
`psychologic
`functioning, musculo-skeletal systems, nephrologic systems,
`ophthalmologic systems, respiratory system, sensory systems, and skin and body
`tissues, and for the treatment of pain and cancer;”
`
`
`This evidence shows that the goods listed therein are of a kind that may emanate
`
`from a single source under a single mark. See In re Davey Prods. Pty Ltd., 92 USPQ2d
`
`1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
`
`(TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988);
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`TMEP §1207.01(d)(iii).
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`Further, the trademark examining attorney included excerpts from various
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`pharmaceutical companies’ websites offering nutritional additives and/or dietary
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`supplements along with pharmaceuticals for sale. Please see pages 36-46 from the
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`August 26, 2010 outgoing Office action. This evidence establishes that the same entity
`
`commonly provides the relevant goods and markets the goods under the same mark, the
`
`relevant goods are sold or provided through the same trade channels and used by the
`
`same classes of consumers in the same fields of use and the goods are similar or
`
`complementary in terms of purpose or function. Therefore, Applicant’s remaining goods
`
`and registrant’s goods are considered related for likelihood of confusion purposes. See,
`
`e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re
`
`Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
`
`If the goods and/or services of the respective parties are “similar in kind and/or
`
`closely related,” the degree of similarity between the marks required to support a finding
`
`of likelihood of confusion is not as great as would be required with diverse goods and/or
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`services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg.
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`

`
`Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004);
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`TMEP §1207.01(b).
`
`Finally, the Trademark Trial and Appeal Board and its appeals court have applied
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`a higher standard to likelihood of confusion cases involving medicinal and
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`pharmaceutical products. Although physicians and pharmacists are no doubt carefully
`
`trained to recognize differences in the characteristics of pharmaceutical products, they are
`
`not trained to recognize the difference between similar trademarks used on such products.
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`Any confusion involving such goods could give rise to serious and harmful consequences
`
`such as mistakenly choosing wrong medication. See Glenwood Labs., Inc. v. Am. Home
`
`Prods. Corp., 455 F.2d 1384, 1386, 173 USPQ 19, 21 (C.C.P.A. 1972); Alfacell Corp. v.
`
`Anticancer Inc., 71 USPQ2d 1301, 1305-06 (TTAB 2004); Blansett Pharmacal Co. v.
`
`Camrick Labs., Inc., 25 USPQ2d 1473, 1477 (TTAB 1992). Thus, a lower threshold of
`
`proof is applied in assessing confusing similarity with respect to drugs and medicinal
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`products.
`
`Therefore, because the marks are confusingly similar and the goods are virtually
`
`identical, there is a likelihood that potential consumers would be confused as to the origin
`
`of the Applicant’s and registrant’s respective goods.
`
`
`II. THE WORDING “NEURO PHARMA” IS DESCRIPTIVE IN THE CONTEXT OF
`APPLICANT’S GOODS, IS THUS UNREGISTRABLE AND MUST BE
`DISCLAIMED
`
`
`In the context of the present application, the wording “NEURO PHARMA”
`
`describes a characteristic or feature of the goods, and therefore, constitutes matter that is
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`unregistrable. The Office may require a disclaimer of a portion of a mark that is
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`unregistrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). An unregistrable
`
`

`
`component of a mark includes wording and designs that are merely descriptive of the
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`goods and/or services, and is wording or an illustration that others would need to use to
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`describe or show their goods and services in the marketplace. 15 U.S.C. §1052(e); see
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`TMEP §§1209.03(f), 1213.03 et seq. If applicant does not provide the required
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`disclaimer, the USPTO can refuse to register the entire mark. TMEP §1213.01(b).
`
`
`
`
`
`A. THE WORDING “NEURO PHARMA” DESCRIBES A CHARACTERISTIC
`OR FEATURE OF APPLICANT’S GOODS
`
`The term “NEURO PHARMA” is descriptive of a characteristic or feature of
`
`Applicant’s goods. In previous Office actions, the trademark examining attorney
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`attached evidence that “NEURO” is an abbreviation for “neurological” which is defined
`
`as “the scientific study of the nervous system especially in respect to its structure,
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`functions, and abnormalities” and that the term “PHARMA” refers to “a company that
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`makes and sells pharmaceuticals.” Please see pages 29-33 from the February 2, 2010
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`outgoing Office action and pages 2-13 from the March 22, 2011 outgoing action.
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`Applicant’s pharmaceutical preparations, nutritional additives, and dietary supplements
`
`are manufactured, provided by and originate from a company that makes and sells
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`pharmaceuticals that are used for treating diseases, ailments and conditions affecting the
`
`nervous system. The trademark examining attorney has also attached evidence from
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`Applicant’s own website in which Applicant describes its company as “an internationally
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`established, fully integrated pharmaceutical company focusing on the development,
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`manufacturing and marketing of treatments for neurodegenerative and cerebrovascular
`
`disorders” and as a company “with a diversified portfolio of innovative and special
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`generic drug products for the save [sic] and effective treatment of patients suffering from
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`

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`neurodegenerative and cerebrovascular disorders.” Please see pages 75-76 from the
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`March 22, 2011 outgoing action. A word or term that identifies the source or provider of
`
`a product or service, using only descriptive wording, is merely descriptive. See In re
`
`Major League Umpires, 60 USPQ2d 1059 (TTAB 2001) (holding MAJOR LEAGUE
`
`UMPIRE merely descriptive of clothing, face masks, chest protectors and skin guards); In
`
`re The Phone Co., 218 USPQ 1027 (TTAB 1983) (holding THE PHONE COMPANY
`
`merely descriptive for telephones); TMEP §1209.03(q).
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`Further, Applicant’s own identification of goods supports a disclaimer of
`
`“NEURO PHARMA” since the goods include “Pharmaceutical preparations used for the
`
`treatment of central nervous system diseases and neurodegenerative diseases,” i.e.,
`
`neurological pharmaceuticals.
`
`Applicant argues that “the adjacent terms NEURO and PHARMA must indeed be
`
`registrable and not descriptive if the cited registration may serve as the basis for refusal
`
`of the applied-for mark.” This argument is without merit since prior decisions and
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`actions of other trademark examining attorneys in registering different marks have little
`
`evidentiary value and are not binding upon the Office. TMEP §1207.01(d)(vi). Each
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`case is decided on its own facts, and each mark stands on its own merits. See AMF Inc. v.
`
`Am. Leisure Prods., Inc., 474 F