Trademark Trial and Appeal Board Electronic Filing System. 3935
`
`ESTTA Tracking number: ESTTA27576
`
`Filing date3
`
`03/07/2005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`91124967
`Plaintiff
`WYETH
`
`1 Z
`
`Proceeding
`
`Party
`
`7 M
`
`ARIE V. DRIS COLL
`Correspondence FROSS ZELNICK LEHRMAN & ZIS SU, P.C.
`Address
`3 866 UNITED NATIONS PLAZA
`NEW YORK, NY 07940
`
`Submission
`Filer's Name
`
`Opposer's Memorandum in Support of Opposition
`Marie V. Driscoll
`
`Date
`Attachments
`
`03/07/2005
`Opp. Memo in Support of Opposition No.91124967.pdf( 20 pages )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`WYETH,
`
`V_
`
`Opposer,
`
`Opposition No. 91124967
`
`DAVID M. GRAHAM,
`
`.
`
`_ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ __X
`
`Applicant.
`
`OPPOSER’S MEMORANDUM
`
`IN SUPPORT OF OPPOSITION
`
`FROSS ZELNICK LEHRMAN
`
`& ZISSU, P.C.
`Marie V. Drisco11
`
`Attorney for Opposer
`866 United Nations Plaza
`
`New York, New York 10017
`
`(212) 813-5900
`
`

`
`TABLE OF CONTENTS
`
`Table of Authorities .................................................................................................................... .. ii
`
`STATEMENT OF FACTS ......................................................................................................... ..2
`
`I. Use of Advil ............................................................................................................................. ..2
`
`II. The Advalife Product ............................................................................................................. .. 5
`
`QUESTIONS PRESENTED ....................................................................................................... ..6
`
`ARGUMENT .............................................................................................................................. ..6
`
`1. Opposer’s Advil mark is strong and entitle to a broad scope of protection ...................... ..7
`
`a. Advil is coined and fanciful on the spectrum of marks .............................................. ..7
`
`b. The Advil mark has acquired strong marketplace recognition ................................... ..7
`
`2. The trademarks at issue are similar ................................................................................... ..9
`
`3. The goods at issue are closely related ............................................................................... ..10
`
`4. The advertising and trade channels at issue are not distinguished.................................... .. 13
`
`5. There is no evidence that the Advil mark has been diluted by third-party use ................. ..14
`
`6. Confusion is likely ............................................................................................................ .. 14
`
`7. Opposer will be damaged by issuance of a registration.................................................... .. 14
`
`CONCLUSION ........................................................................................................................... .. 15
`
`

`
`TABLE OF AUTHORITIES
`
`CASES
`
`American Distilling Co. v. Bellows & C0,, 88 U.S.P.Q. 254 (Ca. App. 1951) ............................ ..9
`
`American Home Products Corp. v. USVPharmaceutical Corp., 190 U.S.P.Q. 357
`(T.T.A.B. 1976) ......................................................................................................... ..12
`
`Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407 (2d Cir. 1917) ......................................... ..12
`
`Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1 U.S.P.Q. 2d 1813 (Fed.
`Cir. 1987) ................................................................................................................... ..14
`
`Centaur Communications Ltd, v. A/S/M Communications, 4 U.S.P.Q. 2d 1541 (2d Cir.
`1987) .......................................................................................................................... "14
`
`Chemical New York Corp. v. Conmar Form Systems, Inc., 1 U.S.P.Q. 2d 1139 (T.T.A.B.
`1986) .......................................................................................................................... "11
`
`In re E.I. DuPont DeNemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973) .............................. ..6, 9
`
`Frank Brunckhorst Co. v. G. Heileman Brewing Co., Inc., 35 U.S.P.Q. 2d 1102
`(E.D.N.Y. 1994) ......................................................................................................... ..12
`
`G.D. Searle & Co. v. Chas. Pfizer & Co., 121 U.S.P.Q. 74 (7th Cir. 1959) ................................ ..9
`
`Hancock v. American Steel & Wire Co., 97 U.S.P.Q. 330 (C.C.P.A. 1953) ................................ ..6
`
`Herbko International v. Kappa Books, 64 U.S.P.Q. 2d 1375 (Fed. Cir. 2002) .......................... ..14
`
`Hilson Research, Inc. v. Societyfor Human Resources Management, 27 U.S.P.Q. 2d
`1423 (T.T.A.B. 1993) ................................................................................................ ..11
`
`Kenner Parker Toys Inc. v. Rose Art Industries Inc., 22 U.S.P.Q. 2d 1453 (Fed. Cir.
`1992) ........................................................................................................................ ..6, 7
`
`In re Martins Famous Pastry Shoppe, Inc., 223 U.S.P.Q. 1289 (Fed. Cir. 1984) ..................... ..12
`
`Maternally Yours, Inc. v. Your Maternity Shop, Inc., 110 U.S.P.Q. 462 (2d Cir. 1956) ............. ..9
`
`Maytag Co. v. Luskin’s, Inc., 228 U.S.P.Q. 747 (T.T.A.B. 1986) ................................................ ..9
`
`Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 U.S.P.Q. 2d 1445
`(T.T.A.B. 1987) ........................................................................................................... ..9
`
`

`
`In re National Cycle Service, Inc., 194 U.S.P.Q. 97 (T.T.A.B. 1976) ....................................... ..11
`
`Nina Ricci, S.A.R.L. v. E.T.F Enterprises, Inc., 12 U.S.P.Q. 2d 1901 (Fed. Cir. 1989) .............. ..6
`
`Oxford Industries Inc. v. JBJ Fabrics Inc., 6 U.S.P.Q. 2d 1756 (S.D.N.Y. 1988) ...................... ..8
`
`Pennwalt Corp. v. Center Laboratories, Inc., 187 U.S.P.Q. 599 (T.T.A.B. 1975) .................... ..11
`
`Presto Products Inc. v. Nice-Pak Products, 9 U.S.P.Q. 2d 1895 (T.T.A.B. 1988) .................... ..10
`
`Simoniz Co. v. Permanizing Stations ofAmerica, Inc., 9 U.S.P.Q. 440 (C.C.P.A. 1931) ......... ..10
`
`Specialty Brands, Inc. v. Coflee Bean Distributors, Inc., 223 U.S.P.Q. 1281 (Fed. Cir.
`1984) ............................................................................................................................ ..9
`
`Sterling Drug, Inc. v. Lincoln Laboratories, Inc., 139 U.S.P.Q. 31 (7th Cir. 1963) .................... ..9
`
`Sterling Drug Inc. v. Merritt Corp., 119 U.S.P.Q. 444 (T.T.A.B. 1958) ................................... ..11
`
`Sterling Drug, Inc. v. Sebring, 185 U.S.P.Q. 649 (C.C.P.A. 1975) ..................................... ..12, 13
`
`Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 169 U.S.P.Q. 1 (2d Cir. 1971) ................ ..9
`
`Tiflany & Co. v. Tzflany Tile Corp., 145 U.S.P.Q. 483 (C.C.P.A. 1965) ................................... ..11
`
`Trek Bicycle Corp. v. Fier, 56 U.S.P.Q. 2d 1527 (T.T.A.B. 2000) ............................................ ..10
`
`Yale Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928) ................................................... ..14
`
`Yamaha International Corp. v. Stevenson, 196 U.S.P.Q. 701 (T.T.A.B. 1977) .......................... ..9
`
`MISCELLANEOUS
`
`2 J. Thomas McCarthy, McCarthy On Trademarks and Unfair Competition, § 11.83
`(2004) ....................................................................................................................... ..7, 8
`
`iii
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_______________________________________________________________x
`
`WYETH,
`
`V,
`
`DAVID M. GRAHAM,
`
`Opposer,
`
`Applicant.
`
`I
`
`'
`
`_______________________________________________________________x
`
`Opposition No. 91124967
`
`OPPOSER’S MEMORANDUM
`
`IN SUPPORT OF OPPOSITION
`
`This proceeding involves one of Opposer’s flagship brands, Advil, an arbitrary
`
`and famous trademark that has been used for over twenty years on an ever-expanding
`
`range of over-the-counter analgesics and related products. The application opposed
`
`covers vitamins, minerals and nutritional dietary supplements. The trademark is
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`Advalife, a mark that begins with the phonetic equivalent of Advil, with a non-distinctive
`
`addition.
`
`THE PROCEEDINGS HEREIN
`
`The Notice of Opposition was filed on December 20, 2001 by American Home
`
`Products Corporation, which subsequently changed its name to Wyeth. An Answer was
`
`filed by the Applicant on February 24, 2003.
`
`In support of the Opposition, Wyeth has submitted the testimony of Kevin
`
`Holmer, Group Director in charge of the marketing of products under the Advil brand,
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`

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`and numerous exhibits identified by Mr. Homler showing present and past use of Advil.
`
`It also filed a Notice of Reliance, with certified copies showing status and title in Wyeth,
`
`for the following United States Trademark Registrations, all of which are incontestable:
`
`Advil
`
`Advil
`
`Reg. No. 1,298,347
`
`for an analgesic preparation
`
`Reg. No. 1,635,943
`
`for anti-pyretic and anti-
`inflammatory preparations and
`preparations for the treatment
`ofjuvenile arthritis and osteo-
`arthritis
`
`Advil
`
`Reg. No. 1,942,746
`
`for cold and sinus relief
`medicines
`
`The Applicant did not submit evidence in support of the application.
`
`STATEMENT OF FACTS
`
`I. Use of Advil
`
`The Opposer, Wyeth, is a leading company in the development and marketing of
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`pharmaceutical and animal health care products. (Homler p. 5) Its business, the scope of
`
`which is apparent in its 2003 Annual Report, includes a great variety of products,
`
`including analgesics and multi-vitamin, mineral, and nutritional preparations. (Homler
`
`Ex. 2)
`
`Among the more significant of Opposer’s products are those sold under the Advil
`
`brand, which has been in use for over twenty years. (Homler p. 14) This line of
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`products, which began with an analgesic, has steadily grown over the years to meet new
`
`consumer health care needs, and now includes Original Advil, Advil Cold and Sinus,
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`Advil Migraine, Advil Flu and Bodyache, Advil Allergy Sinus, Advil Multi-Symptom
`
`Cold, and three formulations of Children’s Advil. (Homler p. 7, Ex. 3-A through PPP)
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`

`
`The products are intended for a variety of uses, including relief of pain, cold and sinus
`
`pain, migraine pain, flu symptoms, allergy and pain relief, sneezing and runny nose.
`
`(Homler p. 15)
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`These Advil products are sold in virtually every consumer outlet in which over-
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`the-counter analgesics are sold including pharmacies, chain drug stores, food stores and
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`convenience stores. They are also available in foil envelopes in mom and pop stores,
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`bodegas, gas stations, small retail outlets and dispensing machines. (Homler p. 12)
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`Various retailers offer them over the Internet. (Homler p. 13)
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`Advil products are available in tablet form and as caplets (which are formulated
`
`like tablets but look like capsules), gel-coated caplets and liquid-filled capsules. One
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`children’s formulation is liquid and another is chewable. (Homler p. 18) They are also
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`available in a variety of sizes and prices, including ten-count for $1.99; 24-count for $3 to
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`$4; and larger sizes in the $13-$15 range. (Homler p. 13)
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`The Advil brand is stamped on every tablet, caplet and capsule and is thus seen
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`every time a consumer takes one. (Homler Ex. 3) On typical packaging, Advil is shown
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`prominently, in eye-catching bright yellow, at least three times. (Homler Ex. 3)
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`Sales of Advil products, which have been consistent over the past ten years,
`
`totaled in excess of one billion dollars in the past three years alone. (Homler p. 14) The
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`Advil product line is among the top ten non-prescription medications in the United States
`
`and is a flagship brand of great value to Wyeth. (Homler p. 20)
`
`Not only have sales been impressive in size; so too have Wyeth’s advertising and
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`promotional efforts. Advil products are advertised in print, such as magazines, on radio,
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`television, on the lntemet, in mailings and other promotional activities, and on point of
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`

`
`sale displays. Wyeth also utilizes free standing inserts (FSI’s) with coupons distributed
`
`mostly with Sunday papers. This is an important promotional tool, seen by many
`
`millions of customers and potential customers. (Homler p. 8). In addition, numerous
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`retailers that offer Advil products for sale advertise them in newspapers and store fliers.
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`(Homler p. 8, Ex. 7)
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`Wyeth’s magazine advertising has been in such popular journals as Cosmopolitan,
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`Glamour, Self, Rurmers World, Newsweek, and Time. Advertising on television has
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`been on popular network-wide shows such as Good Morning America, The Today Show,
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`The Apprentice, Dateline, Law and Order, Everyone Loves Raymond, and various soap
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`operas including All My Children and General Hospital. (Homler p. 11) Consumer
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`exposure to the brand has thus been significant.
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`In addition, there has been advertising and promotion to health care professionals
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`in professional journals and at trade shows, and brochures about Advil products are used
`
`and left behind by sales representatives when visiting health care professionals. (Homler
`
`pp. 9, 10, Ex. 9, 10) In addition, Wyeth has websites which provide information to both
`
`consumers and health care professionals about the Advil products, so that they will think
`
`of that brand when purchasing or recommending such products. In addition, consumers
`
`also use the Advil site to subscribe to ongoing health care and pain relief communications
`
`through email. (Homler p. 17, Ex. 10, 11)
`
`The investment in this advertising and promotional program has been significant.
`
`Over the past three years it has exceeded $300,000,000.00, which is consistent with
`
`similar efforts over the past ten years. (Homler pp. 14-15)
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`

`
`It is not, in the circumstances, surprising that the brand has achieved fame.
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`Indeed, Mr. Holmer became aware of it in college, well before he joined Wyeth.
`
`(Holmer p. 14) Advertising has been so extensive that, in his opinion, almost everyone
`
`has heard of Advil. (Holmer p. 14) His opinion is supported by research. Not
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`surprisingly, a consumer recognition marketing study done in 2003 showed consumer
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`awareness of Advil at a very high 97%. This is consistent with prior consumer surveys.
`
`(Homler p. 15)
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`The generic name of the product on which Advil is used is ibuprofen. Advil has
`
`no descriptive connotation. (Holmer p. 15) It is completely fanciful and arbitrary.
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`Advil products are not limited to any specific class of consumer. They are used
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`basically by anyone who wants relief from the conditions for which the products are
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`indicated and consumers are thus all degrees of sophistication. (Homler, p. 13)
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`Wyeth also sells vitamins, minerals and nutritional dietary supplements under the
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`marks CENTRUM and SOLGAR and a calcium dietary supplement called CALTRATE.
`
`(Homler, p. 16)
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`It is recognized as a leader in this field. (Homler, pp. 16, 5) These
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`products, plus those in the Advil line, appear on Wyeth’s website. (Homler p. 17, Ex. 1 1)
`
`II. The Advalife Product
`
`Applicant seeks to register Advalife for use on vitamins, minerals and nutritional
`
`dietary supplements. There are no restrictions in the description of goods as to charmels
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`of distribution, class of consumers, form in which the products are sold, or method of
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`marketing.
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`Analgesic products such as Advil and vitamins, minerals, and nutritional
`
`supplements are sold in many of the same channels of trade, including pharmacies,
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`

`
`grocery stores, and drug stores. (Homler, p. 18). Retailers show the products in the same
`
`advertisements. (Homler Ex. 7 A, C, H, O, S) And, they are used by the same general
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`class of consumers. Many people regularly take vitamins, minerals and nutritional
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`supplements and also take analgesics as the occasion demands. (Homler, pp. 18-19)
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`QUESTIONS PRESENTED
`
`There is no dispute concerning Wyeth’s priority of rights in the trademark Advil.
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`Thus, the sole issue before the Board is whether Advalife, when applied to App1icant’s
`
`goods, is so similar to Advil as to be likely to cause confusion, mistake, or deception as to
`
`the source or sponsorship of those goods.
`
`ARGUMENT
`
`The controlling test for determining likelihood of confusion, mistake, or deception
`
`is set forth in In re E.I. DuPont DeNemours & Co., 177 U.S.P.Q. 563, 567 (C.C.P.A.
`
`1973).
`
`In applying the DuPont test, two additional broad principles apply. First,
`
`newcomers such as Applicant have the duty to avoid selecting a mark close to an
`
`established mark in order to protect the senior user’s goodwill and investment and to
`
`protect consumers from confusion. Kenner Parker Toys Inc. v. Rose Art Indus. Inc. , 22
`
`U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992); Nina Ricci, S.A.R.L. v. E.T.F Enterprises, Inc.,
`
`12 U.S.P.Q.2d 1901 (Fed. Cir. 1989).
`
`The second principle is that all doubts must be resolved in favor of the prior user.
`
`Nina Ricci, 12 U.S.P.Q.2d at 1904; Hancock v. American Steel & Wire Co. , 97 U.S.P.Q.
`
`330, 333 (C.C.P.A. 1953).
`
`

`
`Analysis of the relevant DuPont factors and the application of these broad
`
`principles leads inevitably to the conclusion that Applicant’s Advalife mark so resembles
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`the Advil mark as to be likely, when used on or in connection with Applicant’s goods, to
`
`cause confusion, or to cause mistake, or to deceive as to the source or sponsorship of
`
`Applicant’s goods.
`
`1. Opposer’s Advil mark is strong and entitled to a broad
`scope of protection
`
`As the Board has explained, “[a] strong mark .
`
`.
`
`. casts a long shadow which
`
`competitors must avoid.” Kenner Parker Toys Inc. , 22 U.S.P.Q.2d at 1456 (citation
`
`omitted). In cases involving a strong or famous mark, the fifth DuPont factor, fame of
`
`the mark, may play a dominant role. Id. Here, there can be no question that Advil is a
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`strong and famous mark that deserves the widest latitude of legal protection.
`
`The strength of a mark is determined first by examining “the placement of the
`
`mark on the spectrum of marks” and second by determining the extent of its exploitation
`
`and thus its marketplace recognition. 2 J. Thomas McCarthy, McCarthy On Trademarks
`
`and Unfair Competition, § 11.83 at 11-162 (2004) (hereinafter “McCarthy”).
`
`a.
`
`Advil is coined and fanciful on the spectrum of
`marks
`
`Advil has no meaning when applied to the goods of Opposer, except
`
`insofar as it functions as a trademark indicating source. The generic name of the
`
`principal ingredient is ibuprofen, which obviously does not conjure up the
`
`trademark in question. (Holmer p. 15) It is clearly coined and fanciful when used
`
`on analgesic products, and thus inherently strong.
`
`b.
`
`The Advil mark has acquired strong marketplace recognition
`
`In measuring the impact of this inherently strong trademark in the marketplace,
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`

`
`the Board may look to a number of factors, including, but not limited to, the length and
`
`manner of use, volume of sales, and the extent of advertising. See Oxford Indus. Inc. v.
`
`JBJFabrics Inc., 6 U.S.P.Q.2d 1756, 1760 (S.D.N.Y. 1988); 2 McCarthy § 11.83 at 11-
`
`162. Using any of these criteria, Opposer's mark is exceedingly strong.
`
`Opposer began using the Advil mark twenty years ago, and has used it
`
`continuously since. In the last three years alone, sales have exceeded the impressive
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`figure of $1,000,000,000.00. Prior sales figures are consistent with this. Indeed, the
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`Advil product line is among the top ten non-prescription medications sold in the United
`
`States. (Holmer pp. 14, 20)
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`Also important in assessing the strength of the Advil mark is its presence in the
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`marketplace.
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`It is offered virtually everywhere that an over-the-counter medication can
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`be purchased, including pharmacies, chain drug stores, food stores and convenience
`
`stores. It is also sold in packets in mom and pop stores, bodegas, gas stations, small retail
`
`outlets and dispensing machines, and it is even sold by retailers via the Internet. Every
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`Advil tablet is sold in packaging that prominently bears the trademark in eye-catching
`
`yellow and every Advil tablet, capsule and caplet shows the trademark. (Homler pp. 3,
`
`12, 13) Consumers and prospective consumers are thus regularly exposed to the mark
`
`wherever the product is shelved, taken, or advertised.
`
`As explained more fully above, the success of Advil is directly attributable to
`
`Wyeth’s tremendous investment in advertising and promoting the mark. Many millions
`
`per year have been spent in advertising and promoting the product, in principal part to the
`
`general public. Wyeth’s advertisements for Advil air extensively on television and reach
`
`consumers via the Internet and magazines of general interest and in FSI’s distributed in
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`

`
`great quantities with Sunday newspapers. (Homler p. 8)
`
`The mark Advil is thus not only inherently distinctive, but, through long and
`
`extensive use and promotion, has become a very well known trademark with a
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`recognition rate of 97%, which is phenomenal. (Homler p. 15) Under the circumstances,
`
`it is clearly entitled to the broadest scope of protection available to a trademark.
`
`Maternally Yours, Inc. v. Your Maternity Shop, Inc., 110 U.S.P.Q. 462, 467 (2d Cir.
`
`1956); Miles Labs. Inc. v. Naturally Vitamin Supplements Inc., 1 U.S.P.Q.2d 1445, 1453
`
`(T.T.A.B. 1987); Maytag Co. v. Luskin’s, Inc., 228 U.S.P.Q. 747, 750 (T.T.A.B. 1986);
`
`Specialty Brands, Inc. v. Coffee Bean Distribs. Inc., 223 U.S.P.Q. 1281, 1284 (Fed. Cir.
`
`1984)
`
`2.
`
`The trademarks at issue are similar
`
`Similarity of the marks is based on the overall impression that they create,
`
`including the sound, appearance, connotation and commercial impression. In re E.I.
`
`DuPont DeNemours, 177 U.S.P.Q. at 567. “Slight differences in the sound of similar
`
`trademarks will not protect the infringer.” G. D. Searle & Co. v. Chas. Pfizer & Co., 121
`
`U.S.P.Q. 74, 77 (7th Cir. 1959) (holding DRAMAMINE and BONAMINE confusingly
`
`similar).
`
`Marks have been held to be confusingly similar based, in part, on phonetic
`
`similarity. See, e.g., Yamaha Int ’l Corp. v. Stevenson, 196 U.S.P.Q. 701, 703 (T.T.A.B.
`
`1977) (MAKAHA confusingly similar to YAMAHA); Sterling Drug, Inc. v. Lincoln
`
`Labs, Inc., 139 U.S.P.Q. 31, 33 (7th Cir. 1963) (DIAPARENE confusingly similar to
`
`DYPRIN); Syntex Labs., Inc. v. Norwich Pharmacal C0,, 169 U.S.P.Q. 1, 2-3 (2d Cir.
`
`1971) (VAGITROL and VAGESTROL confusingly similar); American Distilling Co. v.
`
`

`
`Bellows & Co., 88 U.S.P.Q. 254, 262 (Cal. App. 1951) (FELLOWS confusingly similar
`
`to BELLOWS); Trek Bicycle Corp. v. Fier, 56 U.S.P.Q. 2d 1527 (TTAB 2000)
`
`(TREKNOLOGY confixsingly similar to TREK).
`
`Advil and Advalife are also phonetically similar. Applicant’s mark is made up of
`
`a prefix identical in sound to Advil, with a non-distinctive suffix. The difference between
`
`the trademarks in short is not sufficient, particularly given the similarity in prefix, see,
`
`e.g. Presto Products Inc. V. Nice-Pak Products, 9 U.S.P.Q.2d 1895, 1897 (T.T.A.B.
`
`1988) in which the Board, in assessing the similarity between KIDWIPES and KID
`
`STUFF attributed great significance to the fact that both began with KID calling this “a
`
`matter of some importance since it is often the first part of a mark which is most likely to
`
`be impressed upon the mind of a purchaser and remembered.”
`
`In any event, the public ought not to be required to dissect and analyze the
`
`trademarks in order to spot differences between them, Simoniz Co. v. Permanizing
`
`Stations ofAmerica, Inc., 9 U.S.P.Q. 440, 441 (C.C.P.A. 1931). This is especially so
`
`since health care products are involved and there is thus an important public interest in
`
`avoiding confusion.
`
`3. The goods at issue are closely related
`
`Applicant seeks to register its mark for “vitamins, minerals, and dietary
`
`nutritional supplements.” Board precedent establishes that the goods at issue need not be
`
`identical or competitive in nature to support a finding of likelihood of confusion. Rather,
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`it is sufficient that the goods are related in some manner and/or that circumstances
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`surrounding their marketing are such that they would be likely to be encountered by the
`
`same persons under circumstances that could give rise to the mistaken belief that they
`
`10
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`

`
`originate from or are in some way associated with the same source. Hilson Research,
`
`Inc. v. Societyfor Human Resources Management, 27 U.S.P.Q.2d 1423, 1432 (T.T.A.B.
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`1993); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 U.S.P.Q.2d 1139,
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`1143 (T.T.A.B. 1986).
`
`Here, the goods are related in a number of ways that make it likely, if not
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`inevitable, that consumers will mistakenly believe that the goods originate from or are in
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`some way associated with the same source. As an initial and significant matter, the
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`products here are both over-the-counter health aids, sold in similar trade channels.
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`(Homler p. 18)
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`The fact that the products are in the same general product category bears on their
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`relationship for purposes of determining confiision. See, e. g. , Sterling Drug Inc. v.
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`Merritt Corp., 119 U.S.P.Q. 444, 445 (T.T.A.B. 1958) (SUPERIN for over-the-counter
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`medications confusingly similar to SUPRARENIN for prescription medications as both
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`are “pharmaceutical preparations intended for internal use”); Pennwalt Corp. v. Center
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`Lab, Inc., 187 U.S.P.Q. 599, 601 (T.T.A.B. 1975) (ALLERSET for use on allergenic
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`extracts sold to physicians in general practice, allergists and clinics found confusingly
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`similar to ALLEREST used on over—the-counter allergy treatments sold to consumers as
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`“both products are used in the same general field, i.e., the treatment of allergies”); Tijfany
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`& Co. v. Tiffany Tile Corp., 145 U.S.P.Q. 483 (C.C.P.A. 1965) (TIFFANY on ceramic
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`tile held confusingly similar to TIFFANY on jewelry and personal effects; Board noted
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`that both were members of the decorative household products category); In re National
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`Cycle Service, Inc., 194 U.S.P.Q. 97, 99 (T.T.A.B. 1976) (DOTSON for bicycles
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`confusingly similar to DATSUN for automobiles; “wheeled vehicles” include autos and
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`bicycles). Here, the goods are certainly more closely related than autos and bicycles or
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`jewelry and ceramic tiles.
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`Here the consuming public overlaps. Persons who take vitamins, minerals, and
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`dietary nutritional supplements also take analgesics as needed. (Homler pp. 18, 19) The
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`Board has long recognized that complementary use is a relevant consideration in
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`determining likelihood of confusion. In re Martin ’s Famous Pastry Shoppe, Inc., 223
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`U.S.P.Q. 1289, 1290 (Fed. Cir. 1984) (wine and cheese are complementary products as
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`they are often used together); American Home Products Corp. v. USV Pharmaceutical
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`Corp., 190 U.S.P.Q. 357, 359 (T.T.A.B. 1976) (Board found PREMARIN for conjugated
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`estrogen and PRESAMINE for prescription antidepressant medication confusingly
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`similar while noting that the two medications could be overlapping in their uses); Aunt
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`Jemima Mills Co. v. Rigney & Co., 247 F. 407, 410 (2d Cir. 1917) (J. Hand) (finding
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`confusion between marks used on syrup and flour and noting that both are “food
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`products, and food products commonly used together”); Frank Brunckhorst Co. v. G.
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`Heileman Brewing Co., Inc., 35 U.S.P.Q.2d 1102, 1110 (E.D.N.Y. 1994) (finding
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`confusion between marks used on deli meats and beer and noting that “beer is regularly
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`consumed with deli products of the type sold by plaintiffs”).
`
`In Sterling Drug, Inc. v. Sebring, 185 U.S.P.Q. 649 (C.C.P.A. 1975), the
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`Applicant sought to register an ankh design for use in connection with hair conditioner
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`and shampoo. Id. at 650. Opposer objected based on its four, prior-filed registrations for
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`an ankh design used in connection with a variety of ethical pharmaceuticals, i.e., drugs
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`that “can only be purchased upon the written prescription of the physician.” Id. at 652, n.
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`3. The Court found confusion likely and, in doing so, specifically rejected the argument
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`that prescription goods and toiletry products could not be considered related, stating: “We
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`can only guess what is meant by a reasonable relationship, but, whatever it means, we
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`think it exists because it would not be unreasonable to suppose that the same company
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`makes both pharmaceuticals and toiletries.” Id. at 652.
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`In the present case, not only are the same consumers candidates for the products
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`of Opposer and Applicant. It is also apparent from the testimony that the Opposer not
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`only sells the Advil branded analgesic products, but is also a major marketer of vitamins,
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`minerals and dietary supplements. (Homler p. 16) This greatly enhances the likelihood
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`of confusion as to source. So too does the fact that the number of products in the Advil
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`line has increased regularly over the years. Each addition slightly varied the mark by
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`combining Advil with another word or words depending on the intended use. The
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`likelihood that consumers would believe that Advalife vitamins, minerals and dietary
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`supplements are the next in the Opposer’s product line is evident.
`
`4.
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`The advertising and trade channels at issue are not distinguished
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`Advertisements for Advil have appeared in all forms of mass media, including
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`television, the Internet and magazines of general interest. Although Applicant has not put
`in any evidence regarding its advertising plans, the record makes it clear that there are
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`unlikely to be channels of advertising available to it that Wyeth has not already utilized
`
`for promoting Advil.
`
`With regard to trade channels for the products, in the absence of any restriction in
`
`the description of goods as to the charmels of trade or the target consumers, it is
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`presumed that Applicant’s goods travel in all of the normal channels of trade for
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`vitamins, minerals and dietary nutritional supplements and to all consumers of such
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`goods. See Canadian Imperial Bank ofCommerce V. Wells Fargo Bank, 1 U.S.P.Q.2d
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`1813, 1815 (Fed. Cir. 1987). Such products are sold in many of the same outlets as
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`analgesics.
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`Given the overlapping audience and the close proximity in which the products
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`will be sold, the likelihood of confusion here is enhanced. Applicant has submitted no
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`evidence concerning the price of its products or any alleged sophistication of its
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`consumers. Since Advil is taken by anyone needing relief from headache or other
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`ailments, it is obvious that all degrees of sophistication are involved.
`
`5.
`
`There is no evidence that the Advil mark has been diluted by third-
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`party use
`
`The Advil trademark is undiluted by third-party use. Opposer is unaware of any
`
`such use and Applicant has submitted no such evidence.
`
`6.
`
`Confusion is likely
`
`Opposer has not presented evidence that confusion has already occurred.
`
`However, that, of course, is not the test Centaur Communications Ltd, v. A/S/M
`
`Communications, 4 U.S.P.Q.2d 1541, 1549 (2d Cir. 1987), particularly since there has
`
`been no proof of long and widespread co-existence, Herbko International v. Kappa
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`Books, 64 U.S.P.Q.2d 1375, 1380 (Fed. Cir. 2002)
`
`7.
`
`Opposer will be damaged by issuance of a registration
`
`Mr. Homler testified as to the great importance of Advil, characterizing it as a
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`“flagship” brand. (Homler p. 20) The reputation for high quality that has become
`
`associated with it over the years would be irreparably put in danger if a mark as close as
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`Advalife were to be used on another health care product with quality over which Wyeth
`
`has no control. (Homler p. 19-20) Judge Hand’s observations in Yale Electric Corp. v.
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`
`Robertson, 26 F.2d 972, 974 (2d Cir. 1928) are still on point today:
`
`His mark is his authentic seal; by it he vouches for the goods which
`bear it; it carries his name for good or ill. If another uses it, he
`borrows the owner’s reputation, whose quality no longer lies within
`his own control. This is an injury, even though the borrower does not
`tarnish it, or divert any sales by its use; for a reputation, like a face, is
`the symbol of its possessor and creator, and another can use it only as
`a mask.
`
`In this instance, the reputation of Wyeth as embodied by its Advil mark, is on the
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`line and the injury to Wyeth is clear.
`
`Since healthcare products are at issue, there is also a strong public interest in
`
`avoiding all confusion or mistake. The applicant in this proceeding had a universe of
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`possible marks from which to pick. It is clear that he came too close to the famous Advil
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`mark. Under applicable law, registration of the Advalife mark should be refused.
`
`CONCLUSION
`
`On