35
`
`lllllllllllllllllllmIlllllllllllllllllllllllllll
`03-(E19002
`U.S. Pauntfi TMOfc/TM Mail Rapt. Dz, no
`
`Charles E. Cates
`
`Karyn L. Osterman
`Cates & Holloway
`P. O. Box 1532
`
`Scottsdale, Arizona 85252-1532
`
`(602) 248-0982
`
`7”’/$446
`
`Attorney Docket No. 1740—L-01
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`) )
`
`ELAN CORPORATION, PLC,
`
`Opposer,
`
`‘
`
`V.
`VIAD CORP,
`
`Serial No. 75/570,750
`
`)
`) Opposition No. 122,867
`)
`)
`)
`)
`Applicant
`________________________.)
`Assistant Commissioner for Trademarks
`
`C7
`:1
`E3
`-E)
`n .
`‘;..
`
`5:?
`
`Box TTAB NO FEE
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Dear Sm
`
`APPLICANT’S MOTION FOR SUMMARY JUDGMENT
`
`Applicant, Viad Corp, moves the Trademark Trial and Appeal Board for entry of
`
`summary judgment, in accordance with Federal Rule of Procedure 56, and Trademark
`Trial and Appeal Board Rules ofPractice 2.116 and 2.127, on the grounds that there are I
`
`no genuine issues to be tried, and that as a matter of law, App1icant’s mark, when applied
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`to App1icant’s services, and the marks of Opposer as applied to Opposer’s goods, are not
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`likely to cause confusion or mistake. Thus, Applicant is entitled to registration of ELAN
`
`COMMUNICATIONS, application serial No. 75/570,750.
`
`App1icant’s motion is supported by, and incorporates herein the following:
`
`1. Applicant’s Memorandum In Support of Its Motion for Summary Judgment;
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`2. Statement of Facts;
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`3. Declaration of Michele Wilson, with attached Dialog Search and summary of
`results fiom telephonic interviews (Exhibit “A”);
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`

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`4. Declaration of Terry Campanaro (Exhibit “B”);
`
`5. The pleadings on file in this case;
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`6. The PTO file of Application No. 73/782,104;
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`7. The PTO file of Application No. 75/570,750;
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`8. Discovery responses of Opposer (Exhibit “C”);
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`9. Discovery responses of Applicant (Exhibit “D”);
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`10. Dictionary definition of Elan (Exhibit “E”);
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`11. List of ELAN registrations using ELAN published on the Trademark Ofiice
`database (Exhibit “F”);
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`12. Two Amendments filed by Opposer to obtain registration of Opposer’s
`pleaded registration of ELAN E and DESIGN (Exhibit “G”);
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`13. Dialog search of “Elan” dated July 14, 1998 (Exhibit “H”);
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`14. NameProtect search report on ELAN dated May 23, 2002 (Exhibit “l”);
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`15. Declaration of Karyn L. Osterman (Exhibit “J”).
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`The material facts are listed in a separate section of this motion for clarity and ease
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`of reference. Attached as exhibits are the documents referred to in the Statement of Facts,
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`and in the footnotes.
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`Petitioner respectfully requests the Board to suspend all matters not germane to
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`the motion including without limitation all depositions heretofore noticed, until this motion
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`can be heard, pursuant to Trademark Rules of Practice 2.127(d), and grant the present
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`motion in all respects.
`
`Respectfiilly submitted,
`
`CATES & HOLLOWAY
`
`a(. Q 9;; Q 1: E :
`Kg 5
`. Cates, Registration No. 25,838
`Charles
`Karyn L. Osterman
`Attorneys for Applicant
`P. O. Box 1532
`
`Scottsdale, Arizona 85252-1532
`
`(602) 248-0982
`
`Dated this ffilkday of May, 2002
`
`

`
`Charles E. Cates
`
`Karyn L. Osterman
`Cates & Holloway
`P. O. Box 1532
`
`Scottsdale, Arizona 85252-1532
`
`(602) 248-0982
`
`Attorney Docket No. 1740-L-01
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`) )
`
`ELAN CORPORATION, PLC,
`
`V.
`VIAD CORP,
`
`Opposer,
`
`) Opposition No. 122,867
`)
`)
`)
`Applicant
`.________.._____._......___.__)
`Assistant Commissioner for Trademarks
`
`Serial No. 75/570,750
`
`Box TTAB NO FEB
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`APPLICANT’S MEMORANDUM IN SUPPORT OF ITS MOTION FOR
`SUMMARY JUDGMENT
`
`BACKGROUND
`
`The Board is requested to take judicial notice of the records of the Patent and
`
`Trademark Oflice including but not limited to, the file of this case, Applicant’s file history
`
`for serial No. 75,570,750, Opposer’s file history of serial No. 73/782,104, and the list of
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`ELAN registrations published on the Trademark database. Partial excerpts are attached to
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`this motion for ease of reference.
`
`The Board may take judicial notice of the following facts from the file ofthe case.
`
`Applicant filed its service mark application on October 16, 1998, and was given
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`the serial number 75/570,750. On April 4, 2000, Applicant’s mark was published for
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`opposition. Afier multiple extensions of time, on April 30, 2001, Opposer Elan
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`

`
`Corporation, plc, filed its Notice of Opposition. Applicant answered the Notice of
`
`Opposition on June 23, 2001.
`
`Aplicant’s mark is ELAN COMMUNICATIONS. The mark was first used in
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`interstate commerce by Applicant at least as early as January 1997, and is now in such use
`
`by Applicant. Applicant seeks registration ofthe mark ELAN COMMUNICATIONS in
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`connection with the following:
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`1. Arranging, planning and organizing business trade shows, conventions,
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`exhibitions, expositions, meeting and conferences; public relations services; and
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`advertising agency services.
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`2. Video tape production services, animation production services and production
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`of multi-media presentations consisting of films, slides, sound tape and
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`computer controlled special etfects.
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`3. Graphic art design and commercial art design services for others; and computer
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`services, namely, designing, hosting and implementing web sites for others.
`
`Opposer pleads the following U.S. registration:
`
`Mark: ELAN E (Design plus words, letters, and/or numbers)
`Registration Number: 1,645,769
`Registration Date: May 28, 1991
`
`For: Full line of pharmaceutical [and veterinary preparations] in the nature of antacids,
`
`antispasmodics and anti-ulcerants, [Laxatives], anti—diarrhoels, colorectal agents, cardiac
`
`drugs, drugs for the treatment of disorders ofthe central nervous system, CNS stimulants,
`
`analgesics, antipyretics and anti—inflammatory agents, muscle relaxants, hormonal, enzymal
`
`and steroidal preparations, drugs affecting bone metabolism, drugs affecting the genito~
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`urinary system, diuretics and anti-diuretics, anti-infectives, anti-virals and immunological
`
`agents, electrolytes, vitamins and anabolic agents, bronchodilators, anti—asthmatics,
`
`expectorants, anti-tussives, decongestants, mucolytics and respiratory stimulants,
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`oropharyngeal, aural and ocular preparations, anti—allergic drugs, hypo-sensitizing
`
`preparations, local and general anesthetics, oral and transdennal contraceptives,
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`pharmaceutical preparations for the treatment of dermatological disorders, antineoplastic
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`

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`pharmaceutical preparations for inhibiting or preventing the growth and spread of
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`neoplasms or malignant cells, and medical diagnostic reagents.
`
`The declaration of Michele Wilson, with an attached Dialog search and summary
`
`of results from telephonic interviews with other companies using the word ELAN as a
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`mark, (in whole or as a formative), the declaration of Terry Campanaro, and the
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`declaration of Karyn L. Osterman are filed herewith. A copy of the dictionary definition of
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`ELAN is provided. Opposer’s responses to Applicant’s discovery requests are provided,
`
`and special references will be made to selected responses. Also attached for easy
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`reference are two Amendments filed by Opposer to obtain the registration of ELAN E and
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`DESIGN, a list ELAN registrations published in the Trademark database, a copy of a
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`Dialog search of ELAN and ELAN formatives, and a copy of a search report by
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`NameProtect which includes screen shots from current internet pages showing companies
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`now using the word ELAN.
`
`REMARKS
`
`Summary judgment for Applicant is appropriate if there is no likelihood of
`
`confusion between Applicant’s mark and those marks used by Opposer. In In re E. E. du
`
`Pont de Nemours & C0,, 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the Court of
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`Customs and Patent Appeals (now the Court of Appeals for the Federal Circuit), set out a
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`number of material factors to be used in determining whether confusion between two
`
`marks would be likely. Consideration of those factors as applied to the material facts
`
`shows that there is no likelihood of confiision between Applicant’s and Opposer’s marks.
`
`To clear away the underbrush, a brief review of the material facts follows:
`
`

`
`DU FONT FACTORS
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`1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound,
`
`connotation and commercial impression.
`
`The two marks create an entirely separate and distinct commercial impression. See
`
`the two marks shown below: Note the size and dominance of the stylized “E” in
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`Opposer’s mark, and the use of the two words in Applicant’s mark:
`
`@317
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`E'LAN COMIVIUNICATIONS
`
`

`
`Applicant’s mark ELAN COMMUNICATIONS and the Opposer’s registered
`
`mark ELAN E and DESIGN are similar only in respect to the weak portion of the
`
`Opposer’s mark (ELAN).‘ ELAN is a laudatory word found in the dictionary? ELAN is
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`not a coined word or a famous name mark? it is a weak mark as evidenced by the long list
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`of providers of products and services using ELAN as part ofthe identifying mark, and the
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`admission of Opposer in its application.“ See the attached copy ofthe Declaration of
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`Michele Wilson along with its attachments, and the Dialog and NameProtect searches.
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`Consequently, Opposer is one of a multitude of business entities using ELAN in its mark.
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`The stylized “E” is the dominant portion of Opposer’s registered mark. This can
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`be observed by viewing the mark. Moreover, Opposer asserted such to be a fact in two
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`amendments it submitted, in response to office actions, in the application for the
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`registration it pleads against Applicant’s application for registrations
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`2. The similarity or dissimilarity and nature of the goods or services as described in an
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`application or registration in connection with which a prior mark is in use.
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`To begin with, the Applicant’s mark relates to services, whereas the Opposer’s
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`mark relates solely to goods. The services with which Applicant seeks registration of its
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`mark are distinct from the goods listed in Opposer’s registration of ELAN E and
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`DESIGN. Applicant uses its mark only in connection with services related to trade shows
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`conventions, exhibitions, expositions, meeting and conferences, public relations,
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`advertising, video tape production, animation production, graphic art design, commercial
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`art design, and computer services. On the other hand, Opposer’s goods are related to the
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`pharmaceutical industry. Applicant has no intention of expanding its services to
`
`1 See the PTO file of Application No. 73/782,104, and 75/570,750.
`2 See dictionary definition of ELAN attached as Exhibit “E.”
`3 Applicant’s Request No. 16 stated: “Admit that ELAN is not a famous mark, as is
`currently understood in the field of intellectual property." Opposer replied that the
`request “seeks an admission as to a matter outside the scope of Fed.R. Civ.P. 26(b)(1).3
`4 Applicant’s Request for Admission No. 2 states, “Admit that ELAN is used in the name of
`other United States companies and corporations." Opposer responded, “Admitted."
`Applicant’s Request for Admission No. 3 states, “Admit that ELAN is frequently used in
`the name of products and services offered for sale in the United States. Opposer
`responded,
`.
`. Opposer admits that third parties use the name and mark ELAN for
`goods and services.”
`See Opposer’s (then Applicant’s) Amendment dated September 21, 1990, and
`Opposer’s (then Applicant’s) Amendment dated December 22, 1989.
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`

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`pharmaceuticals; neither is Applicant’s business in the normal path of expansion of
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`Opposer’s pharmaceutical business.
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`,
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`3. The similari or dissimilarit of established likel -to-continue trade channels.
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`Restriction of channels can avoid a
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`2 d conflict. Where the identification of oods
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`is restricted to certain narrow channels of trade it can avoid a findin of a likelihood
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`of confusion with a registration for a similar mark for related goods.
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`The goods and services of the parties are not related. However, Opposer has
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`raised as an issue that both parties have contact with pharmaceutical companies. The
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`trademark examining attorney cited a registration against Opposer when Opposer sought
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`registration of its mark ELAN E and DESIGN. The cited registration was U. S. Reg. No.
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`1,303,312 for ELAN for aromatic chemicals sold in bulk to the food and pharmaceutical
`
`industries. Opposer argued that the channels of trade were diiferent. In Opposer’s
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`response to the office action, Opposer, in its role as applicant, stated, “[Opposer’s] goods,
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`both prescription and over—the—counter products, are made available to the purchasing
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`public virtually exclusively via pharmacies and retail drug store outlets.” Opposer states
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`in its response to Applicant’s Interrogatory No. 4, that “its goods are offered and have
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`been offered to, without limitation, pharmaceutical companies, manufacturers,
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`wholesalers, distributors, clinics, hospitals, medical laboratories, physicians, pharmacies
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`and patients.” Again, all areas are related to the pharmaceutical industry as evidenced by
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`the list of goods in Opposer’s registration.
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`In the instant case Applicant asked Opposer in its Interrogatory No. 26 how
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`Applicant’s Mark is likely to result in confusion, mistake or deception. Opposer
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`responded as follows: “Both Opposer and Applicant provide products and services to the
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`pharmaceutical and health care industries under the name and mark ELAN. The
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`simultaneous use of the mark ELAN by Opposer and Applicant is likely to result in the
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`mistaken belief by the parties’ present or potential customers that Applicant’s services are
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`provided by Opposer, are sponsored by or connected with Opposer, or that there is a
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`connection of some type between Opposer and Applican .”
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`The logical conclusion of 0pposer’s position is that use by any company of the
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`word ELAN in its rmrk, who provides a service to any other company in the health care
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`

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`or pharmaceutical industry, would likely result in the mistaken belief the services are
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`provided, sponsored, or connected with Opposer. A cursory review of existing third party
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`uses reduces Opposer’s position to absurdity.6
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`An example of the absurdity that this result would lead to is that companies that
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`contain “New York” in their names or marks could not do business with the possible
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`customers or business contacts of other companies that also contained “New York” as
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`part of their names or marks, or with competitors of companies that contain “New York”
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`in their names or trademarks. The Board may take judicial notice of the New York
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`business white pages listing companies that contain “New York” as part of their names.
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`Also see channels of trade comments to factor 10 below.
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`4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs.
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`careful, sophisticated purchasing.
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`Those businesses and individuals who purchase Applicant’s services are
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`sophisticated purchasers.7 Applicant’s clients and potential clients are interested in
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`creativity, expertise, and reliable services. Applicant’s clients are careful purchasers of the
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`services supplied by Applicant because they rely on such services to display and sell their
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`services.“ Furthermore, the cost of the Applicant’s services for preparing a trade show
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`exhibit ranges from $5,000 to $500,000? Prior to investing large amounts in services,
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`buyers will understand from whom they are making the purchase.
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`Opposer’s customers are pharmaceutical purchasers who must necessarily be
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`sophisticated and careful. It is indisputable that customers making decisions to buy goods
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`or services from either the Applicant or the Opposer would certainly know when they are
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`receiving services from the Applicant or buying goods from the Opposer.
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`5. The fame of the prior mark (sales, advertising, length of use 1.
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`5 See NameProtect Search report, Exhibit “l.”
`7 See Declaration of Terry Campanaro.
`3 See Declaration of Terry Campanaro.
`9 See Declaration of Terry Campanaro.
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`

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`In this case, Opposer takes the position that Whether or not ELAN is a famous
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`mark is outside the scope of its Opposition.” If Opposer believed that ELAN were a
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`famous mark, it would have asserted it as a fact. The large number of third party uses
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`precludes the possibility that ELAN is a famous mark.
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`6. The number and nature of similar marks in use on similar goods.
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`In addition to multiple instances of pending applications for marks incorporating
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`ELAN, there are over 100 registrations for live marks incorporating ELAN."
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`Accordingly, it is abundantly clear that the word ELAN is a quite common formative as a
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`mark for many goods and services. In the health and pharmaceutical industry, and fields
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`more closely related than Applicant’s, ELAN appears as a formative in many marks.” By
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`way of example, the following three marks are contained in the Trademark Oflice
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`database: ELAN, first used in 1983 for water treatment equipment, Registration No.
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`1,865,716; Elan, first used in 1968 for hair setting and hair conditioning lotions,
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`Registration No. 0,868,250; Elan, filed as an ITU on January 24, 2002 for medical
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`instruments sold as a kit, Serial No. 78/ 104,563. See also the NameProtect search report
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`(Exhibit “I” , tagged for your convenience, and the survey conducted by Michele Wilson
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`(Exhibit “A”). All are closer to Opposer’s business than Applica.nt’s business, and
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`furthermore, all relate to the sale of goods rather than services.
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`1° Applicant's Request No. 16 stated: “Admit that ELAN is not a famous mark, as is
`currently understood in the field of intellectual property.” Opposer replied that the
`request “seeks an admission as to a matter outside the scope of Fed.R. Civ.P. 26(b)(1).
`” A copy of the list of marks containing ELAN from the Patent and Trademark Office
`database is attached for the Board's convenience and judicial notice.
`12 See NameProtect search report, Exhibit “l.”
`
`10
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`

`
`Applicant asked Opposer in its discovery propounded on February 28, 2002 to list
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`any other un—registered trademarks owned by Opposer which Opposer contends has
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`relevance to the registration of Applicant’s mark. Opposer stated that its common law
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`name and mark ELAN is relevant to this proceeding.” Applicant next asked Opposer
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`whether Opposer intends to register the mark in the United States, and if not, why not. In
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`its response, Opposer listed six registrations it filed with the Trademark Office in March of
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`2002, a point in time after Opposer received Applicant’s interrogatories.” Upon
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`inspecting the Trademark Ofiice records, it is evident that the applications Opposer filed
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`are for an intent-to-use, with no date of first use. One of the registration applications is
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`for ELAN, for a house mark for a full line of pharmaceutical products and substances,
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`serial No. 76/3 79,215. These intent-to-use applications are inconsistent with Opposer’s
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`claim of exclusive rights in the word ELAN.
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`7. The nature and extent of any actual confusion.
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`Applicant is not aware of any instances of actual confusion between App1icant’s
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`mark and the mark of Opposer.” Once again, it should be noted that the marks are very
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`dissimilar (see du Pont factor item 1 above) ; Applicant’s mark relates to the use of
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`services, and Opposer’s mark relates to the use of goods; and customers making decisions
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`to buy goods or services from either the Applicant or the Opposer would certainly know
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`when they are receiving services from the Applicant or buying goods from the Opposer.
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`Consequently, even Opposer admits that it is not aware of any instances of actual
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`confusion.”
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`8. The legh oftime during and conditions under which there has been concurrent use
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`without evidence of actual confusion.
`
`13 See Opposer's response to lnterrogatory No. 15, Exhibit
`1‘ See Opposer's response to lnterrogatory No. 16, Exhibit
`15 See attached Declaration of Terry Campanaro.
`16 in response to Applicant's lnterrogatory No. 22, “Identify and detail each instance of
`actual confusion between Opposer or Opposer's Marks and Applicant or Applicant’s
`Marks,” Opposer stated: “Opposer is not aware of any instances of actual confusion, but
`believes that confusion has occurred, will continue to occur, and is likely to occur.”
`
`11
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`

`
`Applicant’s and Opposer’s marks have been in concurrent use since as early as
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`January 1997. More than five years have passed since Applicant first began using its mark
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`concurrently with Opposer. To Applicant’s and Opposer’s knowledge, there have been no
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`instances of actual confusion (see preceding section). Through Applicant’s promotional
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`activities and use of its mark, its mark has developed considerable goodwill.” Applicant
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`provided the following information in its responses to Opposer’s discovery (which is
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`restated in the Declaration of Terry Campanaro) when they asked Applicant to state its
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`yearly volume of sales to date for Applicant’s Services?“
`
`1997
`1998
`1999
`2000
`2001
`
`$ 2,846,900
`$ 4,484,700
`S 8,751,600
`$12,179,100
`$ 5,942,800
`
`This is a significant investment in company resources for sales made in conjunction
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`with its mark.
`
`In response to Opposer’s question about yearly expenditures to date with respect
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`to the advertising and promotion of Applicant’s services, Applicant responded with the
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`following information, also restated in the Declaration of Terry Campanarozlg
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`The information currently available is listed below. Applicant is collecting
`additional information, and will supply this information upon receipt.
`
`To the best of Applicant’s knowledge, applicant’s direct expenditures 1996-2001
`approximate $ 3,454,000. This does not include any advertising or promotion that
`Exhibitgroup/Giltspur undertook on behalf of Exhibitgroup/Giltspur and their
`divisions including clan communications.
`
`There may have been collateral expenditures.
`
`The above information also makes it clear that significant advertising expenditures
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`have been made in conjunction with Applicant’s mark, that Applicant has a significant
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`presence in the marketplace and; therefore, if there were a likelihood of confiision, it
`
`would have resulted in actual confusion. There has not been even de minimus confusion.
`
`17 See Declaration of Terry Campanaro.
`13 See Declaration of Terry Campanaro.
`19 See Declaration of Terry Campanaro.
`
`12
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`

`
`9. The variet of oods on which a mark is or is not used house mark “famil ” mark
`
`product mark).
`
`Applicant uses its mark only in connection with services related to trade shows
`
`conventions, exhibitions, expositions, meeting and conferences, public relations,
`
`advertising, video tape production, animation production, graphic art design, commercial
`
`art design, and computer services.” Opposer uses its marks only in connection with its
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`pharmaceutical products.“ There is, consequently, not an association of Opposer’s marks
`
`with a wide variety of goods and services.
`
`10. The market interface between applicant and the owner of a prior mark: 1a) a mere
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`“consen ” to register or use, (b) agreement provisions desigped to preclude confusior;
`
`
`i.e.
`limitations on continued use of the marks by each party, go) assig_n[n_ent of mark,
`
`applicatiop, regjyjtion and good will of the related business, or (d) laches and
`
`estoppgl attributable to the owner of the prior mark and indicative of lack of
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`confiision.
`
`Subsections (a) through (c) are not applicable in this case. With respect to laches,
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`acquiescense, and estoppel, Opposer (then in the role of applicant) claims in its documents
`
`filed with the Patent and Trademark Ofiice that the “E” is the dominant feature of the
`
`composite mark ELAN E and DESIGN. Their argument in the response dated December
`
`22, 1989, reasserted in their second response dated September 21, 1990, is as follows:
`
`“(Opposer’s) mark is a composite mark consisting of the two components, the
`word mark “ELAN” and “E” Design. It is a well—established principle of
`trademark law that a mark should not be split up into its component parts wherein
`each part is compared with parts of a possibly conflicting mark to determine
`likelihood of confiision. It is the impression which the mark as a whole creates on
`the average reasonably prudent buyer and not the impression created by “ELAN
`and E Design” in its entirety difiers fiom that created by the word mark “ELAN”
`used alone. When one mark consists of a design and a word, and the other mark
`of merely a word, similarity is usually controlled by determining whether the word
`or the design dominates the composite mark. As discussed in J. McCarthy,
`Trademarks and Unfair Competitions, p. 87 (2d Ed. 1984), while it has sometimes
`been stated that in a word-design composite mark, the words are always presumed
`to be the “dominant” portion, this “rule” of word-dominance is merely a guideline
`
`2° See Applicant's application for registration, serial No. 75/570,750.
`2‘ See Opposer’s registration No. 1,645,769.
`
`13
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`

`
`as shown by the cases finding a design element can be dominant if more
`conspicuous than the accompanying words.”
`
`“|Opposer| asserts that the dominant feature of the present composite
`mark is clearfl the “E” desigp and not the word portion ELAN and,
`therefore, the marks at issue would not be considered confusingly similar.”
`
`(Emphasis supplied).
`
`Opposer is estopped fiom now claiming that ELAN is the dominant portion of its
`
`registered mark.
`
`Also, when Opposer was faced with overcoming a rejection of its application for
`
`registration of ELAN E and DESIGN (in Opposer’s then role as an applicant), it took
`
`issue with the examining attorney’s concern with the likelihood of confusion with ELAN E
`
`goods, and the goods of two cited registrations (Registration No. 1,291 ,784; Registration
`
`No. 1,303312) . One registration for the word mark ELAN was for aromatic chemicals
`
`sold in bulk to the food and pharmaceutical industries, and the other registration for the
`
`word mark ELAN was for dietary supplements and medicinal teas. Opposer (then in the
`
`role of applicant) made the following argument in its response dated September 21, 1990:
`
`“Turning now to the goods, [Opposer] maintains that the goods of the present
`application versus those ofthe cited registrations, are not so related that they
`would come to the attention of the same kinds of purchasers via the same channels
`oftrade. [Opposer’s] goods are a full line of pharmaceutical and veterinary
`preparations, many of which are available by prescription only or, in some
`instances, over-the-counter. |Opposer’s| goods, both prescription and over-the-
`counter products, are made available to the purchasing public virtually
`exclusively via pharmacies and retail drug store outlets. The goods of the
`cited registrations, on the other hand, are marketed via totally different outlets.
`The dietary supplements and medicinal teas sold under U. S. Reg. No. 1,291,784
`would be sold, most likely, in nutritional stores and possibly specialty food markets
`and catalogs. The aromatic chemicals sold under U.S. Reg. No. 1,303,312 are
`sold in bulk to the food and pharmaceutical industries. It has clearly been
`established in the case law that products sold into industi_~y which are not
`ordina '
`sold to the eneral ublic versus
`roducts offered to the eneral
`publig, even when sold under virtualpf identical marks, are not so related
`that confusion would be likely. In re Shipp, 4 USPQ2d 1174 (TTAB 1987);
`Phoenix Closures Inc. V. Yen Shaing Corp. Ltd., 9 USPQ2d 1891 (TTAB 1988).”
`
`14
`
`

`
`“The two cases cited above are particularly on point because in both instances
`the TTAB found that when the purchasers of goods are commercial or
`industrial establishments versus the general public, such goods, even when
`bearing identical marks, move in completey different marketing channels to
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`different classes of customers and therefore there can be no likelihood of
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`confusion.”
`
`(Emphasis Supplied).
`
`The goods offered by the two registrants cited against Opposer’s registered mark
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`are much closer to Opposer’s goods than are Applicant’s services.
`
`Opposer has argued that products not ordinarily sold to the general public versus
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`products sold to the general public, places the products in different channels oftrade, and
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`sales are made to a diiferent class of customers. Opposer is now collaterally estopped
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`from taking an inconsistent position and claim that Applicant, who sells its services to the
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`general public, operates in the same channels of trade, and to the same class of customers.
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`Public policy does not permit them to do so.
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`11. The extent to which the applicant has a right to exclude others from use of its mark
`
`on its goods.
`
`Any common law rights Opposer might have are severely limited by the large
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`number of third party uses of Elan and Elan Formatives. See NameProtect Volumes 1 and
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`2, Exhibit “I.” Many of these companies would be expected to come to the attention of
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`pharmaceutical companies, among others, by reason of the products and services they sell.
`
`See, for example, the applications and registrations for the following: ELAN, first used in
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`2001 for surface-mounted air hand dryers, Registration No. 2,564,681; ELAN, first used
`
`in 1983 for water treatment equipment, Registration No. 1,865,716; ELAN, first used in
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`1972 for machines for cleaning and washing machine parts using high pressure water and
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`parts, Registration No. 1,398,254; ELAN, first used in 1983 for analyzing instruments,
`
`Registration No. 1,307,768; ELAN, first used in 1984 for textile carpeting, Registration
`
`No. 1,348,179; ELAN, first used in 1992 for handbags, purses and small leather goods,
`
`Registration No. 1,927,821; ELAN, first used in 1993 for bottled water, Registration No.
`
`2,192,438; ELAN, first used in 1982 for banking services, Registration No. 1,304,089;
`
`ELAN, first used in 2000 for furniture, Registration No. 2,545,931; ELAN, first used in
`
`15
`
`

`
`1984 for computer programs and program manuals for professionals and organizations,
`
`Serial No. 76/313,815; THE ELAN COLLECTION, first used in 1978 for optical frames
`
`and sunglasses, Registration No. 1,178,888; ELAN QUEST, first used in 1997 for
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`educational services, Registration No. 2,245,593; ELAN ASSOCIATES, first used in
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`1978 for management consulting services.” These references have been tagged for your
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`convenience.
`
`12. The extent of potential confusion, i.e., whether de minimis or substantial.
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`At the most, the extent of potential confusion is de
`
`Applicant does not
`
`dispute that it performs services for companies in the pharmaceutical industry. Any of
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`more than 100 or so others using the mark ELAN either by itself or as a formative
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`undoubtedly engage in business with companies in the pharmaceutical industry, as well.”
`
`CONCLUSION
`
`As evident from the foregoing, the Applicant’s mark objected to by Opposer
`
`contains a common word fiom the non-dominant portion (ELAN) of the Opposer’s
`
`registered mark, the Applicant’s services obviously differ fiom the Opposer’s goods, and
`
`the records are replete with other companies who also use the mark containing the same
`
`common word as a formative. It would be a disturbing precedent and would establish a
`
`dangerous doctrine to hold that, in such a situation, a likelihood of confiision could be
`
`found on the sole basis that a company does business with customers or competitors of the
`
`owner of a weak, registered mark. It goes beyond any recognized theories for finding
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`likelihood of confusion or mistake. Simply put, after a careful review of the du Pont
`
`factors, there are no factual or legal grounds to support any theory for finding a likelihood
`
`of confusion or mistake. Similarly, ifthe Opposer contends it has common law rights,
`
`such rights are weak, since the word ELAN has been used by many others for numerous
`
`goods and services.
`
`The present memorandum sets forth the uncontroverted material facts which
`
`require a holding that Applicant is entitled to summary judgment and registration of its
`
`22 See NameProtect search reports, Exhibit “i."
`23 See attachment to Declaration of Michele Wilson, Dialog Report, and NameProtect
`Report.
`
`16
`
`

`
`mark ELAN COMMUNICATIONS. There are no genuine issues of material fact to be
`
`tried. The material facts in the case compel a ruling that Applicant’s mark, when applied
`
`to Applicant’s services, is not so similar as to create a likelihood of confusion or mistake
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`with Opposer’s marks as applied to Opposer’s goods.
`
`Petitioner respectfully requests the Board to suspend all matters not germane to
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`the motion including without limitation all depositions heretofore noticed, until this motion
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`can be heard, pursuant to Trademark Rules of Practice 2.127(d), and grant the present
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`motion in all respects.
`
`Respectfixlly submitted,
`
`CATES & HOLLOWAY
`
`+<_m:& ‘at oscawwc.
`Charles E. Cates
`
`Registration No. 25,838
`Karyn L. Osterman
`Attorneys for Applicant
`P. O. Box 1532
`
`Scottsdale, Arizona 85252-1532
`
`(602) 248-0982
`
`Dated