Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1122773
`
`Filing date:
`
`03/25/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88660548
`
`Alembic Pharmaceuticals, Inc.
`
`Applied for Mark
`
`ALEMBIC
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`Appealed class
`
`ALBERT H MANWARING IV
`MORRIS JAMES LLP
`500 DELAWARE AVENUE STE 1500
`WILMINGTON, DE 19801
`UNITED STATES
`Primary Email: amanwaring@morrisjames.com
`302-888-6868
`
`Appeal Brief
`
`Alembic - Appeal for ALEMBIC.pdf(221617 bytes )
`Craig Salmon Declaration.pdf(70736 bytes )
`
`Class 005. First Use: 1907/01/01 First Use In Commerce: 1907/01/01
`All goods and services in the class are appealed, namely: Generic prescription
`drugs, approved bythe U.S. Food and Drug Administration, namely, prescription
`drugs in the natureof pills, tablets, capsules, caplets, liquid drops, sachets and
`pharmaceutical preparations, for the treatment of or fitting the description of the
`following: allergic conjunctivitis, alzheimer's, antianxiety, antibacterial, anitbiotic,
`antidepressant, anti-epileptic, anti-infection, anti-inflammatory and antipruritica-
`gents, anti-ulcer, bacterial conjunctivitis, bipolar 1 disorder, bronchodilator,
`erectile dysfunction, fungal infection, glaucoma, herpes, hypercholesterolemia,
`hypertension, hyperuricemia, hypoparathyroidism, influenza A or Parkinson's
`disease/syndrome, influenza A and B, insomnia, intraocular pressure, local an-
`esthesia, lowering high cholesterol, management of neuropathic pain, NSAID,
`ocular infections, overactive bladder, postoperative inflammation and reduction
`of ocular pain, relief of cough, relief of the inflammatory and pruritic manifesta-
`tions,rhumatoid arthritis, seizure, panic disorder, sleep disorder, transfusional
`iron overload, and treatment of moderate tosevere scalp psoriasis; prescribed by
`alicensed medical doctor with the prescriptions filled by a retail pharmacy li-
`censed to sell prescription drugs
`
`Filer's Name
`
`Filer's email
`
`Kuhu Parasrampuria
`
`amanwaring@morrisjames.com, kzeberkiewicz@morrisjames.com, kparasram-
`puria@morrisjames.com
`
`Signature
`
`Date
`
`/Kuhu Parasrampuria/
`
`03/25/2021
`
`

`

`IN THE UNITED STATE PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`In re Application of:
`Alembic Pharmaceuticals, Inc.
`Serial No.: 88660548
`Filed: October 18, 2019
`Trademark: ALEMBIC
`
`
`
`
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`)
`)
`)
`)
`)
`)
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`)
`)
`)
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`
`
`
`Trademark Attorney:
`Chioma (Bata) Oputa
`
`
`ARGUMENT IN SUPPORT OF APPEAL
`
`
`In accordance with the provisions of 37 C.F.R. §§ 2.141 and 2.142, this
`
`argument is submitted in support of this Appeal (the “Appeal”) in response to the
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`Final Office Action of the United Stated Patent and Trademark Office (“USPTO”)
`
`dated January 5, 2021, rejecting U.S. Application Serial No. 88660548 for
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`"ALEMBIC" (the “Application”) filed by Alembic Pharmaceuticals, Inc. (the
`
`“Applicant” or “Alembic”). The Application was refused, on the ground that there
`
`is a likelihood of confusion, pursuant to Trademark Act Section 2(d), 15 U.S.C.
`
`§1052(d), with the mark in U.S. Registration No. 5683081 for ALEMBIC
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`HERBALS (the “Registered Mark”) held by Purapharm International (H.K.)
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`
`
`

`

`Limited (the “Registrant”).1 Because there is no likelihood of confusion between
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`the Registered Mark and Alembic’s applied-for mark, this Appeal should be granted.
`
`STATEMENT OF FACTS
`
`Applicant’s mark is classified as follows:
`
`International Class 5: Generic prescription drugs, approved by the
`U.S. Food and Drug Administration, namely, prescription drugs in the
`nature of pills, tablets, capsules, caplets, liquid drops, sachets and
`pharmaceutical preparations,
`for
`the
`treatment of: allergic
`conjunctivitis, Alzheimer's disease, anxiety, bacterial infections,
`depression, epilepsy, infection, inflammation and allergies, ulcers,
`bacterial conjunctivitis, bipolar disorder, bronchoconstriction,
`erectile
`dysfunction,
`fungal
`infection,
`glaucoma,
`herpes,
`hypercholesterolemia,
`hypertension,
`hyperuricemia,
`Parkinson’s
`B,
`hypoparathyroidism,
`influenza
`A
`and
`disease/syndrome,
`insomnia,
`intraocular pressure, paralysis,
`amnesia, unconsciousness, high cholesterol, neuropathic pain,
`arthritic pain and inflammation, ocular infections, overactive bladder,
`postoperative inflammation, ocular pain, cough, inflammatory and
`pruritic manifestations, rheumatoid arthritis, seizure, panic disorder,
`sleep disorder, transfusional iron overload, and moderate to severe
`scalp psoriasis; all of the foregoing prescribed by a licensed medical
`doctor with the prescriptions filled by a retail pharmacy licensed to
`sell prescription drugs.
`
`In addition to a “retail and wholesale store services” in International Class 35,
`
`Registrant’s Mark, ALEMBIC HERBALS, is classified as follows:
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`International Class 5: medicines for human purposes for strengthening
`the immune system and restoring normal human bodily functions, the
`treatment, mitigation and prevention of diseases and disorders, namely,
`digestive diseases and disorders, central nervous system diseases and
`
`1 The final reason for rejection was because of improper identification of goods.
`Applicant has complied with the Trademark Examiner’s guidance to amend the
`identification of goods.
`
`
`
`2
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`

`

`disorders, namely, brain diseases, movement disorders ocular motility,
`respiratory diseases and disorders, excretory diseases and disorders,
`cardiovascular diseases and disorders, reproductive diseases and
`disorders, endocrinal diseases and disorders, immunological diseases
`and disorders, namely, autoimmune diseases, immunologic deficiency
`syndromes, hepatitis, dermatological diseases and disorders, skeletal
`diseases and disorders, namely, bone diseases, back pain, muscular
`diseases and disorders, namely, muscular dystrophy, inflammatory
`muscle diseases, sensory diseases and disorders, namely, blindness.
`
`
`
`DESCRIPTION OF THE RECORD
`
`Applicant filed the present application requesting registration of the mark for
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`goods based on prior use in commerce on October 18, 2019. On January 27, 2020,
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`the trademark examining attorney (the “Examining Attorney”) refused registration
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`of the Applicant’s mark. On March 20, 2020, Alembic amended its Application and
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`presented argument in support of registration of its applied-for mark. On April 17,
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`2020, a Final Office Action refusing registration of Applicant’s applied-for mark
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`was entered by the USPTO.
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`Applicant filed a request for reconsideration seeking registration in Class 5
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`and deleting its request for registration for Class 35 on June 30, 2020. On the same
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`day, Applicant also submitted a specimen: a photograph of a prescription bottle
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`bearing its mark that contained generic prescription drugs manufactured by Alembic
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`that had been used in commerce. Applicant appealed the refusal to register the mark
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`on July 1, 2020. Then, on December 1, 2020, Applicant amended its identification
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`of goods for Class 5 and submitted an additional specimen. The USPTO issued a
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`
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`3
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`

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`Final Office Action on January 5, 2021 rejecting the request for consideration (the
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`“Refusal”). The Refusal was based on three grounds—(1) Section 2(d) “likelihood
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`of confusion” between the Applicant’s mark and the Registrant’s mark; and (2)
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`identification of goods and/or services.
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`STATEMENT OF THE ISSUES
`
`Whether the Refusal is correct in alleging that a likelihood of confusion
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`pursuant to Section 2(d) of the Trademark Act exists between the mark in the subject
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`application and the mark cited in Registration No. 5683081.
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`Applicant has complied with the Trademark Examiner’s edits to the
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`identification of goods, so this issue is moot, and not subject to appeal.
`
`ARGUMENT
`
`Applicant submits that the Examining Attorney's refusal to register
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`Applicant's mark ALEMBIC based on the Registrant's ALEMBIC HERBALS mark
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`is not well founded. Section 2(d) of the Trademark Act is intended to provide
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`protection from confusion on the consumer level. The goal of the Act, as stated by
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`the U.S Court of Custom and Patent Appeals is “the protection of trademarks,
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`securing to the owner the goodwill of his business and protecting the public against
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`spurious and falsely marked goods.” Dupont de Nemours & Co., 177 U.S.P.Q. at
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`563. In this case, granting Applicant's registration will neither infringe upon any
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`goodwill of the Registrant, nor harm the purchasing public.
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`
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`4
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`

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`Section 2 of the Lanham Act provides:
`
`No trademark by which the goods of the applicant may be
`distinguished from the goods of others shall be refused registration on
`the principal register on account of its nature unless it . . . (d) consists
`of or comprises a mark which so resembles a [prior mark] as to be
`likely, when used on or in connection with the goods of the applicant,
`to cause confusion . . . .
`
`15 U.S.C. §1052(d) (emphasis supplied). A refusal to register that is based upon a
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`likelihood of confusion has a prerequisite that the confusion about the source of the
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`goods or services not be merely possible, but likely. Additionally, as this Board
`
`noted in In re Massey-Ferguson Inc., 222 U.S.P.Q. 367, 368 (T.T.A.B. 1983)
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`(quoting from Witco Chemical Co. v. Whitfield Chemical Co., Inc., 164 U.S.P.Q. 43,
`
`44 (C.C.P.A. 1969)), “[w]e are not concerned with mere theoretical possibilities of
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`confusion, deception or mistake or with the de minimus situations but with
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`practicalities of the commercial world, with which trademark deals.” The test for
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`likelihood of confusion is “whether an appreciable number of ordinarily prudent
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`purchasers” is likely to confuse the source of the applicant’s products or services
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`with the source of another existing prior mark. Solton, Inc. v. Cornwall, Corp., 477
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`F. Supp. 975, 989 (D.C. N.J. 1979) (emphasis supplied). Marks are to be viewed in
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`the context of legitimate present-day business practice. Hence, only marks that are
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`confusingly similar to the extent that they disrupt legitimate present-day business
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`practice should be refused.
`
`
`
`5
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`

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`In this instance, confusion between Applicant's mark ALEMBIC and the
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`Registrant's mark ALEMBIC HERBALS is not likely. No appreciable number of
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`ordinarily prudent purchasers would confuse the source of the goods and no
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`disruption of legitimate present-day practice would ensue with the registration of the
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`Applicant's mark.
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`The ultimate question of likelihood of confusion is one of fact and numerous
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`factors are relevant in making that determination. These factors include a
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`comparison of the relevant marks, the similarity or dissimilarity of the marks in their
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`entireties as to appearance, sound, connotation and commercial impression; the
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`similarity or dissimilarity and nature of the goods as described in an application or
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`registration; channels of trade; and the care and the sophistication of relevant
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`purchasers, among others. Dupont de Nemours & Co., supra, at p. 566-67; see also
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`TMEP §1207.01.
`
`I.
`
`COMPARISON OF MARKS
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`Applicant respectfully disagrees with the Examining Attorney's contention
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`that the Applicant's mark ALEMBIC and the Registrant's ALEMBIC HERBALS
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`mark would be likely to cause confusion due to their similar appearance coupled
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`with the Examiner’s presumption that the term “HERBALS” plays a very small
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`role in indicating the source of the mark. This belief is articulated in the Refusal,
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`in which the Examining Attorney states, “the average purchaser, who retains a
`
`
`
`6
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`

`

`general rather than specific impression of trademarks, is likely to assume a
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`connection between the parties because the marks share the identical wording
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`‘ALEMBIC’ and identify legally identical and closely related goods and/or
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`services.”
`
`In refusing Applicant's mark, the Examining Attorney has neglected to
`
`consider the marks in their entirety. The Examining Attorney's assertion that the
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`consumer will recall only the beginning of a mark, e.g., the first word, prefix or
`
`syllable, does not allow for the consideration of the Registrant’s marks in its
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`entirety. By not considering the marks as a whole, the Examining Attorney has
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`violated the anti-dissection rule, that the fact-finder may not dissect the mark into
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`smaller parts and focus on those parts in order to search for or substantiate
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`differences in the marks. 1 McCarthy Trademarks and Unfair Competition, §11:26
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`(4th Ed. 1977); Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S.
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`538, 545-46 (1920) (“The commercial impression of a trademark is derived from it
`
`as a whole, not from its elements separated and considered in detail. For this
`
`reason it should be considered in its entirety.”). In Massey Junior College v.
`
`Fashion Institute of Technology, 181 U.S.P.Q. 272, 273-74 (C.C.P.A. 1974), the
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`U.S. Court of Customs and Patent Appeals held that marks in question must be
`
`viewed in their entirety and not dissected into separate parts. The court rejected
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`
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`7
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`

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`the Trademark Trial and Appeal Board’s (T.T.A.B.) undue emphasis on a single,
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`prominent feature of a mark:
`
`Here the Board . . . sought to establish an exception to the rule,
`namely: if the most prominent feature of a mark creates a commercial
`impression separate and apart from the remaining features of the
`mark, any confusing similarity with respect to it is determinative with
`respect to the mark in its entirety. We know of no authority which
`supports such an exception and hold that the Board erred on this point.
`
`
`
`Here, Applicant's mark ALEMBIC and Registrant’s mark ALEMBIC HERBALS
`
`were not considered by the Examiner Attorney in their entirety.
`
`Viewing the marks as a whole by not splitting off what the Examining
`
`Attorney perceives as a mere addition of a disclaimed phrase “HERBALS” from the
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`Registrant's Mark in accordance with the anti-dissection rule, Applicant's mark and
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`the Registrant's mark are different in sight, sound, and commercial impression. The
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`addition of the word “Herbals” in the Registrant’s mark gives the mark a different
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`commercial impression than the “Alembic” trademark. Additions or deletions to
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`marks may be sufficient to avoid a likelihood of confusion if the marks in their
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`entireties convey significantly different commercial impressions. See, e.g., Shen
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`Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245 (Fed. Cir. 2004) (reversing
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`T.T.A.B.’s holding that contemporaneous use of THE RITZ KIDS for clothing items
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`(including gloves) and RITZ for various kitchen textiles (including barbeque mitts)
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`is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different
`
`
`
`8
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`

`

`commercial impression). Thus, the Examining Attorney has not viewed the marks
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`in their entirety, but is instead dissecting Registrant's mark into two portions solely
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`for the ease of comparison and refusal. Accordingly, the Examining Attorney has
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`done what the anti-dissection rule prohibits.
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`Finally, the Trademark Examiner claims that “consumers are likely to assume
`
`a connection between the parties . . . because the application and registration identify
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`legally identical and closely related goods and/or services.” As discussed below,
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`because Applicant’s and Registrant’s products are distinct, travel in distinct trade
`
`channels, and are purchased by different classes of purchasers, an average consumer
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`would not encounter the goods of both Registrant and Applicant and, therefore,
`
`would not even have the occasion to confuse the source of such goods. Hence, the
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`similarity of the marks analysis is a moot point. See In re HerbalScience Group,
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`LLC, 2010 WL 5651672 (T.T.A.B. 2010) (eschewing a similarity-of-the-marks
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`analysis because a consumer was unlikely to confuse the goods associated with two
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`different trademarks).
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`II. DISSIMILARITY AND NATURE OF THE GOODS
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`The DuPont factors as to the nature of the goods and the channels of trade
`
`involved in determining likelihood of confusion directs the Board's analysis to the
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`parties' goods and the relevant consuming public. There is probably no greater level
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`of care and scrutiny accorded to a purchase than that used when purchasing the goods
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`
`
`9
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`

`

`recited in Applicant's identification of goods. Applicant's consumers are
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`pharmacists, who are sophisticated individuals subject to a strict duty of care.
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`Registrant's goods, on the other hand, are essentially impulse purchases sold in
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`health food stores, herbal medicine websites, or specialty stores for herbs or
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`medicinal plants. Ordinary consumer purchasers of Registrant’s goods would never
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`encounter Applicant's goods, which may only be purchased behind a prescription
`
`counter.
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`The Examiner contends that the Applicant’s and Registrant’s goods are
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`closely related. More specifically, the Examiner states, “the [Registrant] use(s)
`
`broad wording to describe ‘medicines for human purposes’ which presumably
`
`encompasses all goods of the type described, including applicant’s more narrow
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`‘Generic prescription drugs, approved by the U.S. Food and Drug Administration . .
`
`. .” Applicant respectfully submits that the above statement is directly in contrast to
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`the situation as it exists and as discussed below.
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`But even if the goods produced by Applicant and Registrant were identical, a
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`pharmacist dispensing prescription pharmaceuticals is not likely to be confused
`
`about the source of goods because Applicant and Registrant have distinct names, and
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`this consumer will know that each comes from a different company. See, e.g., Ortho
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`Pharm. Corp. v. Am. Cyanamid Co., 361 F. Supp. 1032, 1043–44 (D.N.J. 1973) (“It
`
`is true, and I have so found . . . that the pharmacist or hospital technician who orders
`
`
`
`10
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`

`

`Rh0 (D) Immune Globulin (Human) is not likely to be confused as to the source of
`
`origin of the product by virtue of the similarity between the designations ‘RhoGAM’
`
`and ‘Rho-Immune’ in the sense that this consumer will know that each comes from
`
`a different pharmaceutical company.”).
`
`Distinct Goods and Trade Channels
`
`Contrary to the Trademark Examiner’s assertion, the fact that both marks
`
`relate to medicine does not establish a likelihood of confusion. See Astra Pharm.
`
`Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 790 (1st
`
`Cir. 1983) (“The most favorable inference that may be drawn from the evidence
`
`regarding the similarity of goods is that both parties' products are used in the medical
`
`or health care field. However, such a broad inference is not sufficient to demonstrate
`
`that a genuine issue exists concerning likelihood of confusion as to the source of the
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`products involved in the present suit.”); Edwards Lifesciences Corp. v. VigiLanz
`
`Corp., 94 USPQ2d 1399, 1410 (T.T.A.B. 2010) (“a finding that the goods are similar
`
`is not based on whether a general term or overarching relationship can be found to
`
`encompass them both.”).
`
`Applicant’s and Registrant’s goods are distinct and travel in separate trade
`
`channels. In Barre-Nat'l, Inc. v. Barr Lab'ys, Inc., 773 F. Supp. 735, 738 (D.N.J.
`
`1991), the District Court explained the distinct process by which generic
`
`pharmaceuticals are marketed and distributed. The Court explained that the ultimate
`
`
`
`11
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`

`

`consumers of a generic drug are not always aware of the drug manufacturer (here,
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`Alembic): “[g]eneric prescription drugs are generally dispensed by a pharmacist and
`
`presented to the patient in a container bearing only the pharmacist's label. Often, the
`
`manufacturer's label is actually covered up by the pharmacist's label. Thus, the
`
`ultimate consumer of the generic pharmaceutical ordinarily does not know the
`
`identity of the drug's manufacturer.” The Court also said that pharmacists do not
`
`usually choose which generic drug to dispense: “[p]harmacists typically stock only
`
`a single generic product corresponding to a particular brand-name drug because each
`
`generic pharmaceutical is chemically equivalent, according to government
`
`standards.” Most pharmacists are not even aware of the drug manufacturers: “[m]ost
`
`pharmacists order pharmaceuticals from drug wholesalers, rather than directly from
`
`the manufacturer. In placing these orders, the pharmacist is likely to use the
`
`wholesaler's catalogue number for the particular product. Chain drug stores are
`
`generally supplied by a central purchasing warehouse which selects the generic
`
`products.” Finally, the Court explained that the advertising and marketing for
`
`generic drug manufacturers is very different from branded drugs because the generic
`
`manufacturers “advertise primarily to drug wholesalers, chain drug stores and
`
`pharmacists, rather than physicians who may specify a prescription drug by the
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`manufacturer's brand name.”
`
`
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`12
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`

`

`Thus, the relevant consumers for Applicant’s products are drug wholesalers,
`
`retail chain drug stores, and pharmacists, whereas Registrant’s consumers are
`
`ordinary consumers. Applicant’s goods are only available behind a prescription
`
`counter where Registrant’s goods are not found. The Trademark Examiner cited
`
`numerous cases in which courts found a likelihood of confusion between two
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`branded pharmaceuticals. These cases are inapposite because of the distinct process
`
`of distributing and marketing generic drugs. See, e.g. Glenwood Laboratories, Inc.
`
`v. American Home Products, 455 F.2d 1384 (C.C.P.A. 1972) (concern that
`
`prescription drug MYOCHOLINE could be confused with prescription drug
`
`MYSOLINE); Alfacell Corp. v. Anticancer, Inc., 71 U.S.P.Q. 2d 1301 (TTAB 2004)
`
`(finding that two intravenous prescription cancer treatments—ONCONASE and
`
`ONCASE—could be confused); Blansett Pharmacal Co., Inc. v. Camrick
`
`Laboratories, Inc. 25 U.S.P.Q.2d. 1473 (TTAB 1992) (finding that the source of one
`
`nasal decongestant available both over-the-counter and by prescription (NOLEX)
`
`could be confused with another prescription pharmaceutical nasal decongestant
`
`(NALEX)). In contrast to a branded drug, neither a pharmacist, nor the ultimate
`
`consumer relies on the name of the drug manufacturer, e.g., Alembic, in making its
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`decision to purchase the generic drug products, nor are these parties even aware of
`
`the identity of the generic drug manufacturer. Accordingly, this process reduces the
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`likelihood of confusion for both consumers of Applicant’s and Registrant’s goods.
`
`
`
`13
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`

`

`Moreover, the Registrant’s so-called medicines are not generally accepted in
`
`the licensed medical community to treat diseases and conditions, for which the FDA
`
`has approved the Applicant’s drug for treatment. Hence, the Applicant’s
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`prescription pharmaceutical products are not “competitive” with the Registrant’s
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`herbal products that are not generally accepted in the licensed medical community
`
`“to diagnose, treat, cure or prevent any disease.” See, Steelcase Inc. v. Steelcare
`
`Inc., 219 U.S.P.Q. 433 (1983) (giving greater emphasis to the consideration of
`
`similarity of the goods and/or services, in part, because the applicant’s services were
`
`“clearly competitive with the sale of opposer's products”).
`
`Care and Sophistication of Purchasers
`
`Even if Applicant and Registrant sold identical goods,2 Applicant’s
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`consumers are still not likely to be confused about the source of the goods.
`
`Confusion is less likely where the purchasing class comprises sophisticated
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`purchasers. In Barre-Nat'l, Inc. v. Barr Lab'ys, Inc., 773 F. Supp. 735, 738 (D.N.J.
`
`1991), the U.S. District Court found that there was no likelihood confusion between
`
`two manufacturers of generic drugs with names “Barre” and “Barr,” respectively.
`
`The Court held that the two most critical factors to its conclusion that there was no
`
`likelihood of confusion were: “(1) the care and sophistication exercised by the
`
`
`2 This is a very significant assumption. It is extremely unlikely that Registrant
`could adjust its business model to get FDA approval for its “medicines.”
`
`
`
`14
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`

`professional purchasers of pharmaceuticals, and (2) the absence of actual confusion
`
`during at least 16 years of concurrent use of the two marks on nearly identical
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`products.” In that case, the Court found that the following factors weighed strongly
`
`against a finding of likelihood of confusion: (1)“[a]n evaluation of the price and type
`
`of goods, pharmaceuticals, suggests that persons involved in ordering drugs, such as
`
`drug wholesalers, chain drug stores and pharmacists, would employ exceptional care
`
`in purchasing a particular product,” (2) “[p]urchase of the incorrect product has
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`potentially disastrous consequences, (3) “[p]ersons ordering pharmaceuticals are not
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`only sophisticated consumers, familiar with pharmaceutical manufacturers, but have
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`an added duty by virtue of their occupation to use care when ordering
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`pharmaceuticals,” (4) “[t]hose who order pharmaceuticals, by necessity, are
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`experienced in distinguishing between the names of products which look and sound
`
`alike, and have long and complicated spellings,” and (5) “orders, especially those to
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`restock products, are often placed solely by the specific identification number for a
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`product, rather than the name of the manufacturer.” Similarly here, as in Barre-
`
`Nat'l, Inc., there is no likelihood of confusion between generic drugs manufactured
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`by “Alembic Pharmaceuticals” and drugs that may be manufactured with the
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`trademark “Alembic Herbals” for the above reasons.
`
`Other courts have reached similar conclusions. In Astra Pharmaceutical
`
`Products, Inc. v. Beckman Instruments, 718 F.2d 1201 (1st Cir.1983), the court
`
`
`
`15
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`

`

`found that the sophistication of the class of prospective purchasers (buyers of
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`pharmaceuticals and medical equipment) was the “most critical factor that weighed
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`against [the plaintiff]” in its trademark infringement claim. Id. at 1206. The court
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`ruled that it was “simply inconceivable that purchasers of the parties' products could
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`be confused as to the source of these products.” Id. at 1207.
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`The Refusal also asserts that there is “a stricter standard to determine the
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`likelihood of confusion for pharmaceuticals or medicinal products due to the
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`potential harm or serious consequences that could be caused if the public confused
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`one drug or medicinal product for another.” But, consumers of medical products
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`actually exercise additional care. Accordingly, the fact that the relevant goods are
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`medical products weighs in favor of finding no likelihood of confusion. See In Re
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`Essenlix Corp., 2018 WL 1603879, at *7 (Mar. 22, 2018) (finding no likelihood of
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`confusion because “purchasers of medical products and services exercise a
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`heightened degree of care because of the specific purpose of the products and
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`services, the medical nature of the products and services, and the duty of care the
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`purchasers have selecting and using the products and services”); Primrose Ret.
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`Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039
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`(T.T.A.B. 2016) (“on balance, given the nature of the services and the high cost
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`associated therewith [providing assisted living facilities], the conditions of sale favor
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`a finding of no likelihood of confusion.”).
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`16
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`There Is No Evidence of Actual Confusion Between Applicant’s and Registrant’s
`Products
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`Alembic’s parent has been in the pharmaceutical business for over 100 years.
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`Registrant’s trademark was filed in 2017. (Salmon Decl. ¶8 dated June 29, 2020).
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`In that overlapping time period, Alembic is not aware of a single instance of actual
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`confusion, or of any evidence to indicate that actual confusion has ever existed
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`between Alembic’s use of the mark “Alembic” and the mark “Alembic Herbals” or
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`any other mark incorporating the term Alembic. (Salmon Decl. ¶18 dated June 29,
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`2020). That there is no evidence of actual confusion despite the fact that Applicant
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`and Registrant have concurrently utilized their marks, demonstrates that there is a
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`minimal likelihood of confusion between the two marks. Central Soya Co., Inc. v.
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`N. Am. Plant Breeders, 212 USPQ 37, 48 (T.T.A.B. 1981) (“the absence of actual
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`confusion over a reasonable period of time might well suggest that the likelihood of
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`confusion is only a remote possibility with little probability of occurring.”).
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`In sum, consideration of the totality of the DuPont factors and the evidence in
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`the record and submitted herewith, establishes that the likelihood of confusion
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`between the Applicant’s mark and the Registrant’s mark is virtually non-existent.
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`17
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`

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`CONCLUSION
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`For all of the foregoing reasons, this Appeal should be granted.
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`MORRIS JAMES LLP
`
`/s/ Albert H. Manwaring, IV
`Albert H. Manwaring, IV (#4339)
`Kirsten A. Zeberkiewicz (#4573)
`Kuhu Parasrampuria (#6691)
`500 Delaware Avenue, Suite 1500
`Wilmington, DE 19801
`(302)888-6800
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`Attorneys for Alembic Pharmaceuticals, Inc.
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`12768968/1
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`18
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`

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`DECLARATION OF CRAIG SALMON
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`I, Craig Salmon, being duly sworn, declare as follows:
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`1.
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`I am over the age of 18 years, a resident of New Jersey, and I am
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`competent to testify about the matters contained in this Declaration.
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`2.
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`I have personal knowledge of the matter stated herein in my capacity as
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`the President of Alembic Pharmaceuticals, Inc. (“Alembic”). This Declaration is
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`submitted in connection with Alembic’s Request for Reconsideration of the United
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`States Patent and Trademark Office’s (“USPTO”) final refusals (the “Refusals”) with
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`respect to US Registration Nos. 88660548 and 88660605 (the “Applications”).
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`3.
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`Alembic sells generic FDA-approved prescription drugs manufactured
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`by its parent Alembic Pharmaceuticals, Ltd., an Indian company that is over 100 years
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`old.
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`4.
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`Alembic sells its FDA-approved generic prescription drugs to wholesale
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`drug companies, which, in turn sell Alembic’s generic prescription drugs to retailers.
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`Alembic also sells its generic prescription drugs directly to retailers.
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`5.
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`The retailers that receive Alembic’s generic prescription drugs, sell
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`Alembic’s products to consumers through licensed pharmacies and pharmacists. The
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`pharmacies that sell Alembic’s products do so by having licensed pharmacists fill
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`consumers’ prescriptions from licensed medical doctors.
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`1
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`

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`6.
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`The ultimate consumers of Alembic’s prescription pharmaceuticals
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`cannot purchase Alembic’s products directly over the counter of a brick and mortar
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`store, or directly from a virtual retailer that carries such products. These ultimate
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`consumers do not “choose” to specifically purchase Alembic’s generic prescription
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`pharmaceutical products. The ultimate consumers simply agree to have a prescription
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`filled with a generic product, and a licensed pharmacist at one of the retail pharmacies
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`that carries Alembic’s products fills the prescription with one of Alembic’s
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`prescription pharmaceuticals.
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`7.
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`Alembic markets its products almost exclusively to seven pharmaceutical
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`wholesalers and retailers—namely, AmerisourceBergen Corp., McKesson, Cardinal
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`Health, CVS, Rite Aid, Walgreens, and Walmart.
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`8.
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`Alembic’s parent has been in the business of manufacturing generic
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`prescription drugs since 1907.
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`9.
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`The reasoning for the Refusals was, in substantial part, due to what the
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`Examining Attorney deemed to be “likelihood of confusion” with the registered
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`trademark for Alembic Herbals (the “Registered Mark”).
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`10.
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`The Applications seek to register marks for “Alembic” and “Alembic
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`Pharmaceuticals.” In the Applications, as amended in connection with the Request for
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`Reconsideration submitted herewith, Alembic identifies its goods and/or services as
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`follows: International Class 5: generic prescription drugs, approved by the U.S. Food
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`2
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`

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`and Drug Administration, manufactured by Alembic Pharmaceuticals, Ltd., an Indian
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`company, namely, prescription drugs in the nature of pills, tablets, capsules, caplets,
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`liquid drops, sachets and pharmaceutical preparations prescribed by a licensed
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`medical doctor with the prescriptions filled by a retail pharmacy licensed to sell
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`prescription drugs.
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`11. The pharmaceutical industry is highly regulated. Prescription drugs must
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`be approved by the Food and Drug Administration (“FDA”) before they may be
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`marketed and sold in the United Stat