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`Hearing:
`October 24, 1995
`
`.
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`K?‘ 5 NOV 1998
`
`Paper No. 18
`PTH/SMD
`
`U.S. DEPARTMENT OF COMMERCE
`
`PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`Warner—Lambert Company
`v.
`
`Richwood Pharmaceutical Company,
`
`Inc.
`
`Opposition No. 91,722
`
`to application Serial No. 74/305,412
`
`filed on August 17, 1992
`
`Richard Lehv of Weiss Dawid Fross Zelnick & Lehrman PC for
`
`Warner—Lambert Company.
`
`Kurt A. Summe of Wood, Herron & Evans for Richwood
`
`Pharmaceutical Company,
`
`Inc.
`
`Before Rice, Hohein and Hairston, Administrative Trademark
`
`Judges.
`
`Opinion by Hairston, Administrative Trademark Judge:
`
`Richwood Pharmaceutical Company,
`
`Inc. seeks
`
`registration of the mark ACUPRIN in the form below,
`
`ACUPRIN
`
`

`
`Opposition No. 91722
`
`for "low dosage aspirin."1
`
`Registration has been opposed by Warner—Lambert Company
`
`on the ground that applicant's mark, when applied to its
`
`goods, so resembles opposer's previously used and registered
`
`mark ACCUPRIL for coronary preparations,2 as to be likely to
`
`cause confusion.
`
`Applicant,
`
`in its answer, denied the allegations in the
`
`notice of opposition.
`
`The record includes the pleadings;
`
`the file of the
`
`opposed application;
`
`the testimony deposition of opposer's
`
`witness, Michael Morales; and notices of reliance filed by
`
`both parties.
`
`The parties filed briefs on the case and were
`
`represented at the oral hearing.
`
`Michael Morales, a marketing director with opposer's
`
`Parke—Davis division, testified that its ACCUPRIL product
`
`was approved by the Food and Drug Administration in November
`
`1991 for the treatment of congestive heart failure, and
`
`introduced to physicians shortly thereafter.
`
`It was
`
`subsequently approved by the F.D.A. for the treatment of
`
`hypertension or high blood pressure.
`
`ACCUPRIL is known as
`
`an
`
`"ACE inhibitor."
`
`"ACE" stands for angiotensin converting
`
`enzyme.
`
`ACE inhibitors lower blood pressure by inhibiting
`
`the formation in the body of the vasoconstrictor called
`
`angiotensin.
`
`ACE inhibitors, such as ACCUPRIL, dilate or
`
`1App1ication Serial No. 74/305,412 filed on August 17, 1992, and
`alleging a bona fide intention to use the mark in commerce.
`2Registration No. 1,521,489 issued January 24, 1989; Sections 8 &
`15 affidavit filed.
`
`

`
`Opposition No. 91722
`
`relax blood vessels,
`
`thereby reducing blood pressure.
`
`Because congestive heart failure is partially due to
`
`vasoconstriction, ACE inhibitors are effective in
`
`controlling congestive heart failure as well as
`
`hypertension.
`
`The generic name for ACCUPRIL in Quinapril.
`
`Opposer's ACCUPRIL product is sold to drug wholesalers
`
`who in turn sell to retail pharmacies.
`
`ACCUPRIL is sold
`
`only by prescription, although Mr. Morales indicated that
`
`opposer plans "to take ACCUPRIL over—the—counter."
`
`(Deposition, p. 57).3 Opposer's ACCUPRIL is dispensed in
`
`tablet form and is available in 5, 10, 20 or 40 milligram
`
`size tablets. Because of size limitations, ACCUPRIL is not
`
`imprinted on the tablets, but appears on sample boxes,
`
`product
`
`information literature, and advertising.
`
`Opposer advertises ACCUPRIL in approximately thirty
`
`medical journals, and through sales representatives who call
`
`on physicians.
`
`In addition, opposer conducts educational
`
`programs for physicians at various locations throughout
`
`the
`
`United States. According to Mr. Morales, opposer plans to
`
`exhibit at shopping malls in connection with blood pressure
`
`testing.
`
`Mr. Morales testified that ACCUPRIL is the fifth (out
`
`of eight) most prescribed ACE inhibitors currently sold in
`
`3We should note that Mr. Morales was unable to provide any
`specific information about opposer's plans in this regard on
`cross—examination.
`
`

`
`Opposition No. 91722
`
`the United States, and that 3.2 million prescriptions were
`
`written for ACCUPRIL in 1993.
`
`Mr. Morales testified that the mistaken use of
`
`ACCUPRIL by a woman in the second or third trimester of
`
`pregnancy could result in injury, and possibly death to the
`
`fetus.
`
`The only information we have about applicant's ACUPRIN
`
`product comes from a patient information sheet. Applicant's
`
`product contains 81 mg of aspirin and is available over—the—
`
`counter at pharmacies.4
`
`There is no issue with respect to opposer's priority as
`
`regards its ACCUPRIL mark. Opposer submitted under notice
`
`of reliance a status and title copy of its pleaded
`
`registration.
`
`See King Candy Co. v. Eunice King's Kitchen,
`
`InC., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).5
`
`Thus,
`
`the sole issue in this case is likelihood of
`
`confusion. Turning first to the goods, it is not necessary
`
`
`
`4Although this is an intent—to—use application, it appears that
`applicant has begun use of the mark.
`In particular, we note the
`following statement on the patient information sheet for
`applicant's ACUPRIN product
`— "Richwood Pharmaceuticals has
`recently introduced an adult low—dose aspirin."
`5Applicant,
`in its brief on the case, argues that opposer did not
`establish use of the ACCUPRIL mark as of December 1991,
`the date
`of first use alleged in opposer's registration. However,
`in view
`of opposer's ownership of a valid and subsisting registration for
`the mark ACCUPRIL,
`the issue of priority of use does not arise.
`Moreover, opposer's registration is prima facie evidence of
`opposers's continuous use of its mark for the goods specified in
`the application since April 4, 1988,
`the filing date of opposer's
`application.
`To the extent that applicant is seeking to assert
`priority, it cannot do so in the absence of a counterclaim.
`
`

`
`Opposition No. .722
`
`.
`
`that the goods be identical or competitive to support a
`
`likelihood of confusion.
`
`It is sufficient that the
`
`respective goods are related in some manner, and/or that the
`
`conditions surrounding the marketing of the goods are such
`
`that they would be encountered by the same persons under
`
`circumstances that could, because of the similarities of the
`
`marks used therewith, give rise to the mistaken belief that
`
`they originate from or are in some way associated with the
`
`same producer.
`
`See Hercules Inc. v. National Starch and
`
`Chemical Corp., 223 USPQ 1244, 1247 (TTAB 1984).
`
`In the
`
`present case, we find that the goods are sufficiently
`related that, when sold under identical or substantially
`
`similar marks, confusion in the marketplace is likely.
`
`Opposer's ACCUPRIL is a coronary medication for the
`
`treatment of hypertension (high blood pressure) and
`
`congestive heart failure. Applicant's ACUPRIN is a low dose
`
`aspirin.
`
`The patient information sheet accompanying
`
`applicant's product contains the following
`
`statement :
`
`Recent studies have indicated that the
`
`incidence of Myocardial Infarction (heart
`attack), Stroke and Colon Cancer may be
`reduced by daily administration of aspirin.
`For this reason, your physician may
`recommend you regularly take aspirin. Once
`a day aspirin therapy should not be initiated
`without a doctors recommendation. Only
`
`|
`
`your physician knows if once a day low
`dose aspirin therapy is appropriate for you.
`
`

`
`Opposition No. 91722
`
`Thus, applicant's ACUPRIN aspirin product may be used
`
`by persons with cardiovascular conditions as part of a
`
`program to prevent heart attack and stroke.5
`
`We note that
`
`neither applicant's nor registrant's identification of goods
`
`is restricted.
`
`Thus, we may assume that both parties‘ goods
`
`may be dispensed either by prescription or over—the—counter
`
`in the same channels of trade, i.e., retail pharmacies,
`
`to
`
`the same classes of customers,
`
`including consumers.
`
`Although some consumers may be knowlegeable about drugs and
`
`trademarks, many are not. Also, we can take judicial notice
`
`that prescription drugs and non—prescription drugs are
`
`prescribed by physicians and dispensed by pharmacists and
`
`that such persons are not prone to carelessness in handling
`
`prescriptions. Nonetheless, we believe that confusion and
`
`mistake are likely, even by such professionals, where these
`
`related goods are marketed under identical or substantially
`
`similar marks.
`
`See Blansett Pharmacal Co.
`
`Inc. v. Camrick
`
`Laboratories Inc., 25 USPQ2d 1474 (TTAB 1992), and In re
`
`Merck & CO.,
`
`InC., 189 USPQ 355 (TTAB 1975).
`
`Turning then to the parties‘ marks, applicant
`
`maintains that opposer's ACCUPRIL mark is weak and entitled
`
`to a limited scope of protection because "ACCU" and "PRIL"
`
`are suggestive; and that ACCUPRIL and ACUPRIN are
`
`distinguishable because consumers will recognize that the
`
`
`
`5Applicant acknowledges in its brief that aspirin is a widely
`known treatment to prevent heart attack and stroke.
`
`

`
`Opposition No. 91722
`
`suffix "RIN"
`
`in applicant's mark denotes an aspirin product.
`
`Applicant has submitted copies of third—party registrations
`
`of marks beginning with "ACCU"
`
`(or "ACU")
`
`for medical
`
`products and marks ending with "RIN" for aspirin products.
`
`Notwithstanding any alleged weakness in opposer's
`
`ACCUPRIL mark,
`
`in this case, we find that ACCUPRIL and
`
`ACUPRIN are substantially similar in sound, appearance, and
`
`commercial
`
`impression. Both marks begin with virtually
`
`identical prefixes——"ACCU" and "ACU", and the only
`
`difference in the suffixes is the last letter——an "L"
`
`in
`
`opposer's mark and a "N"
`
`in applicant's mark. While medical
`
`professionals, and possibly some consumers, may be aware of
`
`the significance of "RIN"
`
`in applicant's mark, we do not
`
`believe that this distinguishes the marks so as to avoid a
`
`likelihood of confusion. Moreover, it has long been held
`
`that a stricter or higher standard of likelihood of
`
`confusion should be applied in those cases where the
`
`confusion of pharmaceutical products could have possible
`
`consequences for the patient.
`
`See Ethicon,
`
`Inc. v. American
`
`Cyanamid Co., 192 USPQ 647 (TTAB 1976) and cases cited
`
`therein.
`
`In this regard, we note that the record herein
`
`clearly shows that the mistaken use of ACCUPRIL by a
`
`pregnant woman could result in injury or death to the fetus.
`
`

`
`Opposition No. 91722
`
`The product label for ACCUPRIL contains the following
`
`warning:
`
`When used in pregnancy during the second
`and third trimesters, ACE inhibitors can
`
`cause injury and even death to the
`
`developing fetus.
`
`Therefore, it is especially important here to avoid a
`
`likelihood of confusion.
`
`Finally, we note applicant's mention of the absence of
`
`any instances of actual confusion. While it appears that
`
`applicant has begun use of the ACUPRIN mark,
`
`there is
`
`nothing in this record regarding the extent of use (e.g.
`
`sales and/or advertising figures, geographic area) of the
`
`mark.
`
`Thus, we do not know whether there has been any
`
`meaningful opportunity for confusion to occur.
`
`In any
`
`event, proof of actual confusion is not required.
`
`See
`
`Blansett Pharmacal Co. Inc., supra.
`
`For the above reasons, we find that applicant's use of
`
`ACUPRIN on low dosage aspirin is likely to cause confusion
`
`with opposer's previously used and registered mark ACCUPRIL
`
`for coronary medications.
`
`

`
`Opposition No. 91722
`
`Decision:
`
`The opposition is sustained and registration
`
`to applicant is refused.
`
`P. T. Hairston
`
`Administrative Trademark
`
`Judges, Trademark Trial
`
`and Appeal Board
`
`M'5"NOV W«*

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