Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA687284
`ESTTA Tracking number:
`08/03/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`86506204
`Gulf Coast Pharmacy, Inc.
`ELAN FOR HEALTHY PHYSICAL & MENTAL ENERGY
`GENE BOLMARCICH
`Law Offices Of Gene Bolmarcich
`215 Sterling Dr
`Newington, CT 06111-2261
`UNITED STATES
`gxbesq1@gmail.com
`Appeal Brief
`Elan Appeal Brief.pdf(328632 bytes )
`Gene Bolmarcich
`gxbesq1@gmail.com
`/gb/
`08/03/2015
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`
`ESTTA687284
`ESTTA Tracking number:
`08/03/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`86506204
`Gulf Coast Pharmacy, Inc.
`ELAN FOR HEALTHY PHYSICAL & MENTAL ENERGY
`GENE BOLMARCICH
`Law Offices Of Gene Bolmarcich
`215 Sterling Dr
`Newington, CT 06111-2261
`UNITED STATES
`gxbesq1@gmail.com
`Appeal Brief
`Elan Appeal Brief.pdf(328632 bytes )
`Gene Bolmarcich
`gxbesq1@gmail.com
`/gb/
`08/03/2015
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re Application of:
`
`
`
`Gulf Coast Pharmacy Inc.
`
`
`
`
`
`
`
`
`
`Serial No.: 86/506,204
`
`
`Filed: January 16, 2015
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`
`
`
`
` ) Law Office 115
` )
` ) Examining Attorney:
`
` )
`
`Alison P. Schrody
`
` )
`
` )
` )
` )
` )
`
`
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`
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` )
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`Mark:
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`
`
`United States Patent and Trademark Office
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
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`
`
`APPLICANT’S APPEAL BRIEF
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`
`
`
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`
`
`
`TABLE OF CONTENTS
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`
`
`TABLE OF CONTENTS ....................................................................................2
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`INDEX OF CITATIONS ....................................................................................3
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`PROSECUTION HISTORY ...............................................................................4
`
`THE REFUSAL...................................................................................................5
`
`ARGUMENT ......................................................................................................7
`
`
`
`I. The Cited Service Marks - The Goods and Services Are Not Related……….7
`
`II. The Cited Trademarks The Goods Are Not Related and The Marks Are Not
` Similar.…………….………………………………..……………………….8
`
`III. The “Rule” Concerning Pharmaceutical Products is Inappplicable…….....13
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` 2
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`
`
`
`
`Index of Citations
`
`
`
`Cases:
`
`In re Bentley Motors Ltd. Serial No. 85325994 (December 3, 2013)
`
`In re Mucky Duck Mustard Co. Inc., 6 U.S.P.Q.2d 1467, 1470 n.6 (T.T.A.B. 1988)
`
`In re W.W. Henry Co., 82 U.S.P.Q.2d 1213, 1215 (T.T.A.B. 2007)
`
`In re Tomberlin Prod. Group, LLC, Serial No. 78734308 (T.T.A.B. November 30, 2007)
`
`In re The Orvis Co., Inc., Serial No. 78276739 (T.T.A.B. October 22, 2007)
`
`
`
`Statutes & Regulations:
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`Trademark Act Section 2(d), 15 U.S.C. § 1052(d)
`
` 3
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`
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`PROSECUTION HISTORY
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`
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`On April 28, 2015 the Examining Attorney issued a Non-Final Office Action
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`(the “First Office Action”), refusing registration under Trademark Act §2(d) on the
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`ground that Applicant’s Mark is likely to be confused with five registered marks
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`owned by Elan Corp. (see page 5, infra)
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`On June 12, 2015, Applicant submitted a response (the “OAR”), in which
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`Applicant offered arguments against the refusal to register the mark under Trademark
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`Act §2(d).
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`
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`On July 27, 2015, the Examining Attorney issued a Final Office Action regarding
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`the refusal under Trademark Act §2(d).
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`On August 3, 2015, Applicant filed a Notice of Appeal with the Board.
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`
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`
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`
`
` 4
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`
`
`THE REFUSAL
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`
`
`Applicant, Gulf Coast Pharmacy, by Counsel, hereby appeals the Examining
`
`Attorney’s refusal to register Applicant’s mark
`
` in
`
`Application Serial No. 86/506,204 (“Applicant’s Mark”). The Examining Attorney has
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`refused registration pursuant to Trademark Act 2(d), 15 U.S.C. § 1052(d), on the grounds
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`that Applicant’s mark for use in connection with “dietary and nutritional supplements” in
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`Class 5 is likely to be confused with the following marks, all owned by Elan Corp. of
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`Dublin, Ireland:
`
` (U.S. Reg. No. 1,645,769) for “FULL LINE OF
`PHARMACEUTICAL IN THE NATURE OF ANTISPASMODICS AND ANTI-
`ULCERANTS, ANTI-DIARRHOEALS, COLORECTAL AGENTS, CARDIAC
`DRUGS, DRUGS FOR THE TREATMENT OF DISORDERS OF THE CENTRAL
`NERVOUS SYSTEM, CNS STIMULANTS, ANALGESICS, ANTIPYRETICS AND
`ANTI-INFLAMMATORY AGENTS, MUSCLE RELAXANTS, STEROIDAL
`PREPARATIONS, DRUGS AFFECTING THE GENITO-URINARY SYSTEM, ANTI-
`INFECTIVES, AND IMMUNOLOGICAL AGENTS, ANTI-ALLERGIC DRUGS
`PHARMACEUTICAL PREPARATIONS FOR THE TREATMENT OF
`DERMATOLOGICAL DISORDERS”
`
` (U.S. Reg. No. 2,982,548 ) for “house mark for a full line of
`
` 5
`
`
`
`pharmaceutical products and substances”
`
`
`
` (U.S. Reg. No. 3,579,986) for “Manufacturing pharmaceutical
`products for others” in Class 40 and “Medical research; research and development of new
`technology for others in the fields of medicine, pharmaceuticals, consulting services in
`the field of drug delivery and biotechnology; drug delivery, biotechnology and
`pharmaceutical drug development; engineering services in the fields of medicine,
`pharmaceuticals, drug delivery and biotechnology; pharmaceutical drug development
`services” in Class 42
`
`
`
`ELAN DRUG TECHNOLOGIES (U.S. Reg. No. 3,739,931) for “Manufacturing
`pharmaceutical products for others” in Class 40 and “Pharmaceutical drug development
`services; pharmaceutical research and development; consultation services in the field of
`drug delivery technology and pharmaceutical drug development” in Class 42
`
`
`
` (U.S. Reg. No. 3,739,934) for “Manufacturing
`pharmaceutical products for others” in Class 40 and “Pharmaceutical drug development
`services; pharmaceutical research and development; consultation services in the field of
`drug delivery technology and pharmaceutical drug development” in Class 42
`
` 6
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`
`
`ARGUMENT
`
`I. The Cited Service Marks - THE GOODS AND SERVICES ARE NOT
`RELATED
`
`
`
`
`
`With respect to the cited registrations that are solely in Class 40 and 42, the
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`different consumers and associated distinct and separate channels of trade - the general
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`consuming public for Applicant’s dietary and nutritional supplements on the one hand,
`
`and pharmaceutical manufacturers and companies in need of r&d services on the other
`
`hand, guarantees that there cannot possibly be any likelihood of confusion with respect
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`to the use of these marks. Even if, solely for the sake of argument, it could be shown
`
`that these goods and services may emanate from a single source, if no consumers would
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`encounter both Applicant’s Mark and the cited registrations, there can be no confusion.
`
`See In In re Bentley Motors Ltd. Serial No. 85325994 (December 3, 2013) (“In a
`
`particular case, any of the du Pont factors may play a dominant role. In re E. I. du Pont
`
`de Nemours & Co., 177 USPQ at 567. In fact, in some cases, a single factor may be
`
`dispositive. Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142,
`
`1145 (Fed. Cir. 1991) (“we know of no reason why, in a particular case, a single du Pont
`
`factor may not be dispositive”). In the present case, the lack of evidence showing an
`
`overlap in the channels of trade for Applicant's product and that of the Cited Mark is
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`pivotal. See, e.g., In re HerbalScience Group LLC, 96 USPQ2d 1321, 1324 (TTAB
`
`2010) (“There is nothing in this record to show that a normal channel of trade for dietary
`
`and nutritional supplements is that they are sold to the companies that would purchase
`
`applicant's identified goods”). Because we find that the amendment to restrict
`
` 7
`
`
`
`applicant’s channel of trade means there is virtually no opportunity for confusion to
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`arise, we need not consider the other du Pont factors discussed by the examining
`
`attorney and applicant”).
`
`
`
`II. The Cited Trademarks – THE GOODS ARE NOT RELATED AND THE
`MARKS ARE NOT SIMILAR
`
`
`
`
`With respect to U.S. Reg. No. 1,645,769 and U.S. Reg. No. 2,982,548 for,
`
`respectively, “a full line” of pharmaceutical products and “a house mark” for a “full line
`
`of pharmaceutical products”, the evidence presented by the Examining Attorney fails to
`
`prove that these products are related to “dietary and nutritional supplements”. The
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`evidence offered by the examining attorney comprises nineteen third-party trademark
`
`registrations, each purportedly containing both pharmaceuticals and dietary supplements.
`
`Such registrations always have limited probative value. In re Mucky Duck Mustard Co.
`
`Inc., 6 U.S.P.Q.2d 1467, 1470 n.6 (T.T.A.B. 1988) (“Third-party registrations which
`
`cover a number of differing goods and/or services, and which are based on use in
`
`commerce, although not evidence that the marks shown therein are in use on a
`
`commercial scale or that the public is familiar with them, may nevertheless have some
`
`probative value to the extent that they may serve to suggest that such goods or services
`
`are of a type which may emanate from a single source.”) (emphasis added).
`
`
`
`The TTAB has held that certain registrations are inadmissible for the purpose of
`
`showing the relatedness of goods contained therein. They are as follows:
`
` 8
`
`
`
`i)
`
`Registrations that do not actually include the goods at issue. If the third-
`
`party registrations do not include both the applicant’s specific goods and
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`the specific goods in the cited registration, the third-party registrations may
`
`have little or no probative value. In re W.W. Henry Co., 82 U.S.P.Q.2d
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`1213, 1215 (T.T.A.B. 2007).
`
`ii)
`
`Registrations for house marks or that cover a wide range of goods. In re
`
`Gebhard, Serial No. 78950320 (T.T.A.B. March 26, 2009) (“We have
`
`given no weight to those third-party registrations for marks which are in
`
`the nature of house marks, designer marks and merchandising marks, as it
`
`is well-recognized that such marks may be used for a wide variety of items,
`
`and therefore they are of little value in showing that the goods for which
`
`they are registered are all related.”); In re Tomberlin Prod. Group, LLC,
`
`Serial No. 78734308 (T.T.A.B. November 30, 2007) (“we do not give
`
`further consideration to those registrations submitted by the examining
`
`attorney that . . . include a ‘laundry list’ of goods and services”); In re The
`
`Orvis Co., Inc., Serial No. 78276739 (T.T.A.B. October 22, 2007) (“we
`
`find that the vast majority of [the examining attorney’s third party]
`
`registrations are analogous to house marks because the identifications of
`
`goods encompass a broad range of clothing, accessory and sporting goods
`
`products. Therefore, the inclusion of fishing vests, swimwear and/or
`
`leotards in the identifications of goods is not particularly significant.”)
`
`
`
`
`
` 9
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`
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`Upon close examination of all of these nineteen registrations, it can be seen that
`
`seventeen fall into one of these two categories as follows:
`
`
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`Those that do not show both dietary supplements and pharmaceuticals:
`
`
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`• DELAVAU
`
`• TCT
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`• S (ingredients and additives only)
`
`• M MARTEK (no pharmaceuticals)
`
`• KERAFAST (no nutritional supplements)
`
`• REGENEXX (no pharmaceuticals)
`
`• HENRY THAYER M.D (no pharmaceuticals)
`
`• LIFEVANTAGE (no pharmaceuticals, only anti-oxidants and nutraceuticals)
`
` 10
`
`
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`• LITE BURN (no pharmaceuticals)
`
`
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`House marks (based on the trademark being the same as the name of the company):
`
`
`
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`
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`• The Compounding Shop (compounding pharmacies create “custom” medications
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`so this cannot be evidence that pharmaceuticals and dietary supplements sold in
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`their normal channels of trade are related)
`
`• ATHERONOVA
`
`• VIVAKEM
`
`• MARCO PHARMA
`
`• BAYER
`
`• MACPHERSEN
`
`• EUROVITAL
`
`• MTN OPS
`
` 11
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`
`
`The only remaining third party registrations are thus CLINICAL STRENGTH
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`HYDRATION and NOVIRIN. The Board has made it very clear that third party
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`registration evidence that includes only a few trademarks is not probative. Two
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`registrations are insufficient evidence. See In re RAM Oil, Ltd., LLP, Serial Nos.
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`77280977 and 77280981 (TTAB September 3, 2009). Finally both of these two marks
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`are quite different from Applicant’s mark in terms of appearance, sound and meaning.
`
`The ‘769 mark contains a prominent stylized lower case “e” along with the lower case
`
`word “elan”, where the letters in the word “elan” are so close together that it appears as
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`close to “elon” as it does to “elan”. Applicant’s Mark has a very different stylized font
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`and a capital “E” with an arrow incorporated into it. Furthermore, it includes the words
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`“for Healthy Physical & Mental Energy” which are words one would expect to see used
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`for supplements as opposed to pharmaceuticals. The ‘548 mark is simply the word
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`“elan” in lower case italicized letters with a very thick and prominent accent mark above
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`the “e”. According to Merriam-Webster (of which the Board can take judicial notice) the
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`definition of “elan” is “energy and enthusiasm”. Thus it has a highly suggestive meaning
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`in relation to Applicant’s supplements that, as the mark itself states, are used to increase
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`physical and mental energy. For this reason it is not at all likely that consumers would
`
`confuse Applicant’s Mark with the mark “elan” used as a house mark for pharameuticals
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`but instead merely understand that it is used to suggest a feature of Applicant’s
`
` 12
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`supplements.
`
`
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`
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`III. The “Rule” Concerning Pharmaceutical Marks is Inapplicable
`
`The examining attorney has argued that the bar for likelihood of confusion is
`
`
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`lower with respect to pharmaceutical marks, for public safety reasons. However, that
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`rule in inapplicable where Applicant’s products are merely dietary and nutritional
`
`supplements. The rule to which the Examining Attorney refers pertains only to the use
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`of similar marks on different pharmaceutical products. It is simply not possible for a
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`pharmacist to dispense a supplement sold over the counter when filling a prescription
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`for a pharmaceutical product that happens to come from a company1 with an arguably
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`similar name as the supplement.
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`
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`Dated this 3rd day of August, 2015.
`
`Respectfully submitted,
`
`/gb/
`
`Gene Bolmarcich
`
`Law Offices of Gene Bolmarcich
`
`215 Sterling Dr.
`
`Newington, CT 06111
`
`Ph: 609 651-1261
`
`e-mail: gxbesq1@gmail.com
`
`
`1 The cited trademarks are both house marks, not the name of the pharmaceutical
`itself
`
` 13
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