.., A
`
`gw.-A
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Illlllllllllll!!!llllllllllHlflllflllllllllflllll
`
`Opposer,
`
`V.
`FOUR STAR PARTNERS,
`
`V Opposition No. 91150890
`
`'
`
`:
`Applicant.
`____________________________________________________________ -_X
`
`OPPOSER’S BRIEF
`
`Ronald J. Baron
`
`R. Glenn Schroeder
`
`HOFFMANN & BARON, LLP
`6900 Jericho Turnpike
`Syosset, New York 11791
`Ph: (516) 822-3550
`Fax: (516) 822-3582
`
`Attorneys for Opposer
`
`

`
`
`
`A3
`
`‘
`
`TABLE OF CONTENTS;
`
`Page(s)
`
`IDENTIFICATION OF PARTIES AND STATUS OF CASE ........................................ .. 1
`
`DESCRIPTION OF THE RECORD ................................................................................ .. 2
`
`III.
`
`IV.
`
`FACTS .............................................................................................................................. .. 2
`
`ISSUES PRESENTED ...................................................................................................... .. 3
`
`ARGUMENTS AND DISCUSSION ................................................................................. .. 4
`
`1.
`
`OPPOSER HAS STANDING TO OPPOSE THE REGISTRATION
`
`OF U.S. APPLICATION SERIAL NO. 75/907,375 FOR THE MARK
`DERMASTAR IN THAT OPPOSER HAS DEMONSTRATED A REAL
`INTEREST IN THIS
`
`CASE ......................................................................................... ..4
`
`2.
`
`THE OPPOSITION SHOULD BE SUSTAINED BASED SOLELY
`
`ON THE PLEADINGS ................................................................... ..4
`
`3.
`
`APPLICANT'S MARK DERMASTAR, AS USED ON OR IN
`CONNECTION WITH THE TREATMENT OF WOUNDS ORSKIN,
`SO RESEMBLES OPPOSER’S REGISTERED MARK DERMOSTAT
`
`AND OPPOSER’S COMMON LAW MARK DERMOSTAT, AS USED
`ON OR IN CONNECTION WITH PHARMACEUTICAL PREPARATIONS
`
`FOR TREATMENT OF WOUNDS AND DERMATOLOGICAL
`
`APPLICATIONS, AS TO BE LIKELY TO CAUSE CONFUSION AMONG
`THE PURCHASING PUBLIC .......................................................... ..7
`
`A.
`
`The Similarity Or Dissimilarity Of The Marks
`In Their Entireties As To Appearance, Sound, Connotation And
`Commercial Impression. .........
`...........
`................................................... .. 8
`
`The Similarity Or Dissimilarity And Nature Of
`The Goods Or Services As Described In An
`
`Application Or Registration Or In Connection
`With Which A Prior Mark Is In Use. ...................................................... .. 10
`
`The Similarity Or Dissimilarity Of Established, Likely—To—Continue Trade
`Channels .................................................................................................. .. 11
`
`The Fame Of The Prior Mark (Sales, Advertising, Length Of Use) ....... .. 11
`
`The Number And Nature Of Similar Marks In Use On Similar Goods.... l2
`
`

`
` \'
`
`O
`
`F.
`
`G.
`
`H.
`
`The Extent Of Potential Confusion, I.E.,, Whether De Minimis Or
`Substantial ............................................................................................... .. 12
`
`Other du Pont Factors ............................................................................. .. 13
`
`Conclusion................................................................................................ .. 13
`
`4.
`
`APPLICANT DOES NOT HAVE A BONA FIDE INTENT TO
`
`USE THE MARK DERMASTAR, IN CONNECTION WITH THE
`GOODS LISTED IN THE STATEMENT OF GOODS AND
`
`SERVICES, FILED IN ITS INTENT TO USE APPLICATION.
`
`VI.
`
`CONCLUSION . .
`
`.
`
`.
`
`.
`
`.
`
`.
`
`.
`
`. . . .. .............................. ll‘....................................... ..15
`
`

`
`» §
`
`l:(.
`
`’ TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Commodore Electronics Ltd. v. CBM Kabushiki Kaisha,
`
`26 U.S.P.Q.2d 1503, 1507 (T.T.A.B. 1993) ............................................................ ..15
`
`Cunningham v. Laser GolfCorp., 222 F.3d 943 (Fed. Cir. 2000) ..................................... ..10
`
`Estate ofBir0 v. Bic Corp., 18 U.S.P.Q.2d 1382 (T.T.A.B. 1991) .................................... ..4
`
`Harjo v. Pro Football, 30 U.S.P.Q.2d 1828 (T.T.A.B. 1994) ......................................... ..4
`
`In re Azteca Resturant Enterprises Inc., 50 U.S.P.Q.2d 1209
`(T.T.A.B.1999) .............................................................................................. ..8
`
`In re E. I. du Pont de Nemours & C0., 476 F.2d 1357,
`177 U.S.P.Q. 563 (C.C.P.A. 1973) .................................................................... ..8—13
`
`Lane Ltd. v. Jackson Int ’l Trading Co., 33 U.S.P.Q.2d 1351
`(T.T.A.B. 1994) ........................................................................................................................... ..14
`
`Octocom Systems v. Houston Computer Services, Inc., 918 F.2d 937
`(Fed. Cir.1990) ........................................................................................................................ ..10,11
`
`Presto Products, Inc. v. Nice—Pak Products, Inc., 9 U.S.P.Q.2d 1895
`(T.T.A.B. 1988) ............................................................................................................................. ..9
`
`Statutes and Rules
`
`Fed. Rules Civ. Proc. Rule 8(b), 28 U.S.C.A ............................................................ ..6
`
`Fed. Rules Civ. Proc. Rule 8(d), 28 U.S.C.A ............................................................ ..6
`
`Lanham Act§ 13, 15 U.S.C.A. § 1063 .......................................................................................... ..7
`
`Lanham Act § 2(d), 15 U.S.C.A. § 1052 ....................................................................................... ..7
`
`Lanham Act § 1(b), 15 U.S.C.A. 15 U.S.C.A. § 1052 ................................................................. ..14
`
`iii
`
`

`
`t 9
`
`Treatises
`
`3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
`§ 19:14 at 19-33 to 19-35 (4‘“ Ed. 2000) ....................................................................................... ..14
`
`3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
`§ 19:14 at 19-37 (4th Ed. 2000).................................................................................................... ..14
`
`3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
`§ 20:6 at 20-12 (4“‘ Ed. 2000) ......................................................................................................... ..6
`
`3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
`§ 20:15 at 20-25 (4‘“ Ed. 2000) ...................................................................................................... ..8
`
`3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
`§ 23:78 at 23-217 to 23-218 (4th Ed. 2000) .................................................................................... ..7
`
`iv
`
`

`
`
`
`I.
`
`‘
`
`IDENTIFICATION OF PARTIES AND STATUS OF CASE
`
`Opposer, Col1aGenex Pharmaceuticals, Inc., is a Delaware corporation having a place of
`
`business at 41 University Drive, Newton, Pennsylvania 18940. Applicant, Four Star Partners, is
`
`a California General Partnership doing business as Castle Beach Company and having a place of
`
`business at 245—M Mt. Hermon Road, Scotts Valley, California 95066.
`
`On January 7, 2000 Applicant filed U.S. trademark application Serial No. 75/907,375 for
`
`the mark DERMASTAR, the mark being published for opposition on October 16, 2001.
`
`Opposer filed a Request for an Extension of Time to file a Notice of Opposition on November
`
`14, 2001, requesting a sixty (60) day extension of time to file a Notice of Opposition. The TTAB
`
`granted an extension of time until January 14, 2002. Opposer filed a fiirther Request for an
`
`Extension of Time to file a Notice of Opposition on January 11, 2002, requesting an extension of
`
`time to file a Notice of Opposition to and including February 15, 200.2. Applicant opposed the
`
`further Request for an Extension of Time to File a Notice of Opposition, alleging that it did not
`
`consent to the extension. The TTAB granted the further extension until February 13, 2002.
`
`Opposer filed a notice of opposition objecting to the registration of such mark on
`
`February 6, 2002. Opposer filed an Amended Notice of Opposition, which included a second
`
`ground for opposition, on April 3, 2002, and Applicant filed its answer to the Notice of
`
`Opposition and Amended Notice of Opposition on April 24, 2003. Discovery was then
`
`conducted during the period extending until September 23, 2.002, and testimony was taken by
`
`Opposer during the period extending until December 22, 2002. No testimony was taken by
`
`Applicant during the period extending until February 20, 2003 and, as such, rebuttal testimony
`
`was not taken during the period extending until April 6, 20013.
`
`

`
`
`
`II.
`
`DESCRIPTION OF THE RECORD
`
`The evidence of record includes the testimonial deposition of Robert Ashley taken on
`
`December 19, 2002, together with Exhibits 1-9 attached thereto.
`
`III.
`
`FACTS
`
`Opposer is the owner of record of U.S. Trademark Registration No. 2,l59,34 issued May
`
`19, 1998 for the mark DERMOSTAT, as used on or in connection with pharmaceutical
`
`preparations, namely, tetracycline and tetracycline derivatives for treatment of wounds (Ashley p.
`
`4, line 8 to p. 12, line 4; Opp. Exhs. 1-5). Opposer is also the owner of the common law mark
`
`DERMOSTAT, as used on or in connection with pharmaceutical preparations for dermatological
`
`applications. (Ashely p. 12, line 6 to p. 24, line 22; Opp. Exhs. 6-9). In this regard, Opposer has,
`
`since at least as early as 1994, used the mark DERMOSTAT in connection with various
`
`pharmaceutical preparations, all of which are marketed for the treatment of wounds and
`
`dermatological applications (Ashely p.12, line 6 to p.14, line 9; Opp. Exh. 6), and has since, at
`
`least as early as July 17, 1997, used the mark DERMOSTAT in interstate commerce in
`
`connection with the mentioned goods (Ashley p. 7, line 5 to p. 8, line 17).
`
`Applicant’s U.S. trademark application Serial No. 75/907,375 for the mark
`
`DERMASTAR was filed January 7, 2000 as an intent to use application. To date, no statement
`
`of use has been filed. The application states that the mark is intended to be used in connection
`
`with each and every one of the goods and services listed in international classes 3 and 5,
`
`including treatment for wounds, skin and acne.
`
`

`
`
`
`IV.
`
`ISSUES PRESENTED
`
`The following issues are presented in this case:
`
`1.
`
`Does Opposer have standing to oppose the registration of U.S. trademark
`
`application Serial No. 75/907,375 for the mark DERMASTAR?
`
`2.
`
`3.
`
`Should the opposition be sustained based solely on the pleadings?
`
`Does Applicant's mark DERMASTAR, as used on or in connection with, inter
`
`alia, products for the treatment of wounds and other dermatological applications, so resemble
`
`Opposer's registered mark DERMOSTAT and Opposer’s common law mark DERMOSTAT as
`
`used on or in connection with pharmaceutical preparations for the treatment of wounds and other
`
`dermatological applications, as to be likely to cause confusion among the purchasing public?
`
`4.
`
`Does Applicant have a bona fide intent to use the mark DERMASTAR, in
`
`connection with all of the goods listed in the statement of goods?
`
`Opposer submits that questions one, two and three must be answered in the affirmative,
`
`and that question four must be answered in the negative.
`
`

`
`
`
`V.
`
`ARGUMENTS AND DISCUSSION
`
`1.
`
`OPPOSER HAS STANDING TO OPPOSE THE REGISTRATION
`
`OF U.S. APPLICATION SERIAL NO. 75/907,375 FOR THE MARK
`DERMASTAR IN THAT OPPOSER HAS DEMONSTRATED A REAL
`
`INTEREST IN THIS CASE.
`
`It is well settled that a party may establish its standing to oppose a trademark application
`
`by showing that it has a real interest in the case, that is, a personal interest beyond that of the
`
`general public. Harjo v. Pro Football, 30 U.S.P.Q.2d 1828 (T.T.A.B. 1994); Estate ofBiro v.
`
`Bic Corp., 18 U.S.P.Q.2d 1382 (T.T.A.B. 1991). Here, it is clear that Opposer has a personal
`
`interest in the outcome of this case beyond that of the general public in that Opposer is the owner
`
`of a trademark registration for the mark DERMOSTAT, and that Opposer has used and continues
`
`to use the mark DERMOSTAT on or in connection with various goods, including goods identical
`
`to that described in Applicant's application.
`
`Accordingly, Opposer has demonstrated the requisite personal interest necessary to
`
`establish its standing in this proceeding.
`
`2.
`
`THE OPPOSITION SHOULD BE SUSTAINED
`
`BASED SOLELY ON THE PLEADINGS.
`
`As discussed hereinbelow, Applicant has admitted that there is a likelihood of confusion
`
`between its mark DERMASTAR and Opposer’s registered mark DERMOSTAT and common
`
`law mark DERMOSTAT, by failing to deny the averments in Opposer’s Amended Notice of
`
`Opposition.
`
`As discussed above in section I, Opposer filed a Notice of Opposion on February 6, 2002
`
`and then, prior to Applicant filing an Answer to the Notice, Opposer filed an Amended Notice of
`
`Opposition on April 3, 2002. The Amended Notice included as a first ground for opposition that
`
`

`
`
`
`there is a likelihood of confusion between Applicant’s mark DERMASTAR and Opposer’s
`
`registered mark DERMOSTAT and common law mark DERMOSTAT. More specifically,
`
`Opposer’s first ground for opposition included the following averments:
`
`Applicant's mark DERMASTAR is confusingly and
`4.
`deceptively similar to the DERMOSTAT Trademark, which has been
`registered to Opposer for more than one year and seven months prior to
`Applicant’s filing date and which was used more than three years prior to
`Applicant’s filing date. Thus, Applicant is not entitled to adopt, use or
`obtain registration of the mark DERMASTAR in connection with the
`goods in International Classes 3 and 5 identified in Applicant's application.
`
`The products identified in Applicant's application are very
`5.
`similar or identical to the products listed by Opposer in connection with its
`registered mark DERMOSTAT.
`
`Applicant's DERMASTAR mark is substantially similar to
`6.
`the DERMOSTAT Trademark in appearance and pronunciation, such that
`contemporaneous use of the respective marks will create a likelihood of
`confiision, mistake or deception among the trade and the purchasing
`public.
`
`The products covered by Applicant's application are of the
`7.
`type which are or may be offered by Opposer under its mark, such that the
`trade and purchasing public would reasonably expect such products to
`emanate from, or be sponsored by the same source.
`
`Applicants‘ request to register the mark DERMASTAR in
`8.
`connection with the products specified in Applicant's application is in
`direct conflict with the proper function of a trademark; that is, as a
`designation of the sole and exclusive origin of goods or services,
`considering Opposer’s prior use of and registration of its mark.
`
`Because Applicant's and Opposer’s products are very
`9.
`similar or identical, and are or will be offered and/or provided to the same
`or similar customers, and since Applicant's DERMASTAR mark is
`substantially similar to Opposer’s DERMOSTAT Trademark, any faults or
`imperfections in the products of Applicant will reflect adversely on
`Opposer and its established goodwill and reputation, all to the detriment of
`Opposer unless this opposition is sustained.
`
`

`
`
`3
`8.1
`
`The contemporaneous use by Applicant of the mark
`10.
`DERMASTAR will dilute or impair Opposer's rights, and will eventually
`result in a lack of designation or indication or origin and a loss of
`distinctiveness and exclusivity in Opposer's DERMOSTAT Trademark.
`Accordingly, Applicant's mark must not be allowed. to register.
`
`Opposer clearly has superior and paramount rights as
`ll.
`compared to Applicant, as Opposer has a trademark which was both
`registered and used in commerce prior to any date claimed by or available
`to Applicant. Consequently, Opposer avers that confusion, mistake and
`deception in the trade and in the minds of the purchasing public as
`between Opposer's and Applicant's marks and as to the origin of their
`respective products will be likely and bound to occur with resulting
`damage to Opposer.
`
`Applicant filed an “Answer to Opposition and to Amended Opposition” on April 24,
`
`2002. However, Applicant did not deny any of the averments discussed above in its Answer.
`
`Except as otherwise provided in the Trademark Rules of Practice, procedure and practice
`
`in PTO inter partes proceedings such as an opposition are governed by the Federal Rules of Civil
`
`Procedure. The notice of opposition and the answer thereto correspond to a complaint and
`
`answer in court proceedings. 3 J. McCarthy, McCarthy on Trademarks and Unfair Competition
`
`§ 20:6 at 20-12 (4th Ed. 2000). As such, the notice of opposition is a pleading to which a
`
`responsive pleading is required. See Fed. Rules Civ. Proc. Rule 8(b), 28 U.S.C.A. By failing to
`
`deny the averments made in the Amended Notice of Opposition, the averments are deemed
`
`admitted. Fed. Rules Civ. Proc. Rule 8(d), 28 U.S.C.A.
`
`Accordingly, it is respectfully submitted that Applicant has admitted that there is a
`
`likelihood of confusion between its mark DERMASTAR and Opposer’s mark DERMOSTAT by
`
`its failure to deny the above averments that the opposition be sustained based solely on the
`
`pleadings.
`
`

`
`
`
`3.
`
`APPLICANT'S MARK DERMASTAR, AS USED ON OR IN
`CONNECTION WITH THE TREATMENT OF WOUNDS
`
`ORSKIN, SO RESEMBLES OPPOSER’S REGISTERED
`MARK DERMOSTAT AND OPPOSER’S COMMON LAW
`
`MARK DERMOSTAT, AS USED ON OR IN CONNECTION
`WITH PHARMACEUTICAL PREPARATIONS FOR
`
`TREATMENT OF WOUNDS AND DERMATOLOGICAL
`
`APPLICATIONS, AS TO BE LIKELY TO CAUSE
`CONFUSION AMONG THE PURCHASING PUBLIC.
`
`The Lanham Act provides that a party who believes that it will be damaged by the
`
`registration of a mark may file an opposition in the Patent and Trademark Office to the
`
`registration of such mark, provided certain grounds for obj ection exist. Lanham Act § 13, 15
`
`U.S.C.A. § 1063. These grounds include Section 2(d) of the Lanham Act which states that a
`
`trademark will not be registered if it:
`
`Consists of or comprises a mark which. so resembles a mark
`registered in the Patent and Trademark Office, or a mark or trade name
`previously used in the United States by another and not abandoned, as to
`be likely, when used on or in connection with the goods of the applicant,
`to cause confusion, or to cause mistake, or to deceive.
`
`Lanham Act § 2(d), 15 U.S.C.A. § 1052.
`
`Under Lanham Act § 2(d), the test is whether or not there is a “likelihood of confusion”
`
`between the marks. In all Patent and Trademark Office proceedings under § 2(d), vvhether ex
`
`parte or inter partes proceedings, the modern “related goods” test is used. That is, likelihood of
`
`confusion depends upon whether the purchasing public would mistakenly assume that the
`
`applicant’s goods or services originate with, are sponsored by, or are in some way associated
`
`with the goods sold under the (Opposer’s ) registered mark. 3 J. McCarthy, McCarthy on
`
`Trademarks and Unfair Competition § 23:78 at 23-217 to 23--218 (4th Ed. 2000).
`
`

`
`
`
`As set forth in TMEP § 1207.01, the factors relevant to a determination of likelihood of
`
`confusion during ex parte examination are set forth In re E. I. du Pont de Nemours & Co., 476
`
`F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). These same factors are also considered when
`
`determining likelihood of confusion in an opposition proceeding. 3 J. McCarthy, McCarthy on
`
`Trademarks and Unfair Competition § 20:15 at 20-25 (4th Ed. 2000).
`
`In analyzing the du Pont factors, the two key considerations are the similarities between
`
`the marks and the similarities between the goods and services. See In re Azteca Resturant
`
`Enterprises Inc., 50 U.S.P.Q.2d 1209, 1210 (T.T.A.B. 1999).
`
`As discussed hereinbelow, the evidence of record overwhelmingly favors Opposer when
`
`the du Pom‘ factors are properly considered, thus necessarily leading to the conclusion that there
`
`exists a likelihood of confusion between Applicant's proposed mark and Opposer's registered and
`
`common law marks.
`
`A.
`
`The Similarity Or Dissimilarity Of The Marks In Their Entireties
`As To Appearance, Sound, Connotation And Commercial Impression.
`
`As discussed above, Applicant has admitted that the marks are substantially similar.
`
`However, aside from Applicant's admission, it is clear that Applicant's mark DERMASTAR is
`
`confusingly similar to both Opposer's registered mark DERMOSTAT and to Opposer’s common
`
`law mark DERMOSTAT, in appearance, sound and overall commercial impression.
`
`Applicant's mark which is the subject of this opposition proceeding is a word mark
`
`consisting of the two syllable word "DERMASTAR." The viewers attention is therefore
`
`primarily drawn to the initial few letters of each syllable, based on appearance, as well as sound
`
`

`
`
`
`in pronouncing the word. See Presto Products, Inc. v. Nice-Pak Products, Inc., 9 U.S.P.Q.2d
`
`1895 (T.T.A.B. 1988) (“It is often the first part of a mark which is the most likely to be
`
`impressed upon the mind of a purchaser and remembered.”).
`
`Opposer is the owner of U.S. Trademark Registration No. 2,159,394 for the word mark
`
`DERMOSTAT. Like Applicant’s mark, this mark consists of a single word. Opposer’s mark is
`
`similar in appearance and sound to Applicant’s mark. More particularly, the marks each consist
`
`of a single word having nine letters that are identical, except for the fifth and ninth letters.
`
`Moreover, the marks each have two syllables, in which the first syllable begins with “DERM”
`
`and the second syllable begins with “STA”. Thus, the two marks have a very similar appearance.
`
`Because these words each begin with “DERM” and because the second syllable begins with
`
`“STA”, these words are similar in sound.
`
`Regarding the connotation of the marks, it is respectfully submitted that the two marks
`
`are coined terms, which are word marks that are similar in appearance and sound. Opposer
`
`believes that there is no particular connotation for either of these coin terms, however, if there is
`
`any connotation for these marks, it would be similar for both marks because of the substantial
`
`similarity between them. As to overall commercial impression, it is respectfully submitted that
`
`the similarity of the marks themselves would provide a similar commercial impression.
`
`Considering these factors in sum, it must be concluded that Applicant’s mark
`
`DERMASTAR is confilsingly similar to Opposer’s registered mark DERMOSTAT in that the
`
`marks are similar in appearance, sound and overall commercial impression.
`
`

`
`
`
`B.
`
`The Similarity Or Dissimilarity And Nature Of The Goods
`Or Services As Described In An Application Or Registration
`Or In Connection With Which A Prior Mark Is In Use.
`
`It is undisputed that the goods identified in Applicant's application, i.e., are identical or
`
`substantially similar to those goods set forth in Opposer's U.S. Registration No. 2,159,394, and
`
`are identical or substantially similar to the goods which have been marketed and continue to be
`
`marketed by Opposer. Particularly, Opposer’s U.S. Trademark Registration for DERMOSTAT
`
`recites pharmaceutical preparation for treatment of wounds. (Opp. Exhibit 1). More to the point,
`
`Opposer has in fact used its DERMOSTAT mark on or in connection. with pharmaceutical
`
`preparations for treatment of wounds since at least as early as July 23, 1996. (Ashley p.7, line 12
`
`to p.8, line 18). Moreover, Opposer has used the mark in connection with goods for
`
`dermatological applications (Ashley p. 15, line 2 to p. 23, line 24).
`
`It has been well established that the question of registerability of an applicant's mark must
`
`be decided solely on the basis of the identification of goods set forth in the application. Octocom
`
`Systems v. Houston Computer Services, Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). When the
`
`description of goods is not specifically limited it must be broadly interpreted to include all goods
`
`that can fall within the description. See Cunningham v. Laser Golf Corp., 222 F.3d 943 (Fed.
`
`Cir. 2000).
`
`As such, Applicant's broad list of goods, which includes, inter alia, medicated lotions for
`
`skin, medicated skin cleaners, medicated skin cream, acne medications, acne treatment
`
`preparations, analgesics, anti-infectives, anti-inflammatories, antibacterial pharmaceuticals, burn
`
`relief medication, dermatologicals, wound dressings, homeopathic pharmaceuticals for use in the
`
`treatment of disorders amenable to treatment by application of materials to the skin, medicated
`
`10
`
`

`
`?
`
`skin care preparations and wound dressings, clearly would encompass the goods listed in
`
`Opposer's registration and the goods with which Opposer has used the mark DERMOSTAT.
`
`Accordingly, it is respectfully submitted that, based upon Applicant's broad list of goods,
`
`the goods for the two marks are identical or at least substantially similar.
`
`C.
`
`The Similarity Or Dissimilarity Of
`Established, Likely-To-Continue Trade Channels.
`
`Neither Applicant's trademark application not Opposer's registrations are limited to any
`
`specific charmels of trade. As such, it must be presumed that the two marks will be used in the
`
`same or similar channels of trade. See Octocom, 918 F.2d at 943. Moreover, based on the fact
`
`that App1icant’s description of goods includes goods identical or substantially similar to those
`
`associated with Opposer’s registered and common law marks, it must necessarily follow that the
`
`charmels of trade for Applicant's goods are identical and/or substantially similar to the charmels
`
`of trade for Opposer's goods. Accordingly, it is respectfully submitted that the goods marketed
`
`by Opposer and those recited in Applicant's trademark application will both be marketed to the
`
`same channels of trade, e.g., retail pharmacies. (See Ashley p. 16, line 11 to p. 18, line 2).
`
`D.
`
`The Fame Of The Prior Mark (Sales, Advertising, Length Of Use).
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`There has been significant use of the mark DERMOSTAT in connection with products
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`for treating wounds and other dermatological applications. Opposer is seeking FDA approval for
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`products that will be sold under the DERMOSTAT mark and has made substantial efforts to
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`market and develop such products, including business plans, presentations to investors and press
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`releases, as well as in connection with clinical trials and other FDA related activities. (Ashley p.
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`12, line 6 to p. 24, line 22; Exhs. 6-9).
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`ll
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`R‘
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`Opposer filed a trademark application for the mark DERMOSTAT on March 19, 1996,
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`and was issued U.S. registration No. 2,159,394 on May 19, 1998. (Opp. Exh. 1). This mark has
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`been used on or in connection with the recited goods since at least as early as July 23, 1996.
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`(Ashley p. 7, line 5 to p. 8, line 17; Opp. Exh. 2). This registration remains in full force and
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`effect.
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`As Opposer has made significant efforts to develop and market products under the mark
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`DERMOSTAT and has a Valid registration, it must be concluded that Opposer's DERMOSTAT
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`mark is strong and that there has been significant use of the mark.
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`E.
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`The Number And Nature Of Similar Marks In Use On Similar Goods.
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`Opposer is unaware of any similar marks (other than Applicant's intended use of the mark
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`DERMASTAR) being used on or in connection with products for treating wounds or skin.
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`F.
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`The Extent Of Potential Confusion, I.E.,
`Whether De Minimis Or Substantial.
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`As Applicant’s mark has not yet been used, there would not yet be any actual confusion.
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`However, as discussed hereinabove in parts A-C, Applicant’s: mark is very similar in appearance,
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`sound and overall commercial impression, and is intended to be used in connection with goods
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`identical or substantially similar to those used in connection with Opposer’s mark. Moreover, as
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`Opposer's products are typically sold through retail pharmacies (Ashley p. 17, line 13 to p. 18,
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`line 2), it is likely that Applicant’s products (based on the description of goods) would travel
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`through the same channels. Accordingly, the sale of Applicant's products in such channels will
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`expose large numbers of consumers to Applicant's mark DERMASTAT, leading to potential
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`and/or actual confusion with Opposer's DERMOSTAT. The extent of potential confusion would
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`12
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`I
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`,-
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`be substantial if Applicant's sales and marketing efforts increased as both Applicant and Opposer
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`will sell to the same consumers.
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`G.
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`Other du Pont Factors.
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`The other du Pont factors are either not relevant to this Opposition, since Applicant’s
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`mark is not actually being used, or do not weigh in favor of either the Applicant or Opposer.
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`H.
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`Conclusion.
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`As discussed above, when analyzing the du Pont factors, the two key considerations in
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`determining likelihood of confusion are the similarities between the marks and the similarities
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`between the goods and services. In the instant matter, a review of the evidence of record shows
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`that the marks are substantially similar and the goods are identical or at least substantially
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`similar. Thus, it is respectfully submitted that there exists a likelihood of confusion between
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`Applicant's proposed mark and Opposer's registered and common law marks.
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`4.
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`APPLICANT DOES NOT HAVE A BONA FIDE INTENT TO
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`USE THE MARK DERMASTAR, IN CONNECTION WITH THE
`GOODS LISTED IN THE STATEMENT OF GOODS AND
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`SERVICES, FILED IN ITS INTENT TO USE AIPPLICATION.
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`As discussed above in section I, Opposer filed a Notice of Opposion on February 6, 2002
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`and then, prior to Applicant filing an Answer to the Notice, Opposer filed an Amended Notice of
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`Opposition on April 3, 2002. The Amended Notice included a second ground for opposition,
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`namely that Applicant did not have a bona fide intent to use the mark for each of the goods listed
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`in the application.
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`In the application, Applicant listed over 730 goods in its identification of goods with
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`which the mark DERMASTAR is purportedly intended to be used. Basically, it appears that
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`Applicant merely listed each and every good contained in international classes 3 and 5.
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`Lanham Act § 1(b) requires that an applicant, in an intent to use application, make a
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`verified statement upon application that it has a ‘‘bona fide intention” to use the mark in
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`commerce. Although “bona tide” is not defined in the Act, the legislative history reveals that
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`Congress intended the test of “bona fide” to be evidenced by “objective” evidence of
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`“circumstances” showing good faith. The evidence is “objective” in the sense that it is evidence
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`in the form of real life facts and by actions of the applicant, not by the applicant’s testimony as to
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`its subjective state of mind. See 3 J. McCarthy, McCarthy on Trademarks and Unfair
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`Competition § 19:14 at 19-33 to 19-35 (4‘“ Ed. 2000).
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`Congress did not intend the issue (of a bona fide intention) to be resolved simple by an
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`officer of the applicant later testifying, “Yes, indeed, at the time we filed the application, I did
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`truly intend to use the mark at some time in the future.” See Lane Ltd. v. Jackson Int’! Trading
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`Co., 33 U.S.P.Q.2d 1351 (T.T.A.B. 1994) (“[A]pplicant’s mere statement of subjective intention,
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`without more, would be insufficient to establish applicant’s bona fide intention to use the mark in
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`commerce.”
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`The legislative history provides an illustrative list of circumstances that “may cast doubt
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`on the bona fide nature of the intent or even disprove it entirely.” 3 J. McCarthy, McCarthy on
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`Trademarks and Unfair Competition § 19214 at 19-37 (4‘h Ed. 2000). This list specifically
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`includes filing an application on one mark for many products. Id. Thus, Congress specifically
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`l4
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`recognized that filing an intent to use application for many products raises serious doubt as to the
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`applicant’s intention to use the mark for each of the products within the statutory period.
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`In the instant case, as Applicant has filed an intent to use application for an extremely
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`large number of goods, it is incumbent upon Applicant to provide objective evidence of its bona
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`fide intent to use the mark for each of the listed goods. However, Applicant has not offered any
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`evidence to support its bona fide intention (objective or otherwise) to use the mark
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`DERMASTAR in connection any of the goods listed, let alone each and every one of the listed
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`goods. In fact, Applicant has not put any evidence into the record. As such, Applicant cannot
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`establish that it had a bona fide intent to use the mark DERMASTAR. See Commodore
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`Electronics Ltd. v. CBMKabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1507 (T.T.A.B. 1993) (“the
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`absence of any documentary evidence on the part of the applicant regarding such intent [to use
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`the mark in commerce] is sufficient to prove that the applicant lacks a bona fide intention to use
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`the mark in commerce as required by Section l(b).”).
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`Accordingly, it is respectfully submitted that the opposition should be sustained.
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`VI.
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`CONCLUSION
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`Opposer is the undisputed owner of the mark DERMOSTAT as registered and as used on
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`or in connection with pharmaceutical prepar