Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1122771
`
`Filing date:
`
`03/25/2021
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`88660605
`
`Alembic Pharmaceuticals, Inc.
`
`Applied for Mark
`
`ALEMBIC PHARMACEUTICALS
`
`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
`Secondary Email(s): kzeberkiewicz@morrisjames.com
`302-888-6868
`
`Appeal Brief
`
`Alembic - Appeal for PHARMACEUTICALS.pdf(225679 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, antiepileptic, anti-infection, anti-inflammatory and antipruritic
`agents, 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 ocularpain, relief of cough, relief of the inflammatory and pruritic manifesta-
`tions, rhumatoid arthritis, seizure, panic disorder, sleep disorder, transfusional
`ironoverload, and treatment of moderate to severe scalp psoriasis; prescribed by
`a licensed 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
`
`/s/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.: 88660605
`Filed: October 18, 2019
`Trademark: ALEMBIC
`PHARMACEUTICALS
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`
`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 6, 2021, rejecting U.S. Application Serial No. 88660605 for
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`"ALEMBIC PHARMACEUTICALS" (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
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`Section 2(d), 15 U.S.C. §1052(d), with the mark in U.S. Registration No. 5683081
`
`for ALEMBIC HERBALS (the “Registered Mark”) held by Purapharm International
`
`(H.K.) Limited (the “Registrant”) and because of an improper specimen.1 Because
`
`
`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.
`
`
`
`

`

`there is no likelihood of confusion between the Registered Mark and Alembic’s
`
`applied-for mark, and because the specimen submitted complied with the Trademark
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`Examiner’s guidance to submit a photograph of a prescription bottle bearing the
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`Applicant’s mark that contained its generic prescription drugs, this Appeal should
`
`be granted.
`
`STATEMENT OF FACTS
`
`Applicant’s mark is classified as follows:
`
`International Class 5: 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,
`B,
`hypoparathyroidism,
`influenza
`A
`and
`Parkinson’s
`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:
`
`International Class 5: medicines for human purposes for strengthening
`the immune system and restoring normal human bodily functions, the
`
`
`
`2
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`

`

`treatment, mitigation and prevention of diseases and disorders, namely,
`digestive diseases and disorders, central nervous system diseases and
`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,
`
`the trademark examining attorney (the “Examining Attorney”) refused registration
`
`of the Applicant’s mark. On March 27, 2020, Alembic amended its Application and
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`presented argument in support of registration of its applied-for mark. On April 21,
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`2020, a Final Office Action refusing registration of Applicant’s applied-for mark
`
`was entered by the USPTO.
`
`Applicant filed a request for reconsideration seeking registration in Class 5
`
`and deleting its request for registration for Class 35 on July 1, 2020. Applicant
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`simultaneously appealed the refusal to register the mark. On the same day, Applicant
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`also submitted its specimen: a photograph of a prescription bottle bearing its mark
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`that contained generic prescription drugs manufactured by Alembic that had been
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`used in commerce. Then, on December 1, 2020, Applicant amended its
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`
`
`3
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`

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`identification of goods for Class 5 and submitted an additional specimen. The
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`USPTO issued a Final Office Action on January 6, 2021 rejecting the request for
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`consideration (the “Refusal”). The Refusal was based on three grounds—(1) Section
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`2(d) “likelihood of confusion” between the Applicant’s mark and the Registrant’s
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`mark; (2) improper specimen; and (3) identification of goods and/or services.
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`Finally, the USPTO resumed the appeal on January 26, 2021.
`
`STATEMENT OF THE ISSUES
`
`Whether the Refusal is correct in alleging that a likelihood of confusion
`
`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.
`
`Whether the Refusal is correct in finding that Applicant submitted an
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`improper specimen.
`
`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 PHARMACEUTICALS based on the Registrant's
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`ALEMBIC HERBALS mark is not well founded. Section 2(d) of the Trademark
`
`Act is intended to provide protection from confusion on the consumer level. The
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`goal of the Act, as stated by the U.S Court of Custom and Patent Appeals is “the
`
`
`
`4
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`

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`protection of trademarks, securing to the owner the goodwill of his business and
`
`protecting the public against spurious and falsely marked goods.” Dupont de
`
`Nemours & Co., 177 U.S.P.Q. at 563. In this case, granting Applicant's registration
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`will neither infringe upon any goodwill of the Registrant, nor harm the purchasing
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`public.
`
`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
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`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,
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`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 newcomer's products or services
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`with the source of another existing prior mark. Solton, Inc. v. Cornwall, Corp., 477
`
`
`
`5
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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.
`
`In
`
`this
`
`instance, confusion between Applicant's mark ALEMBIC
`
`PHARMACEUTICALS and the Registrant's mark ALEMBIC HERBALS is not
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`likely. No appreciable number of ordinarily prudent purchasers would confuse the
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`source of the goods and no disruption of legitimate present-day practice would ensue
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`with the registration of the 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
`
`Applicant respectfully disagrees with the Examining Attorney's contention
`
`that the Applicant's mark ALEMBIC PHARMACEUTICALS and the Registrant's
`
`
`
`6
`
`

`

`ALEMBIC HERBALS mark would be likely to cause confusion due to their
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`similar appearance coupled with the Examiner’s presumption that the terms
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`“PHARMACEUTICALS” and “HERBALS” play a very small role in indicating
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`the source of the mark. This belief is articulated in the Refusal, in which the
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`Examining Attorney states, “the average purchaser, who retains a general rather
`
`than specific impression of trademarks, is likely to assume a connection between
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`the parties because the marks share the identical wording ‘ALEMBIC’ and identify
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`legally identical and closely related goods and/or services.”
`
`In refusing Applicant's mark with this interpretation of
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`“PHARMACEUTICALS,” the Examining Attorney has neglected to consider the
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`mark in its entirety. The Examining Attorney's assertion that the 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 Applicant's mark in its entirety. By not
`
`considering the mark as a whole, the Examining Attorney has violated the anti-
`
`dissection rule, that the fact-finder may not dissect the mark into smaller parts and
`
`focus on those parts in order to search for or substantiate differences in the marks.
`
`1 McCarthy Trademarks and Unfair Competition, §11:26 (4th Ed. 1977); Estate of
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`P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 545-46 (1920)
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`(“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
`
`
`
`7
`
`

`

`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 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 the Trademark
`
`Trial and Appeal Board’s (T.T.A.B.) undue emphasis on a single, prominent
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`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 PHARMACEUTICALS was not considered by
`
`the Examining Attorney in its 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 “Pharmaceuticals” in the applied-for mark gives the mark a
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`different commercial impression than the “Alembic Herbals” trademark. Additions
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`or deletions to marks may be sufficient to avoid a likelihood of confusion if the
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`marks in their entireties convey significantly different commercial impressions. See,
`
`
`
`8
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`

`

`e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245 (Fed. Cir. 2004)
`
`(reversing T.T.A.B.’s holding that contemporaneous use of THE RITZ KIDS for
`
`clothing items (including gloves) and RITZ for various kitchen textiles (including
`
`barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS
`
`creates a different commercial impression). Here, “Alembic Herbals” gives an
`
`impression of herbs or medicinal plants and Chinese traditional medicine, whereas
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`in contrast, “Alembic Pharmaceuticals” gives an impression of prescription drugs
`
`manufactured by pharmaceutical companies and approved by the U.S. Food and
`
`Drug Administration. Thus, the Examining Attorney has not viewed the marks in
`
`their entirety, but is instead dissecting Applicant's mark into two portions solely for
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`the ease of comparison and refusal. Accordingly, the Examining Attorney has done
`
`what the anti-dissection rule prohibits - ignoring Applicant's mark, ALEMBIC
`
`PHARMACEUTICALS, as a whole.
`
`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,
`
`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
`
`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
`
`
`
`9
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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
`
`analysis because a consumer was unlikely to confuse the goods associated with two
`
`different trademarks).
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`II. DISSIMILARITY AND NATURE OF THE GOODS
`
`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
`
`of care and scrutiny accorded to a purchase than that used when purchasing the goods
`
`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.
`
`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
`
`encounter Applicant's goods, which may only be purchased behind a prescription
`
`counter.
`
`The Examiner contends that the Applicant’s and Registrant’s goods are
`
`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
`
`
`
`10
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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 the companies have distinct names, and this
`
`consumer will know that each comes from a different company. See, e.g., Ortho
`
`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
`
`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
`
`
`
`11
`
`

`

`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
`
`consumers of a generic drug are not always aware of the drug manufacturer (here,
`
`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
`
`
`
`12
`
`

`

`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
`
`manufacturer's brand name.”
`
`Thus, the relevant consumers for Applicant’s products are drug wholesalers,
`
`retailer 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
`
`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
`
`
`
`13
`
`

`

`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
`
`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
`
`likelihood of confusion for both consumers of Applicant’s and Registrant’s goods.
`
`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 drugs for treatment. Hence, the Applicant’s
`
`prescription pharmaceutical products are not “competitive” with the Registrant’s
`
`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”).
`
`
`
`
`
`
`
`
`
`14
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`

`

`Care and Sophistication of Purchasers
`
`Even if Applicant and Registrant sold identical goods,2 Applicant’s
`
`consumers are still not likely to be confused about the source of the goods.
`
`Confusion is less likely where the purchasing class comprises sophisticated
`
`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
`
`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
`
`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
`
`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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`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.”
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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
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`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-
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`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.
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`Other courts have reached similar conclusions. In Astra Pharmaceutical
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`Products, Inc. v. Beckman Instruments, 718 F.2d 1201 (1st Cir.1983), the court
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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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`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 Pharmaceuticals” and the mark
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`“Alembic Herbals” or any other mark incorporating the term Alembic. (Salmon
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`Decl. ¶18 dated June 29, 2020). That there is no evidence of actual confusion despite
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`the fact that Applicant and Registrant have concurrently utilized their marks,
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`demonstrates that there is a minimal likelihood of confusion between the two marks.
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`Central Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ 37, 48 (T.T.A.B. 1981)
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`(“the absence of actual confusion over a reasonable period of time might well
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`suggest that the likelihood of confusion is only a remote possibility with little
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`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 records 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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`III. PROPER SPECIMEN
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`The Trademark Examiner rejected the Applicant’s mark “because the
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`specimen appears to be mere advertising and does not properly show the applied-for
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`mark as actually used in commerce in International Class(es) 5.” The Trademark
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`Examiner stated that an example of a proper specimen was “a photograph of (1) the
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`actual goods bearing the mark; (2) an actual container, packaging, tag or label for
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`the goods bearing the mark.” However, in compliance with the Trade Examiner’s
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`statement, Applicant had submitted a photograph of a prescription bottle bearing the
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`Applicant’s mark that contained its generic prescription drugs, and verifying that the
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`mark had been used in commerce at least as early as the filing date of the application
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`or prior to the filing of the amendment to allege use. (Salmon Decl. ¶19 dated June
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`29, 2020). Therefore, the Board should reverse the Trademark Examiner’s rejection
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`of the mark because of a purported improper specimen.
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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
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`/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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`12768827/1
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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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`6.
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`The ultimate