From: Blandu, Florentina
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`Sent: 12/6/2012 3:29:04 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 79087045 - GLYDE - 1050-068.001
`- EXAMINER BRIEF
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 79087045.doc
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`Sent: 12/6/2012 3:29:04 PM
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`To: TTAB EFiling
`
`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 79087045 - GLYDE - 1050-068.001
`- EXAMINER BRIEF
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`
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`*************************************************
`Attachment Information:
`Count: 1
`Files: 79087045.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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`79087045
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` MARK: GLYDE
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` Parnell Technologies Pty Ltd
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` CORRESPONDENT ADDRESS:
` JULIA C ARCHER
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` ENNS & ARCHER LLP
` 939 BURKE STREET
` WINSTON-SALEM, NC 27101
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`
` APPLICANT:
`
` CORRESPONDENT’S REFERENCE/DOCKET NO:
` 1050-068.001
` CORRESPONDENT E-MAIL ADDRESS:
` jarcher@ennsandarcher.com
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`
`
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`*79087045*
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`GENERAL TRADEMARK INFORMATION:
`http://www.uspto.gov/main/trademarks.htm
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`TTAB INFORMATION:
`http://www.uspto.gov/web/offices/dcom/ttab/index.html
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`EXAMINING ATTORNEY'S APPEAL BRIEF
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`INTERNATIONAL REGISTRATION NO. 1050296
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`Applicant Parnell Technologies Pty Ltd, has appealed the trademark
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`examining attorney’s final refusal to register the trademark GLYDE for “veterinary
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`preparations and pharmaceuticals, namely, preparations for horses and dogs that sustain
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`cartilage synthesis and reduce inflammation, none of the aforementioned being lubricant;
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`veterinary foods which have a health giving property, namely, preparations for horses and
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`dogs that sustain cartilage synthesis and reduce inflammation” on the grounds that the
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`mark, under section 2(d), 15 U.S.C. Section 1052(d), is likely to be confused with the
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`mark GLIDE PHARMA, U.S. Registration No. 3779916.
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`FACTS
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`On 10/07/2010 the applicant filed an application to register the trademark
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`GLYDE for veterinary preparations, pharmaceuticals, none of the aforementioned being
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`lubricant; veterinary foods which have a health giving property.
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`On December 14, 2010 the trademark examining attorney refused the application
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`in question under Trademark Act Section 2(d) based on a likelihood of confusion with the
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`mark GLIDE PHARMA, U.S. Registration No. 3779916 for “pharmaceutical and
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`veterinary preparations and substances for the diagnosis of, treatment of or protection
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`against infectious diseases, pain, inflammation and obesity; pharmaceutical and
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`veterinary preparations and substances for the diagnosis of, treatment of or protection
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`against viral, metabolic, musculoskeletal, central nervous system, endocrinological,
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`immunological, oncological, neurological, hormonal, dermatological and psychiatric
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`related diseases and disorders; pharmaceutical and veterinary preparations and substances
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`for skin and tissue repair; prophylactic pharmaceutical and veterinary preparations and
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`substances; vaccines, prophylactic vaccines, therapeutic vaccines; contraceptive
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`preparations and substances; all the aforesaid being in solid dosage form, for needleless
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`medical device for delivering pharmaceuticals in solid doses under the skin; needleless
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`drug delivery devices; biological sampling apparatus including fluid and tissue collectors
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`and samplers, and parts and fittings therefor; actuator devices for use in drug delivery
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`devices; drug cassettes for use in drug delivery devices to contain pharmaceutical
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`preparations and substances for therapeutic, prophylactic and diagnostic use all being in
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`the form of solid doses; parts and fittings for all the aforesaid goods. And for services in
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`the design, development and formulation of pharmaceuticals into a solid dosage format;
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`research and development services in relation to the delivery of pharmaceuticals in a
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`solid dosage format.” The examining attorney also cited pending Application Serial No.
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`77580907 and requested that the applicant amend its identification of goods to read with
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`greater specificity.
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`On June 15, 2011, the applicant responded to the examining attorney’s non-final
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`action arguing against a likelihood of confusion refusal. At the same time the applicant
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`amended its identification of goods to read as follows: “Veterinary preparations and
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`pharmaceuticals, namely, preparations for horses and dogs that sustain cartilage synthesis
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`and reduce inflammation, none of the aforementioned being lubricant; veterinary foods
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`which have a health giving property, namely, preparations for horses and dogs that
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`sustain cartilage synthesis and reduce inflammation.”
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`On July 07, 2011 the application was suspended pending the outcome of
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`Application Serial No. 77580907 and the 2(d) refusal based on U.S. Registration No.
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`3779916.
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`On January 27, 2012 the examining attorney withdrew from consideration
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`application serial no. 7580907 and continued and made FINAL the section 2(d) refusal
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`based of U.S. Registration No. 3779916.
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`On July 20, 2012 the applicant submitted a request for reconsideration to the
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`examining attorney’s office action dated January 27/2012 arguing against the likelihood
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`of confusion.
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`On 08/09/2012 the examining attorney mailed a notice denying applicant’s
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`request for reconsideration. The appeal follows the trademarks examining attorney’s
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`final refusal under Trademark Act Section 2(d) and the denial of applicant’s request for
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`reconsideration.
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`ISSUE ON APPEAL
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`
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`The only issue on appeal is whether there is a likelihood of confusion of the
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`proposed mark GLYDE with the mark GLYDE PHARMA in U.S. Registration No.
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`3779916.
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`ARGUMENT
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`THE MARKS OF APPLICANT AND REGISTRANT ARE SUFFICIENTLY SIMILAR
`AND THE GOODS ARE IN PART IDENTICAL AND OTHERWISE CLOSELY
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`RELATED SUCH THAT A LIKELIHOOD OF CONFUSION EXISTS UNDER
`SECTION 2(d) OF THE TRADEMARK ACT.
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`
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`Trademark Act Section 2(d) bars registration where an applied-for mark so
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`resembles a registered mark that it is likely, when applied to the goods or services, to
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`cause confusion, mistake or to deceive the potential consumer as to the source of the
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`goods and/or services. The Court in In re E. I. du Pont de Nemours & Co., 476 F.2d
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`1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in
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`determining whether there is a likelihood of confusion. Among these factors are the
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`similarity of the marks as to appearance, sound, meaning and commercial impression,
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`and the relatedness of the goods or services.
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`The overriding concern is to prevent buyer confusion as to the source of the goods
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`or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir.
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`1993). Therefore, any doubt as to the existence of a likelihood of confusion must be
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`resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
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`USPQ2d 1025 (Fed. Cir. 1988).
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`I. THE GOODS ARE HIGHLY RELATED
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`It is well settled that the issue of likelihood of confusion between marks must be
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`made solely on the basis of the goods and/or services identified in the application and
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`registration, without limitations or restrictions that are not reflected therein. In re Thor
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`Tech, Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009); In re Dakin’s Miniatures, Inc., 59
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`USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii).
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`Applicant’s goods include veterinary preparations and pharmaceuticals that
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`reduce inflammation. Registrant’s goods include pharmaceutical and veterinary
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`preparations for the treatment of or protection against inflammation, among other things.
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`The goods of the applicant are similar if not identical.
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`The examining attorney attached to the office action dated December 14, 2010,
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`ample evidence from the Internet as well as trademark registrations that the applicant and
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`registrant’s goods are related. See www.thai-info.net, see www.hotfrog.com, see
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`www.grvet.com, see www.hotfrog.com, see www.abbott.com, see www.grvet.com, and
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`see www.thai-info.net, all of which feature pharmaceutical preparations and veterinary
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`preparations, also see U.S. Registration No. 2879110, 3074234, 2956982 all of which
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`show that those who offer veterinary preparations also offer pharmaceutical preparations.
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`The evidence in question shows that a variety of veterinary preparations and
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`pharmaceutical preparations are commonly sold together.
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`The identification of goods of both parties feature anti-inflammatory preparations
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`that can be used for pharmaceutical as well as for veterinary use. The goods are targeted
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`to the same consumers and they travel through the same channels of trade. The
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`examining attorney notes that the identification of goods of both parties contains no
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`limitations as to the channels of trade or the type of customers.
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`II. MARKS ARE CONFUSINGLY SIMILAR
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`
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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). Similarity in any one of these elements may
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`be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534,
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`1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see
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`TMEP §1207.01(b).
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`The question is not whether people will confuse the marks, but whether the
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`marks will confuse people into believing that the goods and/or services they identify
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`come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175
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`USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that reason, the test of
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`likelihood of confusion is not whether the marks can be distinguished when subjected to a
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`side-by-side comparison. The question is whether the marks create the same overall
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`impression. See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894,
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`1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189
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`(TTAB 1980). The focus is on the recollection of the average purchaser who normally
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`retains a general rather than specific impression of trademarks. Chemetron Corp. v.
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`Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp.
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`v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
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`Where the goods and/or services of an applicant and registrant are “similar in kind
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`and/or closely related,” the degree of similarity between the marks required to support a
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`finding of likelihood of confusion is not as great as in the case of 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).
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`Applicant’s mark is GLYDE. Registrant’s mark is GLIDE PHARMA.
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`Comparing the marks, applicant merely added the descriptive term PHARMA and spelled
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`GLIDE as GLYDE. The mere addition of a term to a registered mark generally does not
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`obviate the similarity between the marks nor does it overcome a likelihood of confusion
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`under Trademark Act Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram &
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`Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL
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`LANCER); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and
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`VANTAGE TITAN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988)
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`(MACHO and MACHO COMBOS); In re Riddle, 225 USPQ 630 (TTAB 1985)
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`(ACCUTUNE and RICHARD PETTY’S ACCU TUNE); TMEP §1207.01(b)(iii).
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`Additionally the dominant feature of registrant’s mark GLIDE is phonetically equivalent
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`to the applicant’s mark, GLYDE. Similarity in sound alone may be sufficient to support
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`a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534,
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`1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586
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`(TTAB 2007); TMEP §1207.01(b)(iv).
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`The examining attorney disagrees with applicant’s contention that the marks have
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`different commercial impression due to registrant’s mark comprising two words and due
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`to the unusual spelling of applicant’s mark. The term that is of importance in this case is
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`GLYDE/GLIDE. Pharma is descriptive when used in connection with the registrants’
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`goods and services. Therefore, it is not significant when comparing the marks.
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`As for the difference in spelling between GLYDE/GLIDE, the two terms sound the same.
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`The consumers when recalling the mark are likely to do so by the proper spelling of the
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`term and are not likely to recall that the applicant’s mark has an unusual spelling.
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`According to the applicant there are 57 active records incorporating the letter
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`string GLID in International Class 5. The applicant refers to BODYGLIDE, U.S.
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`Registration No. 3594808, HYALOGLIDE, U.S. Registration No.3610893,
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`FENOGLIDE, U.S. Registration No. 3528941, TRIGLIDE, U.S. Registration No.
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`3091590, PRO-GLIDE, U.S. Registration No. 40294479, and WATERGLIDE &
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`DESIGN, U.S. Registration No. 3987719, among other registrations. The examining
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`attorney notes that the marks in question are distinguishable from the situation in
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`question because in each one of the cases referenced above, the term GLIDE is
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`accompanied by non-descriptive mater which serves to distinguish the marks.
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`Additionally, the goods of the referenced registrations are not for the same purpose as the
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`applicant and registrant’s goods are, namely, for use as anti-inflammatories. Therefore,
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`the cited registration is not for a weak mark, as the applicant suggests in its brief. Even if
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`the applicant were correct in its assessment that the cited registration is weak, the Court
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`of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have
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`recognized that marks deemed “weak” or merely descriptive are still entitled to protection
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`against the registration by a subsequent user of a similar mark for closely related goods
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`and/or services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); TMEP
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`§1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
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`1401, 182 USPQ 108, 109 (C.C.P.A. 1974).
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`Finally, the applicant argues that the consumers of applicant and registrant’s goods are
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`sophisticated enough to distinguish between the marks. The fact that purchasers are
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`sophisticated or knowledgeable in a particular field does not necessarily mean that they
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`are sophisticated or knowledgeable in the field of trademarks or immune from source
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`confusion. TMEP §1207.01(d)(vii); see, e.g., Imagineering Inc. v. Van Klassens Inc., 53
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`F.3d 1260, 1265, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995); Top Tobacco LP v. N. Atl.
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`Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, as noted previously, the
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`question is not whether consumers can merely distinguish between the marks, but rather
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`whether the marks create the same or similar overall commercial impression. In this
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`case, the marks create the same overall commercial impression.
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`CONCLUSION
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`Consumers encountering the applicant’s marks and the registered mark
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`in the marketplace are likely to mistakenly believe that the goods emanate from a
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`common source because the goods are in part identical and otherwise highly related, and
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`the marks are highly similar. Accordingly, the examining attorney respectfully requests
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`that the Section 2(d) refusal be affirmed.
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`Respectfully submitted,
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`/Florentina Blandu/
`Trademark Examining Attorney
`Law Office 117
`tel. (571) 272-9128
`fax (571) 273-9128
`florentina.blandu@uspto.gov
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`
`
`Brett J. Golden
`Managing Attorney
`Law Office 117
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`
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