S
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`‘»
`
`n
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`3
`
`TTAB
`
`Mailed:
`
`October 24, 2005
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`Wyeth
`v.
`
`David M. Graham
`
`Opposition No. 91124967
`to application Serial No. 761479801
`
`Marie V. Discoll of Fross Zelnick Lehrman & Zissu, P.C.,
`
`and Bret I. Parker of Wyeth, for Wyeth
`
`David M. Graham, pro se
`
`CORRECTION
`
`By the Board:
`
`A copy of the attached decision was entered in the Board's
`
`electronic records with a mailing date of October 13,
`
`2005, but
`
`the decision was inadvertently not mailed on
`
`that date. As indicated on the attached copy,
`
`the
`
`decision is being mailed on October 24, 2005.
`
`The period
`
`for requesting reconsideration or filing an appeal will
`
`run from October 24, 2005.
`
`\\\|\\\\\|\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\
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`1 1-08-2005
`M 1 Rep! 0‘ ‘"2
`u$Pamm&TMOhfiM m
`
`
`
`‘»
`
`n
`
`3
`
`TTAB
`
`Mailed:
`
`October 24, 2005
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`Wyeth
`v.
`
`David M. Graham
`
`Opposition No. 91124967
`to application Serial No. 761479801
`
`Marie V. Discoll of Fross Zelnick Lehrman & Zissu, P.C.,
`
`and Bret I. Parker of Wyeth, for Wyeth
`
`David M. Graham, pro se
`
`CORRECTION
`
`By the Board:
`
`A copy of the attached decision was entered in the Board's
`
`electronic records with a mailing date of October 13,
`
`2005, but
`
`the decision was inadvertently not mailed on
`
`that date. As indicated on the attached copy,
`
`the
`
`decision is being mailed on October 24, 2005.
`
`The period
`
`for requesting reconsideration or filing an appeal will
`
`run from October 24, 2005.
`
`\\\|\\\\\|\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\
`
`1 1-08-2005
`M 1 Rep! 0‘ ‘"2
`u$Pamm&TMOhfiM m
`
`
`
`
`
`5)
`
`THIS DISPOSITION IS NOT
`CITABLE AS PRECEDENT
`
`OF THE TTAB
`
`Mailed:
`October 13, 2005
`Bucher
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trademark Trial and Appeal Board
`
`Wyeth‘
`
`V.
`
`David M. Graham
`
`Opposition No. 91124967
`against Serial No. 76147801
`
`Marie V. Driscoll of Fross Zelnick Lehrman & Zissu, P.C.,
`and Bret I. Parker of Wyeth, for Wyeth.
`
`David M. Graham, pro se.
`
`Before Walters, Bucher and Drost, Administrative Trademark
`Judges.
`
`Opinion by Bucher, Administrative Trademark Judge:
`
`David M. Graham seeks registration on the Principal
`
`Register of the mark Adual-Ife for goods identified in
`
`1
`
`The opposition was originally filed by American Home
`Products Corporation. However, on March 11, 2002, American Home
`Products Corporation changed its corporate name to Wyeth.
`
`-1-
`
`
`
`
`
`the application as “vitamins, minerals and nutritional
`
`dietary supplements,” in International Class 5.2
`
`Registration has been opposed by Wyeth (formerly
`
`American Home Products Corporation). As its ground for
`
`opposition, opposer asserts that applicant's mark when
`
`used in connection with applicant's goods so resembles
`
`opposer’s previously used and registered mark, ADVIL, as
`
`to be likely to cause confusion,
`
`to cause mistake or to
`
`deceive under Section 2(d) of the Lanham Act.
`
`Applicant,
`
`in its answer, has denied the salient
`
`allegations in the opposition.
`
`By operation of the rules,
`
`the record includes the
`
`pleadings and the file of the opposed application.
`
`opposer has also made of record its pleaded registrations
`
`by submitting certified status and title copies of the
`
`following registrations:
`
`(STANDARD CHARACTER DRAWING)
`1 2 9 8 3 4 7
`REGISTRATION N0 -
`for “an Analgesic Preparation” in International Class 5;3
`
`2
`
`Application Serial No. 76147801 was filed on October 16,
`2000 based upon applicant's allegation of a bona fide intention
`to use the mark in commerce.
`
`Registration No. 1298347 issued on October 2, 1984,
`3
`claiming first use anywhere and first use in commerce at least
`as early as July 14, 1983;
`renewed.
`
`-2-
`
`
`
`V‘
`
`F
`
`(STANDARD CHARACTER DRAWING)
`3
`1 6 3 5
`'
`for “anti—pyretic and anti—inflammatory preparations and
`preparations for the treatment of juvenile arthritis,
`rheumatoid arthritis and osteoarthritis” in International
`Class 5;4 and
`
`(STANDARD CHARACTER DRAWING)
`1 94 2 74 5
`REGISTRATION NO -
`for “cold and sinus relief medicines” in International Class 5.5
`
`Opposer, as part of its case—in-chief, has also made
`
`of record, pursuant to a notice of reliance,
`
`the
`
`testimonial deposition of Kevin Homler, Group Product
`
`Director in charge of marketing products under the
`
`ADVH_]3rand, and exhibits thereto. Applicant submitted no
`
`evidence in this proceeding and did not file a brief.
`
`As noted above, opposer has shown that its pleaded
`
`registrations are valid, subsisting and owned by opposer.
`
`Thus,
`
`this proof removes the issue of priority from this
`
`case.
`
`See King Candy go. V. Eunice King's Kitchen,
`
`Inc ,
`
`496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
`
`Accordingly, as to the claim of priority of use and
`
`likelihood of confusion,
`
`the focus of our determination is
`
`on the issue of whether applicant's mark, when used in
`
`connection with the goods set forth in his application,
`4
`
`so
`
`Registration No. 1635943 issued on February 26, 1991,
`claiming use anywhere and use in commerce at least as early as
`July 14, 1983;
`renewed.
`5
`Registration No. 1942746 issued on December 19, 1995,
`claiming first use anywhere and first use in commerce at least
`as early as November 1991;
`renewed.
`
`-3-
`
`
`
`
`
`resembles opposer’s ADVH.nmrk as to be likely to cause
`
`confusion,
`
`to cause mistake or to deceive as to source or
`
`sponsorship.
`
`The record demonstrates that opposer is a leading
`
`company in the development and marketing of pharmaceutical
`
`products,
`
`including analgesics and multi-vitamin, mineral,
`
`and nutritional preparations.
`
`opposer’s ADVfl.brand of
`
`products has been in use for over twenty years. This line
`
`of products began with an analgesic, but has steadily
`
`grown over the years to meet new consumer health care
`
`needs (e .g. , ORIGINAL ADVIL, ADVIL COLD AND SINUS, ADVIL
`
`MIGRAINE, ADVIL FLU AND BODYACHE, ADVIL ALLERGY SINUS, ADVIL
`
`MULTPSYMPTONICOLD, and three formulations of CHIUDREN5
`
`ADVIL). These products are intended for a variety of uses I
`
`including relief of pain, cold and sinus pain, migraine
`
`pain, flu symptoms, allergy and pain relief, sneezing and
`
`runny nose.
`
`According to the testimony of Mr. Homler, ADVH.
`
`products are sold in virtually every consumer outlet in
`
`which over—the—counter analgesics are sold including
`
`pharmacies, chain drug stores,
`
`food stores and convenience
`
`stores.
`
`They are also available in foil envelopes in
`
`smaller retail outlets and dispensing machines.
`
`
`
`
`
`.ADVH.products are available in tablet form and as
`
`caplets, gel—coated caplets and liquid—filled capsules.
`
`They are also available in a variety of sizes and prices.
`
`The ADVfl.brand is stamped on every tablet, caplet and
`
`capsule and is thus seen every time a consumer takes one.
`
`On typical packaging,
`
`the ADVH.mark is shown prominently
`
`in bright yellow lettering at least three times.
`
`The volume of annual sales of ADVfl.products has been
`
`consistent over the past ten years — totaled in excess of
`
`one billion dollars over the past three years alone.
`
`In
`
`fact,
`
`the ADVH.product line is among the top ten non-
`
`prescription medications in the United States.
`
`Opposer’s promotional efforts include print
`
`advertisements (e.g.,
`
`in glossy magazines and free
`
`standing inserts in Sunday newspapers), ads on radio,
`
`television and on the Internet, as well as through mass
`
`mailings, point of sale displays and a variety of other
`
`promotional activities.
`
`Promotions to health care
`
`professionals include ads in professional journals, a
`
`presence at trade shows, and visits by pharmaceutical
`
`sales representatives. Opposer uses several of its
`
`websites to provide information about the ADVfl.products to
`
`consumers as well as health care professionals. Over the
`
`-5-
`
`
`
`
`
`
`
`
`
`past three years alone, opposer has expended more than
`
`three-hundred million dollars on its advertising and
`
`promotional program on behalf of the ADVfl.brand.
`
`As to the success of this promotional activity,
`
`consistent with prior consumer surveys, a recent consumer
`
`recognition marketing study (2003)
`
`showed consumer
`
`awareness of the ADVfl.brand at 97%.
`
`Applicant seeks to register AdvaLfle for use on
`
`vitamins, minerals and nutritional dietary supplements.
`
`Our determination under Section 2(d)
`
`is based on an
`
`analysis of all of the probative facts in evidence that
`
`are relevant to the factors bearing on the issue of
`
`likelihood of confusion.
`
`In re E.£. du Pont de Nemours §
`
`£§., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
`
`Turning first to the goods,
`
`the products herein are
`
`both over—the-counter health aids. Because there are no
`
`limitations as to the channels of trade in applicant's
`
`application or in opposer’s registrations, we must assume
`
`that the parties’ goods would be sold in the same channels
`
`of trade and to the same classes of consumers.
`
`See
`
`ganadiag Imperial Bank of Commerce 3; Wells Fargo Bank,
`
`E5, 811 F.2d 1490,
`
`1 USPQ2d 1813 (Fed. Cir. 1987)
`
`[the
`
`question of likelihood of confusion must be determined
`
`
`
`/ ..:
`
`o
`
`based on an analysis of the mark as applied to the goods
`
`and/or services recited in applicant's application vis—a-
`
`vis the goods and/or services recited in an opposer's
`
`registration]; see also, Sterling Qrgg lgg. V. Merritt
`
`gg£p., 119 USPQ 444, 445 (TTAB 1958); and Pennwalt ggrp.
`
`V. genter Lab.,
`
`Inc , 187 USPQ 599, 601 (TTAB 1975).
`
`The
`
`record demonstrates that products such as vitamins,
`
`minerals and nutritional dietary supplements (products
`
`that opposer also sells under different marks) will be
`
`sold in many of the same outlets as are analgesics.
`
`As to the du Pont factor focusing on the conditions
`
`under which and buyers to whom sales are made,
`
`the
`
`evidence shows that small packages of analgesics,
`
`like
`
`small bottles of vitamins, are relatively inexpensive, and
`
`are sold to members of the general public rather than to
`
`sophisticated purchasers. As a result,
`
`the purchase of
`
`small quantities of over-the—counter health aids would not
`
`be the subject of a great deal of thought or analysis.
`
`We turn next to the du Pont factor focusing on the
`
`fame of the prior mark. As a result of opposer's
`
`impressive volume of sales and extensive promotional
`
`activities, and in light of recent survey results
`
`demonstrating widespread public recognition of the mark,
`
`
`
`
`
`we find opposer's ADVfl.mark is indeed a famous mark.
`
`Fame, of course, plays a dominant role in cases featuring
`
`a well-known or strong mark, as such marks enjoy a wide
`
`latitude of legal protection. As the Court said in Kenner
`
`garker Toys Inc. V. Rose Art Industries, Inc., 963 F.2d
`
`350, 22 USPQ2d 1453 (Fed. Cir. 1992), “the Lanham Act's
`
`tolerance for similarity between competing marks varies
`
`inversely with the fame of the prior mark.” Furthermore,
`
`as argued by opposer, ADVfl.is a totally arbitrary term for
`
`ibuprofen, and the record does not reveal any similar
`
`marks in use on related goods.
`
`With these points in mind, we turn to a consideration
`
`of the similarity or dissimilarity of the parties’ marks
`
`in their entireties as to appearance,
`
`sound, connotation
`
`and commercial
`
`impression.
`
`We find that ADVH.and AdvaLHe are similar as to
`
`appearance and sound.
`
`The prefix portion of applicant's
`
`mark is substantially the same as opposer's arbitrary
`
`mark. This first part of a mark is most likely to be
`
`impressed upon the mind of a purchaser and remembered.
`
`The upper—case letter “L”
`
`in applicant's special form
`
`drawing only accentuates the similarity in appearance
`
`
`
`between the first five letters of each mark (e g., “advil”
`
`and “adval”).
`
`Irrespective of the type of goods involved, it is
`
`well settled that similarity in sound alone may be
`
`sufficient to support a finding of likelihood of
`
`confusion.
`
`See Krim—Ko ggrp. V. Coca—Cola §g., 390 F.2d
`
`728, 156 USPQ 523, 526 (CCPA 1968). This would be even
`
`more compelling given the public interest in avoiding
`
`confusion between different health care products.
`
`As to connotation and commercial
`
`impression, ADVfl.is
`
`a coined term for analgesics. When used in connection
`
`with vitamins and mineral supplements, applicant's “Life”
`
`suffix is not particularly distinctive.
`
`The likelihood of
`
`confusion is greater given that the number of products in
`
`the ADVIL line has increased regularly over the years.
`
`With each addition, opposer slightly varied the product
`
`mark by combining ADVfl.with another word or words
`
`describing the intended use. Hence, consumers might well
`
`believe, mistakenly,
`
`that AdvaLHe vitamins, minerals and
`
`dietary supplements are simply the latest addition to
`
`opposer’s product line.
`
`On this record, after weighing all the du Pont
`
`factors, we find that the mark AdvaLfle is likely to cause
`
`
`
`confusion with ADVTL when applied to over—the—counter
`
`health aids.
`
`Decision:
`
`The opposition is sustained on the ground
`
`of likelihood of confusion under Section 2(d) of the
`
`Lanham Act, and registration to applicant is hereby
`
`refused.
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