throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 157,491
`Mark: TOPOTECT
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`SMITHKLINE BEECHAM PLC and,
`SMITHKLINE BEECHAM
`CORPORATION,
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`Opposer
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`v.
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`TOPOTARGET APS,
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`Applicant,
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`) &
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`o2-17-2004
`U.S. Patent & TMOfc/TM Mail Rcpt D1. #22
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`) )
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`CERTIFICATE UNDER 37 CFR 1.8: The undersigned hereby certifies that this correspondence is being deposited in the United
`States Postal Service, as first class mail, in an envelope addressed to: Commissioner for Trademarks, Box T.T.A,B., 2900 Crystal
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`Drive, Arlington, VA 22202-3513, on February,/_.?, 2004. ‘J
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`By: /é %/ f
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`Name: Ky e T. Peterson
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`"'
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`APPLICANT'S RESPONSE TO OPPOSERS‘ CROSS-MOTION FOR SUMMARY
`JUDGMENT
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`I.
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`Introduction
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`Applicant has sought to register the mark TOPOTECT, Application Serial No.
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`78/064,912, for "pharmaceutical preparations for the treatment of cancer and pharmaceutical
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`preparations for neutralizing the negative effects of cancer treatment; veterinary preparations,
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`namely, preparations for the treatment of cancer in animals and Veterinary preparations for
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`neutralizing the negative effects of cancer treatment in animals.“ Opposers filed a Notice of
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`Opposition against the registration of Applicant's mark on July 16, 2003 based on the allegation that
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`Opposers’ market a product called HYCAMTIN (U.S. Reg. No. 2,030,440). The generic term for
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`1 Applicant is in the process of amending the recitation of goods to "pharmaceutical preparations, namely
`anthracylin, for the treatment of tissue damage caused by chemotherapy or the like."
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`HYCAMTIN is "topotecan hydrochloride." After reviewing Opposers' allegations in its Notice of
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`Opposition, Applicant believed that there were no material factual issues in dispute regarding
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`Opposers' assertions. Applicant, therefore, filed a motion for Summary Judgment against Opposers.
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`With Applicant's consent, Opposers requested an extension of time to respond to Applicant's
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`Motion for Summary Judgment. Opposers now have brought this combined Cross-Motion for
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`Summary Judgment and Response to Applicant's Motion for Summary Judgment. Opposers have
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`alleged likelihood of confusion under Section 2(d). Not. of Opp. 1120-22. Opposers also have
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`alleged that Applicant's TOPOTECT mark is deceptively misdescriptive under Section 2(e)(1) or
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`deceptive under Section 2(a). Opposers' Cross-Motion for Summary Judgment should be denied.
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`A.
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`Standard for summary judgment
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`Pursuant to Fed. R. Civ. P. 56, which is applicable to the proceedings before the Board
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`under 37 C.F.R. § 2.116(a),
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`summary judgment shall be rendered forthwith if the pleadings, depositions,
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`answers to interrogatories, and admissions on file, together with the affidavits, if
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`any, show that there is no genuine issues as to any material fact and that the
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`moving party is entitled to a judgment as a matter of law.
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`Opposers, as the parties moving for summary judgment, have the burden of
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`demonstrating the absence of any genuine issue of material fact, and that they are entitled to
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`judgment as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317 (1987); Sweats Fashions
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`Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). The standard
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`for granting summary judgment is a heavy one. All of the evidence must be viewed in a light
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`

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`
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`most favorable to the nonmoving party, Applicant, and all justifiable inferences must be drawn in
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`Applicant's favor. Opgland USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23
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`USPQ2d 1471 (Fed. Cir. 1993). Mere conclusory assertions fall short of the evidence necessary
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`to show a lack of a genuine issue of material fact. Toro Co. v. ToroHead Inc., 61 USPQ2d
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`1164, 1173-74 (TTAB 2001).
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`Where both parties have moved for summary judgment, as in this case, the mere fact that
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`they have done so does not establish that there are no genuine issues of material fact, and that
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`judgment should be entered in favor of one of them. University Book Store v. University of
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`Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994). A dispute is genuine only if, on
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`the entirety of the record, a finder of fact could resolve a factual matter in favor of the non-
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`movant. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 246 (1986). Thus, summary judgment
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`may be granted when no "reasonable [fact finder] could return a verdict for the nonmoving
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`party."
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`B.
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`Opposers' loss in Denmark and registration in the European Community.
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`Opposers already have tried to block Applicant's registration of its TOPOTECT mark
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`based on Opposers' claim of similarity to the generic term "topotecan." They were unsuccessful.
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`The Danish Patent Office's Opposition Division upheld the Danish trademark registration of
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`Applicant's TOPOTECT mark in the face of that opposition by Opposers. Peterson Decl. 11112
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`and 3, Ex. A and B. Opposers apparently admit the correctness of that decision because they did
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`not appeal that decision within the time for appeal. TOPOTECT was therefore allowed in
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`Demnark. Moreover, Applicants European Community Trademark Registration for the mark
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`TOPOTECT was allowed without objection from Opposers. TOPOTECT now is registered in
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`the European Union. Peterson Decl.1]l0, Ex. I.
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`Oppositions against the issuance of a registration that take place between the parties in a
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`foreign jurisdiction are not controlling, but they do have persuasive significance in the United
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`States proceeding. E, g., Faberge, Inc. V. Dr. Bador GmbH & Co., 219 USPQ 848 (TTAB
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`1983). The Danish Patent Office's decision is highly persuasive in this case, despite its foreign
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`jurisdiction status, because it addressed the same issues that are present in this case. The Danish
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`decision confronted arguments made by the parties‘ European attorneys that are identical to those
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`made in Opposers' current motion.
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`The arguments in Denmark are especially relevant when pharmaceuticals are involved
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`because of the World Health Organization's (WHO) and United States Adopted Names
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`("USAN") Council's desire to promote safety and global standardization of drug nomenclature.
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`McCarthy, §12:61. For example, the Danish Patent Office's decision addressed the rationale of
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`the International Non-proprietary Name ("INN") Committee of the WHO. The Danish Patent
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`Office reviewed the INN Committee's recommendations and found that they favored registration
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`of TOPOTECT because the mark TOPOTECT and the shortened generic term fragment
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`"topotecan" "differ significantly from each other." Peterson Decl. ‘H3, Ex. B. Opposers in this
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`case referenced the INN Committee to support their motion, but the Danish Patent Office already
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`has considered these arguments. McLeod Decl. 117, Ex. F.
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`The Danish decision already has decided issues that are central to Opposers' current
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`motion and found them also unpersuasive:
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`"The trademark TOPOTECT consists of eight letters, and the designation of the
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`substance TOPOTECAN consists of nine letters. The words consist of three or four
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`syllables, of which the initial syllables are identical. The suffix -TECT in the trademark
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`TOPOTECT differs essentially from the suffix in the generic, TE-CAN. This has the
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`effect that the construction and rhythm of the two words are very different. Therefore,
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`the Danish Patent Office is of the opinion that the words visually and aurally are very
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`different."
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`Peterson Decl. 11112 and 3, Ex. A and B.
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`Moreover, Opposers have not presented any evidence of actual confusion in support of its
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`likelihood of confusion claim in this motion.
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`II.
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`Opposers lack standing to bring this opposition.
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`Opposers have asserted a claim of likelihood of confusion that falls under section 2(d) of
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`the Lanham Act. Not. of Opp. ‘[120-22. Section 2(d) provides that no trademark shall be refused
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`registration unless it "consists of or comprises a mark which so resembles a mark registered in
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`the Patent and Trademark Office, or a mark or trade name previously used in the United States
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`by another and not abandoned..." 15 U.S.C. §l052(d)(2000). This statute is not discretionary.
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`The registration must issue unless the mark sought to be registered interferes with another mark.
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`A prerequisite to a Section 2(d) claim is that someone must have proprietary rights in the
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`previously used mark, such that the mark serves as an indication of a single, albeit anonymous,
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`source. Internet, Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1437-
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`38 (TTAB 1996).
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`Opposers have not alleged, and carmot prove, that Applicant's TOPOTECT mark so
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`resembles a registered mark (HYCAMTIN) or a mark or trade name previously used in the
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`United States and not abandoned, as to likely cause confusion. Rather, Opposers‘ Section 2(d)
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`claim appears to be based on the allegation that consumers are likely to confuse Applicant's
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`TOPOTECT mark with the generic term fragment "topotecan." Not. of Opp. 1122. The generic
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`term "topotecan hydrochloride" and its shortened generic term fragment "topotecan" are not
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`marks. They are generic terms for a pharmaceutical. Not. of Opp. 1[2l and McLeod Decl. 117,
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`Ex. F. The generic term "topotecan hydrochloride" and its generic term fragment "topotecan" do
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`not indicate a single source. The mark for the drug corresponding to the generic term "topotecan
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`hydrochloride" that the Opposers have adopted is HYCAMTIN. Not. of Opp. 1121 and May Decl.
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`112, Ex. A.
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`Section 2(d) does not extend to a claim that the mark being registered is similar to a
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`generic word or descriptive phrase. Otto Roth & Co., Inc. v. Universal Foods Com, 640 F.2d
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`1317, 209 USPQ 40, 43 (CCPA 1981). In this case, Opposers admit that "topotecan" is generic.
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`Not. of Opp. 1121 and McLeod Decl. ‘H7, Ex. F. Opposers, therefore, have no standing to bring
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`their opposition.
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`A.
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`"Topotecan hydrochloride" is a generic term, not a mark.
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`A generic term is the common descriptive name of a class of goods or services. It can
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`never be registered as a trademark because such a term is "merely descriptive" within the
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`meaning of Section 2(e)(1) of the Lanham Act. H. Marvin Ginn Com. v. Interl Assn. of Fire
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`Chiefs Ir1c., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). A mark is generic if it is understood
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`by the relevant public primarily to refer to that genus of goods or services listed in the proposed
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`registration. In re Northland Aluminum Prods Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir.
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`1985). When seeking out evidence on genericness, dictionaries are a good beginning source.
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`Mil-Mar Shoe Co. v. Shonac Cog, 75 F.3d 1153, 37 USPQ2d 1633, 1637 (7th Cir. 1996).
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`Evidence of what the relevant public understands the term to mean may also come from other
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`competent sources, including newspapers, magazines, trade journals, catalogs, and other
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`publications. In re Leatherman Tool Group, Inc., 32 USPQ2d 1443, 1449 (TTAB 1994).
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`Whether a mark is generic requires consideration of the mark as a whole. Kegan V. Apple
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`Computer, Inc., 42 USPQ2d 1053 (N.D. Ill 1996).
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`In the United States, generic names are assigned to pharmaceuticals via a two-step
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`approval process by the USAN Council and the INN Committee of the World Health
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`Organization. McCarthy, §l2:6l. Prior to using the generic name in connection with a
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`pharmaceutical, the manufacturer, sponsor, or developer of the pharmaceutical must first obtain
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`approval from the USAN Council. Id. at §l2:62. The U.S. Food & Drug Administration
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`("FDA") is represented on the USAN Council. 21 C.F.R. §299.4(d). The purpose of the USAN
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`Council is to insure that any generic name assigned to a pharmaceutical meets criteria designed
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`to insure safety, logic and consistency in the choice of generic names. USP Dictionagg of Drug
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`Names, 1209 (USAN 2001). After approving a generic name, the USAN Council submits the
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`name to the World Health Organization's INN Committee.
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`"Topotecan hydrochloride" has been selected as the generic name for pharmaceutical
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`drugs comprised of antineoplastic DNA topoisomerase I inhibitors. McLeod Decl. 117, Ex. F.
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`The term "topotecan hydrochloride" also is the approved generic term for the drug with the mark
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`HYCAMTIN. Food & Drug Admin., Approved Drug Products with Therapeutic Equivalence
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`Evaluations (CCH 18th ed. 1998). Because it has been selected as the generic term, the term
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`"topotecan hydrochloride" and its shortened generic term fragment "topotecan" is used in
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`journals and abstracts to identify a specific pharmaceutical composition used in the treatment of
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`cancer, but it does not identify the source of the product. May Decl. 111] 5 and 6, Ex. D and E,
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`and McLeod Decl. 116, Ex. E. A search of medial journals and pharmaceutical journals and
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`abstracts shows that the term "topotecan" is used, as intended, to identify a particular anticancer
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`pharmaceutical. E.
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`B.
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`Only a likelihood of confusion between a proposed mark and another mark
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`is actionable under the statute.
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`Because Opposers cannot prove that they own any proprietary rights to the generic
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`"topotecan hydrochloride" or the generic term fragment "topotecan," they carmot demonstrate a
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`likelihood of confusion as to source. As a result, they cannot prevail on their Section 2(d)
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`claims. Amgen, Inc. v. American Phytotherapy Research Laboratory, 2000 TTAB Lexis 704
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`(TTAB 2000). In Egg, Opposer alleged that LEPTOPRIN was similar to the generic names
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`"leptin" and "menileptin" used by the medical community in connection with other
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`pharmaceuticals. The Board held that a generic name could not be used as the basis for an
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`opposition under Section 2(d) and granted Applicant's motion for summary judgment on that
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`claim.
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`This case is similar to A_mgg1. Most notably, Opposers do not have proprietary rights to
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`a generic term that they allege is confusingly similar to Applicant's mark.
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`"Likelihood of confiasion under section 2(d) is determined as a matter of law on the factual
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`record. " In re Shell Oil Co. , 992 F.2d 1204, 1205 (Fed. Cir. 1993). The likelihood of confusion
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`analysis must be between Applicant's TOPOTECT mark and Opposers‘ HYCAMTIN mark,
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`rather than the generic term "topotecan hydrochloride" or its generic term fragment. Opposers
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`have presented no evidence of any likelihood of confusion between the marks TOPOTECT and
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`HYCAMTIN.
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`
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`Apparently realizing the weakness of their position, Opposers attempt to bootstrap
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`themselves into this opposition with the argument that they have a proprietary interest in the
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`generic term because it describes their branded HYCAMTIN product. They use this alleged
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`proprietary right to claim violations of the Lanham Act by Applicant. The designation of a
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`generic term, however, is mandated so that everyone can use it. It allows all pharmaceutical
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`makers to have a common reference to the pharmaceutical. McCarthy, §12:64. No one company
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`has a proprietary right to the generic term. Opposers' motion, in essence, seeks to prevent the
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`use of the generic term "topotecan hydrochloride" in contradiction to the generic naming statute
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`and Section 2(d) of the trademark act. Opposers simply have no standing to bring this
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`Opposition based on the generic term.
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`III.
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`Applicant's TOPOTECT mark is not confusingly similar to the generic term
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`"topotecan hydrochloride" or its generic term fragment.
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`Even if Opposers have standing to bring their Opposition, Applicant's TOPOTECT mark
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`is not confusingly similar to the generic term "topotecan hydrochloride" or its generic term
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`fragment, "topotecan."
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`A.
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`The relevant consumers are health care practitioners who exercise a great
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`deal of care.
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`A purchaser's "sophistication is important and often dispositive on the issue of likelihood
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`of confusion because sophisticated consumers may be expected to exercise greater care."
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`Electronic Design & Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388, 1392
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`(Fed. Cir. 1992). Both parties admit that the relevant consumer in this case is an individual who
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`practices in the health care and pharmaceutical industries. Opposers' Br. at 15-16. McCarthy,
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`§12:5. Physicians are "a highly intelligent and discriminating public." Wamer-Hudnut Inc. v.
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`Wander Co., 280 F. 2d 435, 126 USPQ 411, 412 (CCPA 1960). Moreover, generic terms are
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`chosen to be useful primarily to health care practitioners. 21 C.F.R. §299.4(d); gig
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`Principles for Coining U.S. Adopted Names for Drugs, USP Dictionary of Drug Names (USAN
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`2001 ed.); Peterson Decl. 19, Ex. H. This corroborates the likely purchaser for a Lanham Act
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`analysis.
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`Because of the high level of sophistication of the purchaser, there is not likely to be
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`confusion unless an extreme similarity exists. Pignons S.A. de Mecanigue de Precision v.
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`Polaroid Com, 657 F.2d 482, 489, 212 USPQ 246, 250 (1st Cir. 1981). Extreme similarities do
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`not exist in this case, however. The fact that generic descriptors are required by law means that
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`each and every doctor and pharmacist is well aware of the use of generic terms and the
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`distinction between them and registered trademarks.
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`B.
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`Health care practitioners will be required to prescribe Applicant's
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`TOPOTECT product and they must also prescribe HYCAMTIN, doubly
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`ensuring the exercise of care and minimizing the likelihood of confusion.
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`Applicant's TOPOTECT product is a pharmaceutical and will not be sold as an over-the-
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`counter medication. McLeod Decl. 19, Ex. H. Therefore, the TOPOTECT product will require a
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`prescription from a doctor. HYCAMTIN (topotecan hydrochloride) also must be prescribed by a
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`doctor. May Decl. 12, Ex. A. The Physicians Desk Reference, cited by Opposers, shows that
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`"topotecan hydrochloride is to be administered under the supervision of a physician experienced
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`-10-
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`in the use of cancer chemotherapeutic agents." McLeod Decl. 112, Ex. A. Doctors, as
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`sophisticated consumers, will be expected to exercise the same care when selecting and
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`administering the TOPOTECT medication as they will in selecting HYCAMTIN (topotecan
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`hydrochloride). Electronic Desigr_1 & Sales v. Electronic Data Systems, 954 F.2d 713, 21
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`USPQ2d 1388, 1392 (Fed. Cir. 1992).
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`As Opposer well knows, the conditions of sale surrounding prescription pharmaceuticals
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`also lessen the prospects for any likelihood of confusion as to product origin or affiliation.
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`SmithKline Beecham Pharms. Co. v. L. Molteni & C. Dei F.lli Alitti S.P.A., 2000 TTAB LEXIS
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`626 (TTAB 2000). According to SmithKline, "the industry standard practice of company sales
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`representatives calling upon doctors and pharmacists to educate and advise them with respect to
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`the company's prescription drugs and their indications necessarily means that such customers
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`would typically know the source of the pharmaceutical preparations they prescribe and/or buy."
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`E.
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`In SmithKline, the Board made it clear that, "pharmacists and nurses are, by the very
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`nature of their professions, highly knowledgeable and sophisticated customers when it comes to
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`medications, given their training in pharmacology and the care, due to the recognized potential
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`for harmful drug interactions, they must exercise care in prescribing medications for particular
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`indications." E. Skilled medical professionals, therefore, who are experienced in the use of
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`cancer chemotherapeutic agents are not likely to confuse the mark TOPOTECT with the generic
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`term "topotecan hydrochloride." Moreover, the fact that both pharmaceuticals must be
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`prescribed by a doctor doubly ensures that there will not likely be confusion between them.
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`-11-
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`C.
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`There is not likely to be confusion between the mark TOPOTECT and the
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`generic term "topotecan hydrochloride" or its generic term fragment.
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`In this case, the generic name for Opposers' HYCAMTIN product is "topotecan
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`hydrochloride" or "topotecan HCl." McLeod Decl. 117, Ex. F. Publications in the pharmaceutical
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`industry do not refer to Opposers' HYCAMTIN product using the generic term fragment
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`"topotecan." Rather, the references use the full term "topotecan hydrochloride." McLeod Decl. 112,
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`Ex. A. Indeed, Opposers' own promotional literature designates Opposers' HYCAMTIN product
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`as "topotecan HCl" (Decl. May. 112, Ex. A), as it must do by law. McCarthy, §l2:61. Health care
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`practitioners carefully use the generic term, "topotecan hydrochloride" and there is not likely to
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`be confusion.
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`On page 13 of their Motion for Summary Judgment, Opposers state that the, "USAN
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`Counsel and the International Non-proprietary Name ("INN") Committee of the World Health
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`Organization... selected 'topotecan hydrochloride‘ and 'topotecan' as the generic and chemical
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`names for pharmaceutical drugs comprised of antineoplastic DNA topoisomerase 1 inhibitors."
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`McLeod Dec]. 117, Ex. F. They are in error. Contrary to the McLeod Declaration, the materials
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`cited by McLeod show that only "topotecan hydrochloride" is the generic term; "topotecan" is
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`not. Similarly, the USP Dictionary of USAN and International Drug Names shows only
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`"topotecan hydrochloride" in reference to antineoplastic DNA topoisomerase 1 inhibitors.
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`Peterson Dec. 1[4, Ex. C. Opposers' have not established that "topotecan" is the generic term for
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`"pharmaceutical preparations used in the treatment of cancer." In fact, their own evidence shows
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`that "topotecan hydrochloride" has been established as the generic term for this drug.
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`Applicant's mark certainly is different and not confusingly similar to the generic term
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`"topotecan hydrochloride.“ This term is two words and connotes an actual chemical formula by
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`-12-
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`adopting a "chloride" designation. TOPOTECT is not confusingly similar to the actual generic
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`term "topotecan hydrochloride."
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`Applicant’s TOPOTECT mark and the generic term fragment, "topotecan," also have
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`significant visual and aural differences. Considering the mark and the generic term fragment in
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`their entireties, Applicant's TOPOTECT mark consists of eight letters, and the generic term
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`fragment "topotecan" consists of nine letters. The mark and the generic term fragment also end
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`with different letters. These differences make them look different.
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`They also sound different. Phonetically, the mark and the generic term fragment consist
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`of three and four syllables, respectively. Of these syllables, only the initial syllables are
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`identical. The suffix -TECT in Applicant's TOPOTECT mark differs substantially from the -TE-
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`CAN suffix in the generic term fragment. This makes the construction and rhythm of the two
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`words very different. The mark TOPOTECT and the generic term fragment "topotecan" are,
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`therefore, visually and aurally distinct.
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`TOPOTECT also does not constitute a slight misspelling of the generic term fragment
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`"topotecan." They are visually and aurally different. This is not a case where the words differ
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`by one letter, such as a Vowel, substitute one known phonetic combination for another, such as
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`"f“ for "ph." Overall, the mark and the generic term fragment, "differ so substantially in
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`appearance, sound, connotation and commercial impression that there is no likelihood that their
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`contemporaneous use by different parties will result in confusion." In re E.I. duPont de Nemours
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`& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Opposers' Cross-Motion for Summary
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`Judgment should be denied.
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`-13-
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`D.
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`There is no evidence of actual confusion between the mark TOPOTECT and
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`the generic term "topotecan hydrochloride."
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`Actual confusion, if it exists, is highly probative of the likelihood of confusion. Qcgpg
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`Industries, Inc. v. Repcoparts USA, Inc., 218 USPQ 81 (TTAB 1983). In this case, however,
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`actual confusion does not exist. Opposers' failed to prove even one instance of actual confusion
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`between the TOPOTECT mark and the generic term fragment "topotecan" even though they both
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`have been available to doctors for some time. Not. of Opp. 114, 8, 21. In fact, the Opposers'
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`evidence shows a careful extensive usage of the two marks without any confusion whatsoever.
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`Opposers cite to instances in which computer search engines and other computer
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`applications automatically inquired whether the user meant to use the term "topotecan" when
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`searching for TOPOTECT. McLeod Decl. 118, Ex. G. These searches, however, are not
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`reflective of human confusion or the likelihood of human confusion. They are indicative of
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`computer based rules and they are totally irrelevant to the issues in this motion. Opposers' own
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`printout of the www.rxlist.com website shows that they initiated a "Fuzzy" Search. The website
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`states that "[a] 'Fuzzy' search assumes your input may be spelled incorrectly and attempts to find
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`close matches." The website, however, warns that, "'Fuzzy' results may appear nonsensical, at
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`times, but reflect certain similar patterns to allow for a range of spelling probabilities." McLeod
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`Decl. 118, Ex. G.
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`Page 16 of Opposers' brief references a "spell-check feature in common software
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`programs and Internet search engines" that purports to recognize the mark TOPOTECT as the
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`generic term fragment "topotecan." Opposers, however, have failed to meet their burden of
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`showing how these search engines work. For example, the help page on the www.google.com
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`website states that, "Google's spell checking software automatically looks at your query and
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`-14-
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`checks to see if you are using the most common version of a word's spelling. If it calculates that
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`you're likely to generate more relevant search results with an alternative spelling, it will ask, ‘Do
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`you mean: (more common spelling)?'." Peterson Decl. 115, Ex. D. When Applicant's attorney
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`asked www.google.com what "algorithm" Google used to generate its spelling suggestions,
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`Applicant was told that the algorithm was proprietary. Schuman Decl. 112. Opposers purported
`
`evidence regarding possible search engine "confusion," is unsubstantiated and simply is not
`
`relevant to the issue of the likelihood of human confusion, anyway.
`
`Although the search routines are irrelevant because they are not indicative of a likelihood
`
`of human confusion, the intemet search results by Opposers actually support Applicant and are
`
`strong evidence that there is no human confusion between the mark TOPOTECT and the generic
`
`term fragment "topotecan." Opposers’ search of the wvvw.lycos.com search engine for
`
`"TOPOTECT" resulted in 37 hits. These 37 hits show no confusion. All 37 references relate to
`
`Applicant's TOPOTECT product and not to the generic "topotecan hydrochloride!" McLeod
`
`Decl. 118, Ex. G. Similarly, Opposers’ search of the www.alltheweb.com search engine yielded
`
`16 results. E. All 16 references related to Applicant's TOPOTECT product and none related to
`
`"topotecan hydrochloride!" I_cl. Indeed, Opposers‘ have failed to identify even one instance in
`
`which Applicant's TOPOTECT mark was confused with the generic term fragment "topotecan"
`
`on the intemet.
`
`Opposers’ search results of the generic term fragment "topotecan" also prove that there is
`
`no likelihood of confusion between the TOPOTECT mark and the generic term fragment
`
`"topotecan." Opposers’ search for "topotecan" on the www. goog1e.com search engine, resulted
`
`in about 25,000 hits. McLeod Decl. 113, Ex. B. Opposers‘ did not identify even one instance in
`
`these 25,000 hits in which Applicant's TOPOTECT mark was confused with the generic term
`
`-15-
`
`

`
`
`
`fragment "topotecan." The fact that there has not been one instance of confusion in over 25,000
`
`uses on the intemet is truly remarkable. Opposers' own evidence proves that there is no actual
`
`confusion and no likelihood of confusion between the mark TOPOTECT and the generic term
`
`fragment "topotecan."
`
`Publications in the pharmaceutical industry have also not confused "topotecan" with
`
`TOPOTECT. Indeed, none of the references cited by Opposers confuse "topotecan" with
`
`"TOPOTECT." This is strong evidence that the relevant consumers, here doctors, take great care
`
`to properly identify the drugs about which they are writing.
`
`Opposer cites the United States Pharmacopoeia Convention, Inc.'s ("USP"), USP Quality
`
`Review (March 2001) in support of the proposition that pharmacists and physicians are not
`
`immune from making mistakes. May Decl. 117, Ex. F. Interestingly, the USP list does not show
`
`TOPOTECT and "topotecan" as confusingly similar marks! E. "Topotecan hydrochloride" has
`
`been used since at least 1997 and the mark TOPOTECT has been in use since at least 2001. May
`
`Decl. 113, Ex. B, and McLeod Decl. ‘H9, Ex. H. Despite the fact that both were in use when the
`
`USP report issued, they are not listed as confused pairs of drugs.2
`
`Even though the USP proves there is no confusion, the USP is not legally relevant to this
`
`proceeding anyway. Opposers have not shown that the standards used for including drug names
`
`on the USP Quality Review list are the same standards by which a likelihood of confusion is
`
`measured under the trademark laws. In fact, they are not. The USP list states that the confusion
`
`results, in part, from, “illegible handwriting, incomplete knowledge of drug names, newly
`
`available products, similar packaging or labeling, and incorrect selection of a similar name from
`
`a computerized list." These factors are not considered under Section 2(d). The case of In re E.I.
`
`2 Opposers have not provided a more recent version of the USP Quality Review listing TOPOTECT or "topotecan"
`either.
`
`-15-
`
`

`
`duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), established the test for
`
`determining whether confusion would be likely. In that case, the Court listed the principal factors
`
`to be considered in resolving this issue. Chief among these factors are the similarity of the marks
`
`as to appearance, pronunciation, meaning and commercial impression and the similarity of the
`
`goods. The factors listed in the USP are not in the duPont court's list.
`
`The standards listed in the USP article are clearly different from those set out in the
`
`duPont case because pairs of registered trademarks are shown together in the USP list as being
`
`confusingly similar for the purposes of USP. Nonetheless, these same pairs clearly were
`
`separately registerable under Section 2(d) because they were not confusingly similar under the
`
`trademark law. For example, the USP article lists the following "similar drug names" but they
`
`are not "confusingly similar" under the trademark laws as evidenced by their concurrent
`
`registrations:
`
`Coumadin® aJ.S. Reg. 395,328) and Avandia® (U.S. Reg. 2,472,171)
`
`Addera1l® (U.S. Reg. 1,908,092) and Inderal® (U.S. Reg. 7,88,963)
`
`Aldara® (U.S. Reg. 2,053,136) and Alora® (U.S. Reg. 2,104,065)
`
`Cardura® (U.S. Reg. 1,360,101) and Ridaura® (U.S. Reg. 1,179,785)
`
`Flomax® (U.S. Reg. 2,065,491) and Fosamax® (U.S. Reg. 1,710,682)
`
`Whatever standard the USP uses, it clearly does not use a standard consistent with the trademark
`
`statute, otherwise the USP would not list so many pairs of registered trademarks as being
`
`"similar."
`
`There are cases supporting the proposition that the lack of actual confusion is not
`
`probative of a likelihood of confusion. Those cases, however, are distinguishable from this case.
`
`For example, where the items are low-priced goods, or purchased on impulse, consumers would
`
`-17-
`
`

`
`
`
`not be expected to complain about purchasing the wrong product. gep, gg. Brunswick Corp. v.
`
`Spinit Reel Co., 832 F.2d 513, 522 (10th Cir. 1987). In Brunswick, the court held that the lack
`
`of evidence of actual confusion was not probative because consumers are more likely to avoid
`
`the brand in the fiiture than to complain. Here, the goods are not low-priced, impulse products.
`
`Rather, they are pharmaceuticals that are subject to strict regulation. May Decl. 1[4, Ex. C.
`
`The absence of actual confusion also is of no consequence when customers might not
`
`inquire because they simply assume a connection between the mark sought to be registered and
`
`Opposers' mark. Bottega Veneta, Inc. v. Volume Shoe Corp, 226 U.S.P.Q. 964, 971 (TTAB
`
`1985). In l3o_’t<eg2_1, the Board held that retail purchasers have a natural reluctance to admit that
`
`they have been deceived, which materially reduces the likelihood that any confusion would be
`
`reported. Here, doctors have a professional duty to act in the best interests of their patients.
`
`They would be obligated to report any confusion, especially if the wrong drug is administered.
`
`Indeed, the USP seems to solicit actual instances of confusion from doctors. May Decl. 117, Ex.
`
`F.
`
`Lastly, the absence of actual confusion evidence is of no consequence where there is
`
`nothing to suggest that the products of the parties are not well constructed and of good quality.
`
`Tony Lama Co. V. DiStefano, 206 USPQ 176, 185 (TTAB 1980). This case does not apply to
`
`the pres

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