BULKY DOCUMENTS
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`(Exceeds 300 pages)
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`Proceeding/Serial No:
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`flméa Em,
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`TTAB
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`TTAB
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`i
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`l l
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`lSTA.092M
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`i
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`Orphan Medical, Inc.,
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`Opposition No.: 91,162,204
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`Opposer’
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`V
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`ISTA Pharmaceuticals, Inc.,
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`Applicant.
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`
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`I hereby certify that this correspondence and all marked attachments
`are being deposited with the United States Postal Service as first-
`class mail
`in an envelope addressed to:
`Commissioner
`for
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`Trademarks, PO. Box 1451, Alexandria, VA 22313-1451, on
`Au ust25 2005
`
`
`(Date)
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`_‘
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`/v//p
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`/2 ‘ AL‘/QT]/—<~
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`Stacey R. Halpem
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`ISTA’S PHARMACEUTICALS lNC.’S MOTION
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`FOR SUMMARY JUDGMENT
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`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 223 13_1 451
`
`Dear Sir:
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`llllllllllllllllllllllllllllllllllllllllllllllllll
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`O8-29-2005
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`U.S. Patent & TM01'c/TM Mail Rcpt 0:. #01
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`ISTA Pharmaceuticals, Inc. (“Applicant”) respectfully moves the Trademark Trial and Appeal Board
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`(the “Board”) pursuant to Rule 56 of the Federal Rules of Civil Procedure for summary judgment in the
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`above-referenced Opposition proceeding. A Memorandum in Support Applicant’s Motion for Summary
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`Judgment and the Declarations of Tom Mitro and Stacey R. Halpem are being filed concurrently herewith.‘
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`Orphan Medical, Inc. (“Opposer”) asserts in its Notice of Opposition that Applicant’s mark XIBROM
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`so resembles Opposer’s XYREM mark that, when used on or in connection with the goods identified in
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`Applicant’s U.S. Trademark Application Serial No. 78/298,369, it is likely to cause confusion. Opposer also
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`asserts that its mark is famous and that Applicant’s application dilutes Opposer’s mark.
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`However, there are no genuine issues of material fact in dispute which would preclude the Board from
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`granting summary judgment in this proceeding. The only dispute in this proceeding is to the legal conclusion to
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`I Opposer’s responses to Applicant’s discovery requests are attached as Exhibit 2 to the Halpem Decl. As portions of Opposer’s
`responses are designated "Confidential” and/or “Attorney’s Eyes Only,” such portions were redacted from the attached copies.
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`be drawn from the facts. Applicant will establish that the legal conclusion must be that there is Q likelihood of
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`confusion between the marks in issue. Applicant will also establish that the legal conclusion must be that
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`Applicant’s mark does not dilute Opposer’s mark.
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`Specifically, when viewed in their entireties, the marks XIBROM and XYREM fundamentally differ in
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`overall appearance and commercial impression. Moreover, the goods offered in connection with each mark are
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`distinguishable and unrelated.
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`In fact,
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`the goods are not competitive with each other in any manner.
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`Additionally, both parties’ goods can only be obtained after they are selected and ordered by a physician and
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`dispensed only by a pharmacist. These types of well-educated and highly-trained individuals are likely to be
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`careful and discriminating in their selection of prescription pharmaceutical products. Moreover, both parties’
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`goods are regulated by the Food and Drug Administration and cannot be sold to the average consumer
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`without
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`a prescription from a healthcare/medical professional. More importantly, unlike some
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`pharmaceutical preparations, which can be filled at a consumer’s local pharmacy or through mail order,
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`Opposer has admitted that its XYREM products can gyi distributed by means of one third—party
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`pharmacy
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`As the function and purpose of the goods are dissimilar, a healthcare/medical professional would not
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`prescribe a prescription pharmaceutical preparation if it was not appropriate for treating the patient’s
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`condition. As the conditions treated by Applicant’s XIBROM product (ocular disorders) are unrelated to the
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`conditions treated by Opposer’s XYREM product (narcolepsy, fibromyalgia, insomnia and myositis), there is
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`no likelihood of confusion.
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`Considering the differences in the marks, the differences in the functions and purposes of the goods,
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`the highly specialized nature of both parties’ goods, the sophistication and knowledge of the purchasers, and
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`the fact that prescription pharmaceutical products are not purchased on impulse but only after careful
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`consideration of the functions, purposes, and side effects of the drugs, there is no likelihood that consumers
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`and potential consumers would think that the parties’ products emanate from or are otherwise associated with
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`or sponsored by the same source.
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`Additionally, given the differences in the marks, the channels of trade, the weakness of Opposer’s
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`mark, the undisputed facts demonstrate that Applicant’s mark does not dilute Opposer’s mark.
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`Therefore, Applicant respectfully submits that a grant of summary judgment based on no likelihood of
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`confusion and no dilution in this proceeding is appropriate and requests that the Board enter such judgment in
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`favor of Applicant and thereby dismiss Opposer’s opposition against U.S. Trademark Application Serial No.
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`78/298,369.
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`Respectfully submitted,
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
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`Dated: August 25, 2005
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`By:
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` i K - T
`Steven J. Nataupsky
`Michael K. Friedland
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`Stacey R. Halpem
`Tirzah Abé Lowe
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`2040 Main Street, 14"‘ Floor
`Irvine, CA 92614
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`(949) 760-0404
`Attorneys for Applicant,
`ISTA Pharmaceuticals, Inc.
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`CERTIFICATE OF SERVICE
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`I hereby certify that I served a copy of the foregoing ISTA PHARMACEUTICALS, lNC.’S
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`MOTION FOR SUMMARY JUDGMENT upon Opposer’s counsel by depositing one copy thereof in the
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`United States Mail, first-class postage prepaid, on August 25, 2005, addressed as follows:
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`Stephen R. Baird
`Troy E. Amlund
`WINTHROP & WEINSTINE, P.A.
`225 South 6"‘ Street, Suite #3500
`Minneapolis, MN 55402
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`/1/{LL
`Stacey R. Halpem
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`186381 lzsh
`082505
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`

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`Ii§TA.092M
`i
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`TTAB
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`Orphan Medical, Inc.,
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`Opposition No.: 91,162,204
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`Opposer:
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`V.
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`I hereby certify that this correspondence and all marked
`attachments are being deposited with the United States
`Postal Service as first-class mail in an envelope addressed
`to:
`Commissioner
`for Trademarks, PO. Box 1451,
`Alexandria, VA 22313-1451, on
`Au ust 25 2005
`
`
`ISTA Pharmaceuticals, Inc.,
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`(Date)
`
`Applicant.
`
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`M K‘
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`’47"2’\/———-
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`Stacey R. Halpem
`
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`MEMORANDUM IN SUPPORT OF ISTA PHARMACEUTICALS INC.’S
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`MOTION FOR SUMMARY JUDGMENT
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`Commissioner for Trademarks
`P.O. Box 1451
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`Alexandria, VA 22313-1451
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`1.
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`INTRODUCTION
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`This is a trademark opposition brought by Orphan Medical, Inc. (“Opposer”), against ISTA
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`Pharmaceuticals,
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`Inc.’s
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`(“Applicant”) U.S. Application Serial No.
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`78/298,369
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`(“Applicant’s
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`Application”) for the mark XIBROM (“Applicant’s Mark”) for “pharmaceutical preparations, namely, a
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`topical preparation for the treatment of ocular disorders,” (“Applicant’s Goods”).
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`In Opposer’s Notice of Opposition, Opposer alleges that Applicant’s Mark when used on or in
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`connection with Applicant’s Goods is likely to cause confusion or mistake as to source with Opposer’s
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`XYREM mark (“Opposer’s Mark”) in connection with “pharmaceutical preparations for the treatment of
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`diseases of the central nervous system and a variety of conditions, symptoms, and diseases, namely,
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`narcolepsy, fibromyalgia, insomnia and myositis and providing telephone support services to patients
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`regarding the safe and appropriate use and distribution of medications used to treat sleep disorders;
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`providing medical information via telephone and in the form of written educational materials to patients
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`in connection with the safe and appropriate use and distribution of medication for the treatment of sleep
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`disorders” (all of the foregoing goods and services collectively referred to hereinafter as “Opposer’s
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`Goods”). Opposer also alleges that Applicant’s Mark dilutes the distinctive quality of Opposer’s Mark.
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`The dispositive issues in this case are: (1) whether a likelihood of confusion exists between
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`Applicant’s Mark in connection with Applicant’s Goods and Opposer’s Mark in connection with
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`Opposer’s Goods; and (2) whether Applicant’s Application dilutes Opposer’s Mark.
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`Opposer’s assertion of likelihood of confusion is unfounded.
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`It
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`is clear that the parties’
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`respective marks are so significantly different in overall appearance and commercial impression as to
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`completely avoid a likelihood of confusion.
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`Furthermore,
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`it
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`is clear that Opposer’s Goodsiand
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`Applicant’s Goods are non-competitive and unrelated. Additionally, Opposer’s Goods are not sold
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`through the same channels of distribution as Applicant’s Goods. Moreover, the purchasers of both
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`parties’ goods are discerning and careful consumers. Finally, Opposer’s mark is a weak mark and is only
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`entitled to a narrow scope of trademark protection. Accordingly, there is no genuine issue of material
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`fact as to a likelihood of confusion, and a grant of summary judgment for Applicant is appropriate in this
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`instance.
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`Similarly, Opposer’s assertion of dilution is also unfounded. The parties’ respective marks are
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`too different for any concern over dilution to properly arise. Moreover, Opposer has not and cannot
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`demonstrate its mark is famous. Furthermore, the undisputed facts demonstrate that there has not been
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`any blurring, tamishment or any sort of lessening of the distinctiveness of Opposer’s Mark. Nor, is there
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`a likelihood that Applicant’s mark will cause blurring, tamishment or any sort of lessening of the
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`distinctiveness of Opposer’s Mark.
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`II.
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`FACTUAL BACKGROUND
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`Applicant filed Applicant’s Application with the U.S. Patent and Trademark office (“PTO”) on
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`September 10, 2003 seeking registration of Applicant’s Mark for “pharmaceutical preparations,
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`including, a topical preparation for the treatment of ocular disorders” based upon Applicant’s bona-fide
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`intention to use the mark in the United States. The only Office Action issued against Applicant’s
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`Application was a priority Office Action requesting amendments to the identification of goods (which
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`amended the goods to “pharmaceutical preparations, namely, a topical preparation for the treatment of
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`ocular disorders”). Accordingly, no prior pending applications or registrations, including any of the
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`registrations Opposer asserts in its Notice of Opposition, were cited as a bar to registration by the PTO
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`Examining Attorney. Applicant’s Application was published for opposition on August 11, 2004.
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`On September 16, 2004, Opposer filed a Notice of Opposition with the Trademark Trial and
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`Appeal Board (the “Board”) claiming that Applicant’s use of the mark XIBROM on or in connection
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`with Applicant’s Goods was likely to cause confusion or mistake with Opposer’s XYREM Mark.
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`Furthermore, Opposer argues that purchasers and prospective purchasers are likely to mistakenly believe
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`that Applicant’s Goods are sponsored by, endorsed or approved by Opposer or are in some way affiliated,
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`connected or associated with Opposer.
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`Finally, Opposer alleges that Applicant’s Mark dilutes the
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`distinctive qualities of Opposer’s Mark.
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`III.
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`SUMMARY JUDGMENT STANDARD AND BURDEN OF PROOF
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`Summary judgment should be granted where, as here, it is shown that there is no genuine issue of
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`material fact, and the moving party is entitled to judgment as a matter of law. Federal Rule of Civil
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`Procedure (“FRCP”), Rule 56(c). FRCP 56(c), in pertinent part, states that a summary judgment should
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`be granted where, as here, “the pleadings, .
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`.
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`. answers to interrogatories, and admissions on file, together
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`with the affidavits .
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`.
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`. show that there is no genuine issue as to any material fact and that the moving
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`party is entitled to a judgment as a matter of law.” These general principles of summary judgment apply
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`under FRCP 56 to inter-parties proceedings before the Board.
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`_S_e§_, ggu, Sweats Fashions Inc. v. Pannill
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`Knitting Co., 833 F.2d 1560, 4 U.S.P.Q.2d 1793, 1797 (Fed. Cir. 1987).
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`Summary judgment is an appropriate method of disposing of an opposition in which there is no
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`genuine issue of material fact on the question of likelihood of confusion or dilution. Kellogg Co. v.
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`Pack’Em Enterprises, Inc., 14 U.S.P.Q. 2d 1545 (T.T.A.B. 1990) (add dilution cite). As the Federal
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`Circuit stated in Pure Gold, Inc. v. Sjmtex 1U.S.A.), Inc., 222 U.S.P.Q. 741, 743 (Fed. Cir. 1984):
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`The basic purpose of summary judgment procedure is one of judicial economy -- to save
`the time and expense of a full trial when it is unnecessary because the essential facts
`necessary to decision of the issue can be adequately developed by less costly procedures,
`as contemplated the FRCP rules here involved, with a net benefit to society.
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`Likewise, summary judgment in an opposition proceeding is designed to save the time and expense of a
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`full opposition proceeding where there is no genuine issue as to any material fact. Bet Lock Co
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`. v.
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`Schlage Lock Co., 413 F.2d 1195 (C.C.P.Q. 1969).
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`Applicant, as the moving party, has the burden of demonstrating that it is entitled to summary
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`judgment. Celotex Corp. V. Catrett, 477 U.S. 317, 324-25 (1986). By meeting its burden of identifying
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`undisputed facts, Applicant
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`is entitled to relief. Opposer cannot respond merely by pointing to
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`allegations or denials in the pleadings. Matsushita Elec. Indus. Co. v. Zenith Radio Corp, 475 U.S. 574,
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`586 (1986).
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`Instead, Opposer must submit gm facts showing that there is a genuine issue for trial.
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`Li. at 587. In doing so, Opposer must present evidence from which a reasonable trier of fact might return
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`a verdict in its favor. Anderson v. Libemg Lobby, Inc., 477 U.S. 242, 249-250 (1986).
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`IV.
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`THERE IS NO GENUINE ISSUE OF MATERIAL FACT
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`ON THE QUESTION OF LIKELIHOOD OF CONFUSION
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`Likelihood of Confusion Test
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`15 U.S.C. § l052(d), Section 2(d) of the Trademark Act, allows for registration of a mark unless
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`the mark “so resembles a mark previously used in the United States by another and not abandoned, as to
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`be likely, when used on or in connection with the goods of the applicant, to cause confusion, or cause
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`mistake, or to deceive.”
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`There is no rigid test for analyzing likelihood of confusion. However, T.M.E.P. § 1207.01 lists
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`thirteen factors as relevant in determining the registrability of a mark over an allegedly confusingly
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`similar mark. Of those thirteen factors, the most important factors in this matter are: (1) the differences
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`in the marks when viewed in their entireties as to overall appearance and commercial impression; (2) the
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`dissimilarity and nature of the goods as described in the application and registration or in connection
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`with which a prior mark is used; (3) the conditions under which, and the buyers to whom sales are made,
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`i.e., impulse vs. careful, sophisticated purchasing; and (4) the weakness of the mark. E Application of
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`E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973).
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`In this matter, Opposer cannot carry its burden to prove the elements of “likelihood of
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`confusion.” Instead, overwhelming evidence shows just the opposite to be true.
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`In applying the factors
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`summarized above in this matter, it must be concluded that Applicant is entitled to summary judgment in
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`this matter.
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`Opposer’s allegation in its Notice of Opposition as to how the marks could be considered
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`confusingly similar is that “Applicant’s proposed mark XIBROM so resembles Opposer’s XYREM mark
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`as to be likely, when used on or in connection with the pharmaceutical preparations described in the
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`Application, to cause confusion, mistake or to deceive.” Notice of Opposition W 17-20. However, as is
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`detailed below,
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`it
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`is clear from simply looking at the two marks,
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`that the marks differ in overall
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`appearance and commercial impression.
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`Moreover, due to the differences in function and purpose of the parties’ respective goods,
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`Applicant’s Goods are not
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`likely to be confused with Opposer’s Goods. Likewise, the trade and
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`purchasing public are not
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`likely to believe that Applicant’s Goods originate with or are otherwise
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`authorized, licensed or sponsored by Opposer. Furthermore, due to the nature of the parties’ goods
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`(specialized pharmaceutical products), they can and will only be purchased by sophisticated purchasers
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`after very careful consideration and investigation.
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`The lack of any likelihood of confusion between the marks can be determined just from looking
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`at Applicant’s Mark and Opposer’s Mark in relation to the significant differences between Applicant’s
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`Goods and Opposer’s Goods. There is no genuine issue of material fact involved in this determination.
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`There is also no genuine issue of material fact regarding the sophistication of the purchasers of
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`the goods and the channels of trade. Accordingly, the likelihood of confusion claim is appropriate for a
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`summary judgment decision.
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`Furthermore, Opposer alleges in its Notice of Opposition that purchasers and prospective
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`purchasers are likely to mistakenly believe that Applicant’s Goods are sponsored by, endorsed or
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`approved by Opposer or are in some way affiliated, connected or associated with Opposer. Notice of
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`Opposition 1} 22. However, as is discussed in detailed below, given the nature of Opposer’s Goods and
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`Opposer’s admission that no instances of actual confusion have occurred, there is also no genuine issue
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`of material fact regarding this determination.
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`Opposer also alleges in its Notice of Opposition that because a theoretical patient could
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`mistakenly ingest Applicant’s Goods instead of Opposer’s Goods, Applicant’s Application should be
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`denied. Notice of Opposition 1H] 21, 23-24.
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`However, the identification of goods in Applicant’s Application limits Applicant’s Goods to
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`t_op_i_c_al application. Moreover, due to the differences in the packaging, format and channels of
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`distribution for each party’s product, a consumer could not mistakenly ingest Applicant’s Goods instead
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`of Opposer’s Goods or mistakenly apply Opposer’s Goods instead of Applicant’s Goods.
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`Furthermore, both parties’ names and products were examined and have been approved by the
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`Food and Drug Administration (“FDA”). Applicant notes that in addition to requiring a prescription,
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`Opposer’s product can only be offered for sale and sold under extremely strict guidelines. As all of
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`Opposer’s arguments regarding a likelihood of confusion fail as a matter of law, Applicant is entitled to
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`summary judgment.
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`1.
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`The Marks XYREM and XIBROM Are Dissimilar in Overall Appearance and
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`~
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`Commercial Impression
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`Applicant seeks registration for the mark XIBROM. Conversely, Opposer’s Mark is the tenn
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`XYREM either alone or followed by other terms and/or designs. A comparison of Applicant’s Mark and
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`Opposer’s Mark shows that the parties’ marks are quite dissimilar in overall appearance and commercial
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`impression, as set forth in more detail herein.
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`a.
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`The Marks Must be Compared in Their Entireties
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`It is well founded that in making a determination of likelihood of confusion, marks must be
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`compared in their entireties and should not be dissected and their parts compared separately. E Estate
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`of P. D. Beckwith Inc. V. Comm. of Patents, 252 U.S. 538 (1920) (the commercial impression of a
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`composite mark is derived from the mark as a whole, not its separate elements).
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`In fact, it has been held
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`that it is a violation of the anti-dissection rule to ignore elements of a mark in deciding whether confusion
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`is likely. Franklin Mint Com. v. Master Mfg. Co., 667 F.2d 1005, 1007 (C.C.P.A. 1981). In other words,
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`splitting a mark into its various components and comparing only certain portions of one mark with
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`Junior Colle e Inc. v. Fashion Institute of Technoloanother mark is not proper. Masse , 492 F.2d
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`1399, 181 U.S.P.Q. 272 (C.C.P.A. 1974). Thus, as described below, a flpg comparison of Applicant’s
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`XIBROM mark to Opposer’s XYREM mark shows that the marks are quite dissimilar in overall
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`appearance and commercial impression.
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`b.
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`The Marks Are Different in Overall A earance Meanin and Commercial
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`Impression
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`Opposer alleges that there is a likelihood of confusion because Applicant’s XIBROM mark and
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`Opposer’s XYREM mark both start with an X and end with a M. Notice of Opposition 11 19. However,
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`when the marks are compared in their entities, the marks are not visually similar. Opposer also alleges
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`that both marks contain an identical “r” sound and then a similar short vowel sound. Notice of
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`Opposition 1] 19. However, Applicant’s mark does not contain an “r” sound.
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`Instead, Applicant’s mark
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`contains the blended sound “br.”
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`More importantly, the second syllable of Applicant’s mark is BROM, which is suggestive of the
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`generic name of the product, bromfenac ophthalmic solution 0.09%. Declaration of Tim Mitro in
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`Support of Ista Pharmaceuticals,
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`Inc.’s Motion for Summary Judgment (“Mitro Decl.”) at
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`11 5.
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`Conversely, the second syllable of Opposer’s mark is REM, which Opposer undoubtedly selected to
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`connote the fact that its XYREM product helps patients who are having difficultly in obtaining proper
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`rapid eye movement or REM sleep. See Opposer’s documents produced in its Responses to Applicant’s
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`Document Requests (“Opposer’s Documents”), attached as Exhibit 3 to the Declaration of Stacey R.
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`Halpem in Support of Ista Pharmaceuticals, Inc.’s Motion for Summary Judgment (“Halpem Decl.”) at 11
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`3; Halpem Decl. at 1] 4.‘
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`Generally, sleep disorders affect the quality, duration, and onset of sleep. Rapid eye movement
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`latency (the time it takes to achieve REM sleep) may be affected by a sleep disorder like narcolepsy.
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`Halpem Decl. at 11 4. Medications, such as the XYREM product, act on some neurotransmitter systems to
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`produce suppression of REM sleep and consequently improve the symptoms of sleep disorders.
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`I_d_.
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`1 As portions of Opposer’s responses are designated “Confidential” and/or “Attomey’s Eyes Only,” such portions were redacted.
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`Thus, while Applicant’s Mark and Opposer’s Mark each begin with the letter X and end with the
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`letter M,
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`the undisputed facts demonstrate that the marks are not phonetically similar and do not proffer
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`the same meaning or connotation. This factor alone is sufficient to grant Applicant’s Motion for
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`Summary Judgment.
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`Moreover, as is discussed in detail below, the differences in the parties’ goods, the differences in
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`the channels of trade, the sophistication of the purchasers of the goods, and the differences in the ultimate
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`consumers of the goods, require a finding that confusion is unlikely.
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`2.
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`Applicant’s Goods Are Dissimilar to Opposer’s Goods
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`Applicant submits that there is no genuine issue of a material fact regarding the differences in
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`Applicant’s Goods and Opposer’s Goods.
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`In Opposer’s Notice of Opposition, Opposer states that it has
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`used its XYREM mark in connection with pharmaceutical preparations for the treatment of diseases of
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`the central nervous system and a variety of conditions, symptoms, and diseases, namely, narcolepsy,
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`fibromyalgia, insomnia and myositis and providing telephone support services to patients regarding the
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`safe and appropriate use and distribution of medications used to treat sleep disorders; providing medical
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`information via telephone and in the form of written educational materials to patients in connection with
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`the safe and appropriate use and distribution of medication for the treatment of sleep disorders. Notice of
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`Opposition 111] 6, 8-15.
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`All these goods and services are clearly related to treatment of diseases of the central nervous
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`system and sleep disorders. None of these goods or services has anything to do with treating
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`postoperative inflammation in patients who have undergone cataract extraction. Mitro Decl. at 1] 10.
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`In
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`fact, Opposer admits that the only conditions treated by its XYREM product are cataplexy, narcolepsy,
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`hypersomnia, insomnia, fibromyaliga pain and sleep disorders/disturbances. Opposer’s Responses to
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`Applicant’s Interrogatories Nos. 3, 4 and 8, attached as Exhibit 2 to Halpem Decl. at 1[ 3.
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`Moreover,
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`in Opposer’s Response to Applicant’s Interrogatory No. 42, Opposer
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`lists its
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`competitors and its competitors’ products. Notably ill from this list is Applicant and Applicant’s
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`XIBROM product. Furthermore,
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`in Opposer’s response to Applicant’s Interrogatory No. 30, Opposer
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`stated that it “is not aware of any medical link between narcolepsy and ocular disorders.” Exhibit 2 to
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`Halpem Decl. at 1] 3.
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`Furthermore, Opposer’s product is not topically applied but ingested orally.
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`Opposer’s Response to Interrogatory No. 8, attached as Exhibit 2 to Halpem Decl. at 1] 3.
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`In contrast to Opposer’s orally ingested drug used to treat central nervous system and sleep
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`disorders, Applicant seeks registration for a mg preparation used for the treatment of ocular disorders.
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`Unlike Opposer’s product, Applicant’s product is not orally ingested.
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`Instead, Applicant’s XIBROM
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`product is dispensed (by prescription only) in a plastic squeeze bottle with a dropper tip and is topically
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`applied by placing one drops on to the outer surface of a patient’s eyes. Mitro Decl. at 1] 8.
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`Thus,
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`it would be impossible for a patient to mistakenly ingest Applicant’s product under the
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`mistaken belief it was Opposer’s drug. Similarly, it would be impossible for a patient to mistakenly
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`apply Opposer’s drug to his or her eye under the mistaken belief it was Applicant’s product.
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`In fact, the
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`o_n1y arguable similarity between Opposer’s Goods and Applicant’s Goods is their classification in the
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`same International Class of Goods.
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`Despite Opposer’s allegations to the contrary, the issue of whether or not two products are
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`related Qg Q revolve around the question of whether a term can be used that describes them both, or
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`whether both can be classified under the same general category. Electronic Data Systems Com. v. EDSA
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`Micro Corp, 23 U.S.P.Q.2d 1460, 1463 (T.T.A.B. 1992). Past decisions of the Board and the Federal
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`courts have concluded that a “per se” rule that goods and services in the same general field and bearing
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`the same mark are so similar or related that confusion as to origin is likely are contrary to the basic tenets
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`of trademark law. 3 In re The Shoe Works Inc., 6 U.S.P.Q.2d 1890, 1891 (T.T.A.B. 1990) (no “per se”
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`rule for wearing apparel); Interstate Brands v. Celestial Seasonings, 576 F.2d 926, 928, 198 U.S.P.Q.
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`151, 152 (C.C.P.A. 1978) (no “per se” rule that the use of the same mark on different food items is likely
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`to cause confusion).
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`Thus, the fact that Applicant’s Goods and Opposer’s Goods are both “pharmaceutical products”
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`does not make the goods related.
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`Instead, the Board has consistently held that in order to support a
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`likelihood of confusion, there must be some similarity between the goods beyond the fact that each can
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`be classified into the same broad category.
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`In fact, the Board and the courts have concluded that it is even possible for identical marks to be
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`used on closely related goods without a likelihood of confusion. E gg, Phoenix Closures Inc. V. Yen
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`Shaing Corp, 9 U.S.P.Q.2d 1891, 1894 (T.T.A.B. 1988) (no likelihood of confusion between the marks
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`“PHOENIX and BIRD DESIGN” for bottle closures, liners and the like and the mark “PHOENIX and
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`BIRD DESIGN” for vacuum bottles, thermal food jars, and similar goods); Hi-Country Foods v. Hi
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`Counm Beef Jerlgg, 4 U.S.P.Q.2d 1169, 1172 (T.T.A.B. 1987) (no likelihood of confusion between the
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`marks “HI-COUNTRY and DESIGN” and “HI-COUNTRY” both for “impulse” food); In re British
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`Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984)
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`(no likelihood of confusion between the mark
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`“PLAYERS” for shoes and the mark “PLAYERS” for men’s underwear); In re Sydel Lingerie Co., 197
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`U.S.P.Q. 629 (T.T.A.B. 1977) (no likelihood of confusion between the mark “BOTTOMS UP” for
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`ladies’ and children’s underwear and the mark “BOTTOMS UP” for men’s suits, coats and trousers); J._C.
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`Penney Co. v. Arctic Enterprises, Inc., 375 F. Supp. 913, 183 U.S.P.Q. 342 (Minn. 1974) (no likelihood
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`of confusion between the mark “EL TIGRE” for snowmobiles and the mark “EL TIGRE” for automobile
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`tires and minibikes); and Federal Telephone & Radio Corp. v. Federal Television Corp, 84 U.S.P.Q. 394
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`(2nd Cir. 1950) (no likelihood of confusion between the mark “FEDERAL” for television receivers and
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`the mark “FEDERAL” for radio receivers).
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`3.
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`The Conditions Under Which and the Buyers to Whom Sales are Made
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`A finding of no likelihood of confusion is mandated by the highly specialized nature of the
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`goods, the different channels of trade associated with the parties’ goods, and the sophistication and care
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`of the consumers and potential consumers of the goods.
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`In fact, as is discussed above, Opposer has
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`admitted the parties’ goods are not competitive and that the conditions treated by the parties’ goods are
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`not related. Thus, the case at hand presents itself as one in which there will be no competitive proximity
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`between the parties’ respective goods and services.
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`Furthermore, unlike other products,
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`the ultimate consumer of a prescription pharmaceutical
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`product (i.e., the patient) does not make the purchasing decision. Rather, such prescription products are
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`1
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`1
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`selected and ordered by a physician and dispensed by a pharmacist after a prescription has been received.
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`Mitro Decl. at 1] 11. As both parties’ goods are selected by well-educated and highly-trained medical and
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`healthcare personnel, these individuals are likely to be careful and discriminating in their selection of
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`pharmaceutical products.
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`Moreover, highly specialized prescription drugs are not purchased on impulse but only after
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`careful consideration of the functions, purposes, and side effects of the drugs. The more sophisticated
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`and knowledgeable the purchasers, the less likely it is that those purchasers will be confused by similar
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`marks. E In re Endress + Hauer Inc., 191 U.S.P.Q. 238, 239 (T.T.A.B. 1976) (“Endress”).
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`In fact, in
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`Applicant’s case, its XIRBOM product would be selected and order by an ophthalmologist, a medical
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`practitioner specializing in conditions, treatments and surgery of the eye. Mitro Decl. at 1[ 11.
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`As the “purchasers” of Applicant’s XIBROM product and Orphan’s XYREM product are
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`healthcare/medical professionals with an intimate knowledge of competing products, their purchasing
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`decision is not primarily based on a comparison of the marks, per se, but
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`is based on a deep
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`understanding of the products and their manufacturers.
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`Additionally, the realities of the marketplace mandate consumer orientation to primarily focus on
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`the specific utility or function of a product necessary to fulfill the consumer’s specific needs. A perusal
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`of the Applicant’s Goods and Opposer’s Goods indicates that the goods are not interchangeable.
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`In other
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`words, a topical ocular product could not be used to fulfill the utility or function of an orally ingested
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`drug used to treat sleep disorders, and vice-versa. Mitro Decl. at 1] 10.
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`In , gp_ra., the Board held identical marks used on sophisticated pieces of equipment
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`which were specialized in their application were not likely to be confused. The Board reached this
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`conclusion, even though the identical marks involved the phenomenon of vibration. The Board reasoned
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`that there was no likelihood of confusion given the different roles played by the two goods, both as to
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`purpose and function.
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`Similarly, in Remolds & Reynolds Company v. I.E. Systems, Inc. (“Remolds”), 5 U.S.P.Q.2d
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`1749 (T.T.A.B. 1987), the opposer marketed accounting programs, whereas the applicant marketed a
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`sophisticated highly specialized computer software program. The Board concluded that there was no
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`likelihood of confusion because the applicant marketed its products to an entirely different set of
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`consumers than the opposer. Li. at 1752.
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`Likewise, in the case at hand, both parties’ goods are highly specialized. Thus, the source of
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`Applicant’s Goods are not likely to be confused with the source of Opposer’s Goods, just as the Board
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`found that the applicant’s specialized products in _E_ridre_s_s were not likely to be confused with the goods
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`in the cited registration and just as the Board found that the applicant’s specialized computer software
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`program in Rejgolds was not likely to be confused with the opposer’s program.
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`Moreover, unlike most goods in the marketplace, both Opposer and Applicant were required to
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`obtain FDA approval for their marks. Opposer Documents, Exhibit 3 to Halpem Decl. at 1] 2; Mitro Decl.
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`at 11] 5 and 9. Similar to the PTO, to minimize confusion betw