Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA199868
`ESTTA Tracking number:
`03/21/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91121040
`Defendant
`OSHO INTERNATIONAL FOUNDATION
`MARY M. LURIA
`DAVIS & GILBERT LLP
`1740 BROADWAY
`NEW YORK, NY 10019
`UNITED STATES
`Other Motions/Papers
`Sara Edelman
`sedelman@dglaw.com
`/sedelman/
`03/21/2008
`AppBOC.PDF ( 113 pages )(9549648 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`........................................................... --X
`
`OSHO FRIENDS INTERNATIONAL,
`
`Opposer/Petitioner,
`
`v.
`
`:
`:
`'
`:
`:
`'
`
`Opposition No. 91 121040
`Opposition No. 91 150372
`Opposition No. 91150379
`Opposition No. 91152313
`Opposition No. 91153103
`Opposition No. 91 155927
`Opposition No. 91 157465
`Opposition No. 91 157610
`Opposition No. 91 157698
`Cancellation No. 92031932
`
`OSHO INTERNATIONAL FOUNDATION,
`
`(as consolidated)
`
`Applicant/Respondent.
`
`____________________________________________________________-X'
`
`UNREPORTED CASES CITED IN
`
`TRIAL BRIEF OF APPLICANT/RESPONDENT
`
`

`
`Page 1
`
`LEXSEE 2004 TTAB LEXIS 121
`
`American Pharmaceutical Association v. American Association of Pharmaceutical Scien-
`tists
`
`Opposition No. 91115985 to Application No. 75569580 filed on October 12, 1998
`
`Trademark Trial and Appeal Board
`
`2004 TTAB LEXIS 121
`
`August 14, 2003, Oral Hearing
`
`March 10, 2004, Decided
`
`DISPOSITION:
`
`[*1]
`
`Decision: The opposition is sustained.
`
`COUNSEL:
`
`Michael H. McConihe and A. Statton Hammock, Jr. of O'Brien, Butler, McConihe & Schaefer and Laurence R.
`Hefier, Linda K. McLeod and Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner for American
`Pharmaceutical Association.
`
`Alan S. Cooper, Nancy S. Lapidus and Caroline C. Smith of Shaw Pittman for American Association of Pharma-
`ceutical Scientists.
`
`JUDGES:
`
`Before Cissel, Walters and Holtzman, Administrative Trademark Judges
`
`OPINION BY: WALTERS
`
`OPINION:
`
`THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE TTAB
`
`Opinion by Walters, Administrative Trademark Judge:
`
`American Pharmaceutical Association filed its opposition to the application of American Association of Pharma-
`ceutical Scientists to register the mark AAPS PHARMSCI for "computer services, namely, providing an on-line journal
`of interest to researchers in the pharmaceutical and drug field" in International Class 42. n1
`
`n1 Application Serial No. 75569580, filed October 12, 1998, based upon an allegation of a bona fide inten-
`tion to use the mark in commerce in connection with the identified services.
`
`As grounds for opposition, opposer asserts that applicant's [*2] mark, when applied to applicant's services, so re-
`sembles opposer's previously used marks JOURNAL OF PHARMACEUTICAL SCIENCES and J. PHARM SCI for its
`"peer-reviewed periodical in the field of pharmaceutical sciences" as to be likely to cause confusion, under Section 2(d)
`of the Trademark Act, 15 U.S.C. § 1052(aD.
`
`Applicant, in its answer, denied the salient allegations of the claim.
`
`Preliminary/Procedural Matters
`
`

`
`2004 TTAB LEXIS 121, *
`
`Page 2
`
`1. Grounds of Opposition.
`
`In addition to likelihood of confusion, opposer asserted in its notice of opposition that applicant's mark falsely sug-
`gests a connection with opposer, under Section 2(a) of the Trademark Act, 15 US. C. § 1052(a); that "through extensive
`use of J. PHARM SCI in the pharmaceutical field, [opposer's] J. PHARM SCI mark has become distinctive and famous"
`and that applicant's mark will dilute the distinctive quality of such mark, under Section 43(c) of the Trademark Act, 15
`US. C. § 1 I25(c); and that applicant made false and fraudulent statements in the declaration to its trademark application
`opposed herein because it had knowledge that the public used J. PHARM SCI to [*3]
`identify opposer and its journal.
`In its answer, applicant denied the salient allegations of these claims.
`
`However, in its brief (p. 12, footnote 8), opposer stated that it will proceed only on its claim of likelihood of confu-
`sion under Section 2(d) of the Act. Therefore, we consider these claims to have been expressly stricken and we have not
`considered them. We note, further, that only the issue of likelihood of confusion was tried by the parties.
`
`2. 0pp0ser’s Motion for Leave to File a Substitute Reply Brief
`
`Trademark Rule 2.128(b), 37 CFR 2.128(b), states that "a reply brief shall not exceed tvventy-five pages in its en-
`tirety." However, opposer's reply brief, including the table of contents and index of cases, is more than twenty-five
`pages. Opposer was advised by the Board at the oral hearing, on August 14, 2003, that its reply brief exceeded the page
`limit and that the Board may decide, at its discretion, not to consider opposer's reply brief.
`
`On August 25, 2003, opposer filed its motion for leave to file a substitute reply brief. Opposer stated that it had in-
`advertently printed its originally-submitted reply brief in 13-point type rather that [*4] 12-point type; and that the sub-
`stitute brief is identical to the originally-submitted brief except that it is 12-point type and it omits the table of contents,
`thus bringing it within the twenty-five-page limit. Opposer contends that consideration of its substitute reply brief will
`not prejudice applicant, who had received the substance of the brief in its original form and had not objected thereto;
`and that it would aid the Board in determining the case on the merits.
`
`Applicant opposed the motion, contending that the table of contents is a required portion of the reply brief; that op-
`poser's motion is untimely because leave to file a brief that exceeds the page limit must be filed on or before the due
`date for the brief; that the Board is prejudiced by acceptance of a substitute brief because the Board did not have an op-
`portunity to question opposer at the oral hearing on assertions made in the substitute reply brief, or obtain applicant's
`position on such assertions; and that opposer had an opporttmity to summarize the arguments in its reply brief at the oral
`hearing and, thus, submission of a written brief is unnecessary.
`
`While we hold parties responsible for ensuring that the [*5] papers submitted in a proceeding are in proper form
`and we do not condone opposer's apparent oversight in submitting a brief that exceeded the maximum page limit, we
`have exercised our discretion in favor of considering opposer's substitute reply brief in this case. Except for the deletion
`of the table of contents, the substitute brief is purportedly identical in substance to the originally submitted brief, and
`applicant does not contend otherwise. Contrary to applicant's contention, the table of contents is not a required element,
`although it is a strongly recommended portion of a brief because it enables the Board to locate easily particular portions
`of the party's argument and it concisely outlines the briefs contents. However, we fmd that neither the Board nor appli-
`cant is prejudiced by our consideration of the substitute brief and, further, it has assisted our determination of the merits
`of this case.
`
`3. Applicant's Motion to Amend Application to Disclaim the Exclusive Right to Use ”PHARMSCI. ”
`
`On November 16, 2001, the last day of its testimony period, applicant filed a motion to amend its application herein
`to add a disclaimer of the term PHARMSCI. The motion has been [*6] contested by opposer. The motion was deferred
`until final decision; thus, we now consider applicant's motion.
`
`Applicant contends that an accepted international standard exists for abbreviations of the titles of scientific journal
`names, exerpts of which are in the record; that this standard identifies the accepted abbreviation of "Pharmaceutical
`Sciences" in scientific journal titles as "Pharm. Sci."; that, therefore, the term PHARMSCI in applicant's mark is merely
`descriptive of the subject matter of applicant's publication and a disclaimer thereof is "appropriate and warranted." (Mo-
`tion, p. 2.) n2
`
`

`
`2004 TTAB LEXIS 121, *
`
`Page 3
`
`n2 Although there is no provision in the rules for submitting reply briefs on motions, the Board has consid-
`ered applicant's reply brief in this instance because it has been of assistance in deciding the merits of applicant's
`motion.
`
`Opposer objects to entry of a disclaimer and contends that the fact that two publications may identify "Pharm" and
`"Sci" as abbreviations for the respective terms "pharmaceutical" and "sciences" does not necessarily lead to the conclu-
`sion that the unitary term PHARMSCI is merely descriptive in connection with the goods and services involved herein;
`that [*7] "there is no evidence that the combination of these abbreviations of descriptive terms results in a descriptive
`composite" (Response, p. 3); and that "the term PHARMSCI points uniquely to opposer's well-known mark J. PHARM.
`SCI." (Response, p. 3-4.)
`
`Trademark Rule 2.133(a) provides "an application involved in a proceeding may not be amended in substance
`except with the consent of the other party or parties and the approval of the [Board], or except upon motion." Ordinarily
`this motion should be made before trial and when such a motion is not made prior to trial, as in this case, the Board will
`normally deny the motion if granting it would affect the issues involved in the proceeding. See Trademark Trial and
`Appeal Board Manual ofProcedure (2nd ed. June 2003), § 514.03 and cases cited therein.
`
`We deny applicant's motion to add to its application a disclaimer of PHARMSCI. While the issue of the distinct-
`iveness of opposer's mark J. PHARM SCI is an issue that was tried by the parties, the specific issue of whether dis-
`claimer of the combined phrase PHARMSCI in applicant's mark is permissible and whether it obviates likelihood of
`confusion was not tried by express or implied [*8] consent of the parties. To avoid any appearance that entry of the
`disclaimer could affect the substantive issues herein, we find this unconsented motion to be improper at this time.
`
`However, had we permitted applicant's voluntary entry of a disclaimer of exclusive rights in PHARMSCI, under
`Section 6 of the Trademark Act, 15 US. C. 1056, our analysis and conclusion in this case would remain the same. The
`following words of Judge Nies in the case of In re National Data Corp., 753 F.2d 1056, 1059 (Fed. Cir. 1985), 224
`US. P. Q. 749 (Court affirrned Board finding that CASH MANAGEMENT EXCHANGE, with voluntarily entered dis-
`claimer of CASH MANAGEMENT, confusingly similar to CASH MANAGEMENT ACCOUNT, both for financial
`services) are equally applicable in the case before this Board:
`
`The technicality of a disclaimer in National's application to register its mark has no legal effect on the is-
`sue of likelihood of confusion. The public is unaware of what words have been disclaimed during prose-
`cution of the trademark application at the PTO. It appears that National voluntarily disclaimed these
`words, as a tactical strategy, believing it would assist in [*9] avoiding a holding of likelihood of confu-
`sion with the cited mark. However, such action carmot affect the scope of protection to which another ’s
`mark is entitled. -(Footnotes omitted.)
`
`In conclusion on this issue, applicant's motion to amend its application to add a disclaimer of PHARMSCI is denied.
`
`4. Applicant's Motion to Amend the Pleadings to Conform to the Evidence and to Assert the Defense ofAcquies-
`cence.
`
`On November 16, 2001, the last day of its testimony period, applicant filed a motion to amend its answer to include
`a defense of acquiescence, citing Fed. R. Civ. P. Rule 15(1)). The motion has been contested by opposer. The motion
`was deferred until final decision; thus, we now consider applicant's motion.
`
`Applicant contends that on June 28, 2001, opposer and applicant entered into an agreement whereby applicant will
`post on its Internet website the table of contents and article abstracts of opposer's publication J. PHARM SCI; that ap-
`plicant will provide to subscribers hyperlinks directly to articles in opposer's J. PHARM SCI; that opposer agreed that
`applicant's website shall include images of the print version [*10] cover and contents pages of opposer's J. PHARM
`SCI; that opposer was aware at the time of the agreement that applicant's mark AAPS PHARMSCI is featured on appli-
`cant's website; that "by the affirmative act of entering in the agreement, opposer acquiesced in applicant's use of the
`mark AAPS PHARMSCI and thus is estopped from contesting applicant's right to register this mark" (Motion, p. 2);
`and that the issue relative to the agreement was raised during trial.
`
`In opposing the motion, opposer contends that it will incur substantial prejudice if applicant is permitted to add this
`defense at this stage of the proceeding, five months after the agreement was concluded and three weeks after the close
`of both parties‘ testimony periods; that the defense is meritless because the June 28, 2001 agreement contains no refer-
`
`

`
`2004 TTAB LEXIS 121, *
`
`Page 4
`
`ence to applicant's online journal or to this opposition proceeding; that the evidence establishes that opposer gave no
`assurances, either express or implied, that it would not assert its trademark rights against applicant; and that the parties
`had agreed to separate the issues involved herein from the issues addressed in the agreement.
`
`Rule 15(b) Fed. R. Civ. P. [*1 1] provides as follows:
`
`(b) Amendments to Conform to the Evidence.
`When issues not raised by the pleadings are tried by express or implied consent of the parties, they shall
`be treated in all respects as if they had been raised in the pleadings. Such amendment of the pleadings as
`may be necessary to cause them to conform to the evidence and to raise these issues may be made upon
`motion of any party at any time, even after judgment; but failure to so amend does not affect the result of
`the trial of these issues. If evidence is objected to at trial on the ground that it is not within the issues
`made by the pleadings, the court may allow the pleadings to be amended and shall do so freely when the
`presentation of the merits of the action will be subserved thereby and the objecting party fails to satisfy
`the court that the admission of such evidence would prejudice the party in maintaining the party's action
`or defense upon the merits. The court may grant a continuance to enable the objecting party to meet such
`evidence.
`
`As the basis for its motion, applicant submitted a copy of the June 28, 2001 agreement between the parties. Also in
`support of its motion, applicant submitted [*l2] a printout alleged to be from applicant's website, e-mail correspon-
`dence, and excerpts from the trial testimony of Dr. Gans and Mr. Cox.
`
`The agreement which forms the basis of applicant's proposed defense provides, ir1 pertinent part, that "AphA [op-
`poser] will provide the tables of contents and abstracts for all issues of the Journal [of Pharmaceutical Sciences]
`to
`AAPS [applicant] for posting on the AAPS website Pharmaceutica web portal" (Agreement, p. 1, para. 1); and that
`"AphA will provide an Internet hyperlink between each table of contents entry and each abstract posted on the AAPS
`Pharmaceutica that will take the user directly to that portion of a website
`that contains the referenced articles in the
`Journal.
`These hyperlinks will be so arranged on the AAPS Pharmaceutica that the full text of the Journal articles
`may only be accessed by those who hold individual subscriptions to the Journal..." (Agreement, p. 1, para. 2).
`
`Dr. John A. Gans, opposer's executive vice president and CEO, testified during opposer's main trial period that he
`was familiar with the June 28, 2001 agreement between the parties herein. When asked if the issue of applicant's use of
`PHARMSCI [*l3] came up during discussions leading up to the June 28, 2001 agreement, Dr. Gans stated the follow-
`ing:
`
`Answer - Yes. When we originally started to sort out, map out what kind of relationship we wanted to
`have, I tried again to resolve this issue of the name and put it as one of the criteria. And they didn't want
`to deal with it so they took it off the negotiation table. Which is another mistake because it could have
`been dealt with then.
`
`Question - More particularly, what did they say?
`Answer - We will deal with this later.
`
`During cross examination, Dr. Gans was questioned, under opposer's counsel's objection based on relevance, about the
`substance of the June 28, 2001 agreement.
`
`John B. Cox, applicant's executive director, testified during applicant's trial period that discussions leading up to the
`June 28, 2001 agreement began in approximately June, 2000. He also confirmed that the agreement between the parties
`had, in fact, been implemented, stating that abstracts fiom opposer's journal were appearing on applicant's website. On
`cross examination, Mr. Cox gave the following answers to the questions shown:
`
`Question — So you and the president of AAPS [* 14] had discussions regarding this proceeding at the
`same time you were discussing this agreement...?
`A
`Answer - Actually, not at the same time. My understanding is that he spoke to Dr. Gans and said why not
`take this off the table. We'll never get to an agreement on the important thing, the important thing being a
`linking agreement. So siderail it, sidebar it, and that's where we proceeded from.
`Question - Siderail it or sidebar it, what did you take that to mean?
`Answer - That it would be addressed at a later time.
`
`

`
`2004 TTAB LEXIS 121, *
`
`Page 5
`
`After a review of the record we conclude that there clearly was no express consent by opposer to applicant's asser-
`tion of the defense of acquiescence. To find that there was implied consent to trial of this previously unasserted defense,
`we would have to find that opposer raised no objection to the introduction of evidence on the issue, and that opposer
`was fairly apprised that the evidence was being offered in support of the issue. See Colony Foods, Inc. v. Sagemark,
`Ltd., 735 F.2d 1336, 222 USPQ 185 (Fed. Cir. 1984); and P.A.B. Produits et Appareils de Beaute v. Satinine Societa In
`Nome Collecttivo di S.A. e. M Usellini, 570 F.2d 328, 196 USPQ 801 (CCPA I978). [*l5]
`
`Applicant's questioning of Dr. Gans and Mr. Cox about the terms of, and negotiations leading up to, the June 28,
`2001 agreement gives no indication, expressly or implicitly, that applicant was pursuing this line of questioning in con-
`templation of asserting a defense of acquiescence. Further, opposer's counsel objected to the relevance of applicant's
`line of questioning. Neither the evidence submitted with applicant's motion nor any other evidence in the record war-
`rants a conclusion that the defense of acquiescence was tried expressly or implicitly by the parties.
`
`Moreover, the merits of the proceeding would not be served by permitting applicant to add its proposed defense of
`acquiescence because, based on the evidence, the defense is without merit. The affirmative defense of acquiescence
`requires applicant to show that opposer actively represented that it would not assert its claim of likelihood of confusion;
`that opposer inexcusably delayed in asserting its claim; and that the delay caused undue prejudice. See Coach House
`Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401 (11th Cir. 1991); and Hitachi
`Metals International, Ltd. V. Yamakyu Chain Kabushiki Kaisha, 209 USPQ 1057 (TTAB 1981). [* 16] In this case, not
`only did opposer never represent that it would not pursue its claim, but the testimony establishes that the parties actively
`agreed not to address the issue of the pending opposition in their discussions leading up to, or in, the June 28, 2001
`agreement. It would be inequitable for applicant to make such assertions during discussions leading up to the agreement,
`and then be permitted to use the agreement against opposer to establish acquiescence. Further, the agreement makes no
`reference to applicant's mark at issue herein.
`
`Finally, evidence establishing that portions of opposer's journal appear on applicant's website along with applicant's
`journal identified by the mark herein may be relevant to the issue of likelihood of confusion, but such evidence is not
`reason to permit applicant to assert a defense of acquiescence, nor does it establish such a defense.
`
`In conclusion, we deny applicant's motion to amend its answer to add a defense of acquiescence.
`
`5. Objections to Evidence.
`
`We next consider the objections to evidence made by applicant. Applicant contends that the testimony of Dr. Gans,
`p. 31, and Mr. Kane, opposer's vice president of publishing, [*l7] pp. 11-12, regarding actual confusion is inadmissi-
`ble on the grounds that it is hearsay and that opposer "failed to produce the documents pertaining to the purported actual
`confiision despite applicant's request for production of such documents during discovery" (applicant's brief, p. 24). Ap-
`plicant alleges that it specifically requested during discovery "all documents which related to any instance of actual con-
`fiision of which opposer is aware [and that] in response to that request and subsequently, opposer has maintained that it
`possesses no such documents" (applicant's brief, p. 26). Applicant states that the testimony of Dr. Gans and Mr. Kane
`indicates that Dr. Dolusio sent an announcement regarding applicant's use of its AAPS PHARMSCI mark to Dr. Gans
`and that Mr. Kane made notes of his telephone conversation with an unidentified caller Applicant notes further that nei-
`ther of these documents was produced.
`
`Applicant objects to the admissibility of Mr. Kane's testimony in its entirety on the ground that the testimony was
`pursuant to a telephone deposition to which applicant objected at the time of the deposition. Applicant argues addition-
`ally that, even if this testimony regarding [* 1 8] actual confiision is admissible, it is of little probative value.
`
`Opposer contends that the evidence is admissible; that the statements by Dr. Gans and Mr. Kane are not hearsay
`and, if they are, then they are admissible under the state-of-mind exception. Opposer argues that the alleged documents
`were not, in fact, in opposer's possession, nor is opposer relying on documents to support its position that actual confu-
`sion has occurred.
`
`Applicant's objections are overruled. The case law clearly establishes that Dr. Gan's and Mr. Kane's statements re-
`garding third-party statements to them are evidence that the statements were made to them. The statements are not of-
`fered for the truth thereof. See Corporate Fitness Programs, Inc. v. Weider health and Fitness, Inc., 2 USPQ2d 1682
`(TTAB 1987).
`
`Similarly, applicant's objection in its brief to the taking of lVlr. Kane's testimony by telephone is overruled. The
`transcript of the deposition indicates that applicant's counsel received proper notice of the deposition and there is no
`
`

`
`2004 TTAB LEXIS 121, *
`
`Page 6
`
`indication that applicant had previously obj ected and been unable to resolve the objection prior to the deposition. Appli-
`cant's counsel participated [* l 9] in the deposition and has not shown any prejudice resulting fiom the fact that the
`deposition was conducted by telephone. Telephone depositions are widely utilized in cases before the Board as a viable
`means to obtain testimony and minimize costs.
`
`The Record
`
`The record consists of the pleadings; the file of the involved application; various specified responses of opposer to
`applicant's interrogatories and requests for admissions, n3 and excerpts fi'om various publications, all made of record by
`applicant's notices of reliance; excerpts from opposer's publication and third-party publications, made of record by op-
`poser's notices of reliance; the testimony depositions by opposer, all with accompanying exhibits, of Dr. John Gans,
`opposer's executive vice president and CEO, John B. Cox, applicant's executive director, Harvey Kane, opposer's vice
`president of publishing, Ronald L. Williams, opposer's now-retired director of communications and strategic planning,
`and Samuel Kalman, opposer's now-retired director for development and administrator of opposer's foundation; and the
`testimony depositions by applicant of John B. Cox, applicant's executive director, Victor Van Buren, applicant's [*20]
`director of publishing, and Eva M. Nye, manager for technical and administrative services for applicant's counsel's law
`firm, all with accompanying exhibits. Both parties filed briefs on the case and an oral hearing was held.
`
`n3 Applicant also submitted by notice of reliance several responses of opposer to applicant's requests for
`production of documents to show that opposer stated it did not have certain documents.
`
`Factual Findings
`
`Opposer, American Pharmaceutical Association, was founded in 1852 in Philadelphia. It is a membership organiza-
`tion of pharmaceutical professionals comprised of three academies, the Academy of Pharmaceutical Sciences and Re-
`search, the Academy of Pharmacy Practice and Management, and the Academy of Students of Pharmacy, and a founda-
`tion. Opposer has published a scholarly and peer-reviewed scientific journal for nearly 100 years. The journal was
`originally entitled Journal ofthe American Pharmaceutical Association, Scientific Edition; however, in 1961, the name
`was changed to Journal ofPharmaceutical Sciences, its present name. Regarding the name change, the editor of the
`January 1961 edition wrote the following [Exhibit 1 to deposition [*2l] of Ronald L. Williams]:
`
`The former name was criticized as being nondescriptive with regard to content, too unwieldy, easily
`subject to confusion with the Practical Pharmacy Edition, and difficult to cite correctly in literature refer-
`ences. The new title
`appears to overcome all of these objections.
`
`Dr. Gans, opposer's executive vice president and CEO, acknowledges that the name of its journal is descriptive of the
`journal and its subject matter. He characterizes opposer's Journal ofPharmaceutical Sciences as one of the preeminent
`journals in the field of pharmaceutical sciences, noting that there are other periodicals in this field. Opposer's journal
`articles address all aspects of the pharmaceutical sciences, including research, discovery/development of pharmaceutical
`products, and the efficacy, quality and delivery, in whatever form, to the human body of such drugs.
`
`Opposer's journal was published for some time in association with the American Chemical Society, but it is now
`published by John Wiley and Sons, a publisher of scientific periodicals. Opposer's journal is widely circulated to, inter
`alia, university and scientific libraries, corporations and [*22]
`individuals. The National Library of Medicine's data-
`base of health sciences literature and information, known as "Medline," includes opposer's Journal ofPharmaceutical
`Sciences among its periodicals, showing its title in abbreviated form as J Pharm Sci. Medline presents the titles in its
`database in abbreviated form according to the following standards n4:
`
`[The National Library of Medicine] NLM collects, indexes, preserves, and makes available health sci-
`ences literature to health professionals and serves as supplemental resource after other local, regional,
`and national resources have been contacted.
`
`Journal title abbreviations are created following the rules established by the International Organization
`for Standardization (ISO) in ISO 4 Information and Documentation - Rules for the abbreviation of title
`words and titles of publications. The latest version of this standard is the 3rd edition, 1997. According to
`the ISO rules, single words and oriental language titles are never abbreviated, and all punctuation is re-
`
`

`
`2004 TTAB LEXIS 121, *
`
`Page 7
`
`moved. Abbreviations for individual words within a title are obtained fiom the List of Serial Title Word
`
`Abbreviations published by the International [*23] Serials Data System (2nd edition. Paris; c1991 and
`later supplements).
`
`n4 Applicant's Exhibit 1 to Van Buren deposition - e-mail explanation, dated September 17, 2001, from C.
`Marks, National Library of Medicine customer service. The truth of this e-mail statement is established by ap-
`plicant's testimonial witnesses, Victor Van Buren and Eva M. Nye, and is not disputed by opposer.
`
`These referenced documents were made of record through the testimony of Eva M. Nye as Applicant's Exhibits 4
`and 5 and provide, in relevant part, that, "very frequently used generic words" are abbreviated to a single letter, giving
`as an example "j" for "journal"; and that, in a title, English words with the root "pharmaceut-" are abbreviated as
`"pharm." and English words with the root "scienc-" are abbreviated as "sci." According to these standards, opposer's
`Journal ofPharmaceutical Sciences is abbreviated as J Pharm. Sci.
`
`Periodicals cited in articles and bibliographies in the record also present titles in abbreviated form, which form ap-
`pears to follow the same or similar conventions followed by Medline. Throughout these various sources in the record,
`opposer's Journal ofPharmaceutical [*24] Sciences is written as J. Pharm. Sci. While there is no testimony as to
`when this convention was adopted with respect to opposer's journal, copies of articles in the record from as early as
`1990 show use of this abbreviation in a bibliographic context.
`
`Opposer's Journal ofPharmaceutical Sciences is also referred to verbally in the testimonial depositions as ”.I
`Pharm Sci” and the testimony establishes that opposer's journal is verbally referred to as "J Pharm Sci” by scientists,
`academics and other professionals in the pharmaceutical sciences field, which is the source of its readership. While it is
`not clear how long people have so referred to opposer's journal, it clearly predates the filing date of the application in
`this case. Opposer's journal is not referred to as ”Pharm Sci.”
`
`Applicant, American Association of Pharmaceutical Scientists, was formed in 1986 and has many members in
`common with opposer. In fact, applicant's founders were members of opposer's Academy of Pharmaceutical Scientists
`who lefl: opposer's organization to form their own organization. Applicant's membership consists entirely of individuals,
`not business entities, who are professionals [*25] in the pharmaceutical sciences. There is substantial overlap in the
`membership of opposer and applicant.
`
`Applicant also has a peer-reviewed journal, in partnership with a commercial publisher, entitled Pharmaceutical
`Research, which focuses on research in the pharmaceutical sciences field. More recently, in January 1999, applicant
`began online publication of another journal, covering all aspects of the pharmaceutical sciences, titled AAPS PHARM-
`SCI, which is the subject of the opposed application herein. n5 Consistent with the standards reviewed above for abbre-
`viating titles, applicant's online journal is not abbreviated, but appears as "AAPS PHARMSCI" when cited in articles
`and bibliographies. There is substantial overlap in the readership of opposer's and applicant's periodicals.
`
`n5 The application that is the subject of this opposition is based on an allegation of a bona fide intention to
`use the mark; however, the evidence clearly establishes that use of the mark in connection with the identified
`services has occurred and we have considered this evidence in reaching our decision.
`
`Applicant organization has an Internet website at www.aapspharmaceutica.com. On its [*26] home page is refer-
`ence to its electronic journal, AAPS PharmSci, with a list of articles. Through the site's search function, one can go to a
`screen entitled AAPS Armual Meeting Abstracts. From this screen, one can search "over 2,000 abstracts accepted for
`this year's AAPS Annual Meeting." Three boxes on the left side of this screen indicate "AAPS PharmSci, " ”Pharmaceu-
`tical Research” and, pursuant to the previously-discussed agreement between opposer and applicant, "Journal ofPhar-
`maceutical Sciences. ” From this screen, one can search title, author and abstract data in these three journals. If one is a
`subscriber to J. Pharm. Sci., one may go from an article abstract to the full article.
`
`The record establishes that many scientific periodicals published in print form are also available electronically. Op-
`poser has its Internet website at www.aphanet.org, where is refers to its publication as both Journal ofPharmaceutical
`Sciences and J Pharm Sci. As discussed supra, opposer and applicant entered into an agreement in June 2001, wh