throbber
THIS OPINION
`IS NOT A PRECEDENT OF
`THE T.T.A.B.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mailed:
`August 5, 2008
`jtw
`
`
`
`
`Hearing:
`April 9, 2008
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`Wyeth
`v.
`Walgreen Co.
`_____
`
`
`
`Opposition No. 91165912
`to Application Serial No. 76594301
`filed on 5/25/2004
`_____
`
`Bruce R. Ewing and Sandra Edelman of Dorsey & Whitney LLP
`for Wyeth.
`
`Mark J. Liss and Mark A. Nieds of Leydig Voit & Mayer for
`Walgreen Co.
`
`______
`
`Before Drost, Walsh and Mermelstein, Administrative
`Trademark Judges.
`
`Opinion by Walsh, Administrative Trademark Judge:
`
`Wyeth (opposer) has opposed the application by Walgreen
`
`
`
`Co. (applicant) to register the mark WAL-VERT in standard
`
`characters on the Principal Register for goods identified as
`
`“antihistamines and allergy relief preparations” in
`
`International Class 5. The application was filed on May 25,
`
`2004, based on a claim of a bona fide intention to use the
`
`mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
`
`§ 1051(b).
`
`

`
`Opposition No. 91165912
`
`
`
`Both parties filed briefs, and both parties took part
`
`in an oral hearing in the case on April 9, 2008.
`
`The Grounds
`
`
`
`As grounds for the opposition opposer claims priority
`
`and likelihood of confusion under Trademark Act Section
`
`2(d), 15 U.S.C. § 1052(d).1 Specifically, opposer bases its
`
`claim on its prior use of and registration of the mark in
`
`Registration No. 2835071, a registration on the Principal
`
`Register for the mark ALAVERT in standard characters for
`
`goods identified as “pharmaceutical preparations, namely
`
`allergy relief and antihistamine preparations” in
`
`International Class 5. The registration issued on April 20,
`
`2004, and states a date of first uses of the mark anywhere
`
`and first use of the mark in commerce on December 20, 2002.
`
`The Record
`
`
`
`The record consists of the pleadings and the file of
`
`the opposed application.
`
`
`
`In addition, opposer submitted notices of reliance,
`
`which include: a title and status copy of opposer’s ALAVERT
`
`registration; publications regarding opposer’s ALAVERT
`
`product; excerpts from the discovery depositions of
`
`applicant’s officials, Richard Rinka (Rinka Disc.), Ronald
`
`
`1 In the notice of opposition, opposer also asserted dilution as
`a ground, but opposer has not maintained the dilution ground in
`its trial briefs. Accordingly, we conclude that opposer has
`abandoned the dilution ground.
`
`
`2
`
`

`
`Opposition No. 91165912
`
`Belmonte (Belmonte Disc.), David Van Howe (Van Howe Disc.)
`
`and Mark DiFillipo (DiFillipo Disc.) and related exhibits;
`
`copies of certain trademark registrations owned by
`
`applicant; and copies of USPTO records related to opposer’s
`
`ALAVERT application and registration. Opposer also
`
`submitted the testimonial deposition of Christopher
`
`Marschall (Marschall Test.), one of its officials, with
`
`related exhibits.
`
`
`
`Applicant submitted notices of reliance, which include:
`
`copies of discovery depositions of opposer’s officials,
`
`Christopher Marschall (Marschall Disc.) and Roger Gravitte
`
`(Gravitte Disc.). Applicant also submitted the testimonial
`
`deposition of its official, David Van Howe (Van Howe Test.),
`
`and the testimonial deposition of Barbara Deradorian, a
`
`third-party witness (Deradorian Test.).
`
`
`
`Both parties claim that a significant amount of the
`
`evidence is confidential. Consequently, both parties also
`
`have redacted passages in their briefs which refer to this
`
`evidence. We find the claims generally reasonable.
`
`Therefore, we will refrain from referring to evidence
`
`designated as confidential in this opinion, except in
`
`instances where the parties have discussed it in their
`
`briefs without redaction or where the evidence is obviously
`
`public. This will limit our ability to discuss some of the
`
`evidence in detail.
`
`3
`
`

`
`Opposition No. 91165912
`
`
`
`There is only one dispute regarding the evidence
`
`remaining.2 Opposer objects to the admissibility of the
`
`Deradorian survey report and related testimony. Schering-
`
`Plough, a third-party competitor of opposer, commissioned
`
`the survey to evaluate consumer perception of opposer’s
`
`ALAVERT mark prior to opposer’s use of the ALAVERT mark.
`
`Applicant made the report, which is designated confidential,
`
`of record and attempts to use the report to show the
`
`weakness of the ALAVERT mark. Opposer asserts that the
`
`report should be excluded because it lacks objectivity,
`
`because the questions were biased, because no control was
`
`used and because the report is outdated. Applicant offers
`
`counter arguments as to each of these points, and ultimately
`
`concludes by arguing that opposer’s objections go to the
`
`weight of this evidence not to its admissibility.
`
`
`
`We agree with applicant’s ultimate argument regarding
`
`admissibility. We conclude that the survey report, and the
`
`related testimony, are minimally relevant and admissible.
`
`The criticisms regarding matters, such as the design and
`
`timing of the survey, go to the probative value or weight to
`
`
`2 Opposer had also objected to our consideration of certain
`search reports applicant submitted as exhibits to the Marschall
`Discovery Deposition, but at the oral hearing applicant stated
`that it was not relying on those search reports. Accordingly, we
`have not considered those reports and consequently need not
`consider opposer’s objection to their admissibility.
`
`
`4
`
`

`
`Opposition No. 91165912
`
`be accorded this evidence. For reasons discussed below, we
`
`conclude that this evidence has limited probative value.
`
`Standing
`
`
`
`Opposer has both asserted and established its interest
`
`in the proceeding, and thereby satisfied the standing
`
`requirement, by submission of a status and title copy of the
`
`ALAVERT registration. Ritchie v. Simpson, 170 F.3d 1092, 50
`
`USPQ2d 1023 (Fed. Cir. 1999).
`
`Priority
`
`
`
`Furthermore, priority is not an issue in the proceeding
`
`in view of opposer’s reliance on and submission of the
`
`ALAVERT registration. See King Candy Co., Inc. v. Eunice
`
`King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
`
`1974). In fact, applicant concedes opposer’s priority and
`
`argues only that there is no likelihood of confusion.
`
`Applicant’s Brief at 8.
`
`Findings of Fact
`
`
`
`We have already identified the most significant facts
`
`in the case, namely: (1) opposer’s registration for the
`
`ALAVERT mark in standard characters for goods identified as
`
`“pharmaceutical preparations, namely allergy relief and
`
`antihistamine preparations” in International Class 5; and
`
`(2) the opposed application for the WAL-VERT mark in
`
`standard characters for goods identified as “antihistamines
`
`and allergy relief preparations” in International Class 5.
`
`5
`
`

`
`Opposition No. 91165912
`
`Most importantly, both marks appear in standard characters
`
`with no other elements, and the identifications of goods in
`
`both the registration and application state no restrictions
`
`as to trade channels or anything else.
`
`Opposer
`
`
`
`In December 2002, opposer, a pharmaceutical company,
`
`launched a non-sedating, long-acting antihistamine with the
`
`principal active ingredient of loratadine under the ALAVERT
`
`mark. Marschall Disc. at 15-16. A competing pharmaceutical
`
`company, Schering-Plough, sold the first product containing
`
`loratadine by prescription under the CLARITIN mark. Just
`
`prior to opposer’s launch, the loratadine patent expired,
`
`and loratadine was approved for over-the-counter sales. Id.
`
`at 15-16, 74. Opposer’s ALAVERT product is in the general
`
`category of allergy medications, the subcategory of
`
`antihistamines, and the more particular further subcategory
`
`of non-sedating antihistamines.
`
`
`
`Opposer sells the ALAVERT product over the counter but
`
`it also competes with certain prescription allergy products.
`
`Applicant has offered the ALAVERT product in a variety of
`
`forms, including a limited version which also includes a
`
`decongestant. It is also available in a quick-dissolve
`
`form, a feature which opposer emphasized at the time of the
`
`launch.
`
`6
`
`

`
`Opposition No. 91165912
`
`
`
`Opposer has sold the ALAVERT product through all normal
`
`trade channels for like products including food, grocery and
`
`drug stores, chain drug stores, club stores, military
`
`facilities and convenience stores. Marschall Test. at 24.
`
`Opposer directs its sales of the ALAVERT product to “a wide
`
`range of consumers with various demographic and
`
`psychographic attributes” -- allergy sufferers, generally
`
`ranging in age from 25 to 54. Marschall Disc. at 41. A
`
`significant percentage of households purchase allergy
`
`medications. Id. at 74.
`
`
`
`Opposer has expended substantial funds and effort to
`
`advertise and promote the ALAVERT mark and product
`
`nationwide through all types of advertising media, as well
`
`as through direct promotions to medical service providers,
`
`physicians and potential purchasers. Marschall Test. at 29,
`
`55. The promotional efforts included the distribution of
`
`substantial numbers of product samples. Marschall Test. at
`
`50. The promotional efforts have reached a substantial
`
`percentage of U.S. households. Marschall Test. at 37. The
`
`sales of the ALAVERT product have been substantial.
`
`Marschall Test. at 19. The ALAVERT product has received
`
`significant coverage in the print media. Opposer’s First
`
`Notice of Reliance, Exhs. 2-63. ALAVERT is a leading brand
`
`in the over-the-counter allergy medication category.
`
`Marschall Test. at 23. A significant percentage of
`
`7
`
`

`
`Opposition No. 91165912
`
`potential purchasers of allergy medications have purchased
`
`opposer’s ALAVERT product. The ALAVERT product has achieved
`
`an impressive rate of repeat purchasers. Marschall Test. at
`
`56. Even applicant’s witnesses have acknowledged the
`
`success of the ALAVERT product. Van Howe Test. at 16;
`
`DiFillipo Disc. at 14, 26.
`
`
`
`“AL” is also in use as a prefix in marks for other
`
`over-the-counter and prescription allergy medications, for
`
`example, ALEREST and ALEGRA and for ALEVE, an over-the-
`
`counter fever and pain medication. Marschall Disc. at 154.
`
`There is no evidence of any other mark used on relevant
`
`products which includes “VERT” or “AVERT” as an element.
`
`Marschall Disc. at 154; Gravitte Disc. at 30.
`
`
`
`Opposer is not aware of any confusion between the
`
`ALAVERT and WAL-VERT marks.
`
`Applicant
`
`
`
`Applicant operates a chain of 5500 drug stores. Van
`
`Howe Test. At 6. Applicant offers a wide range of products
`
`in its stores, including private-label versions of many
`
`products. Applicant sells popular brands of over-the-
`
`counter medications, including ALAVERT, as well as its own
`
`private-label versions of many popular brands. In September
`
`2004, applicant launched a private-label version of ALAVERT
`
`under the WAL-VERT mark, the mark which is the subject of
`
`the opposed application. The products sold under the
`
`8
`
`

`
`Opposition No. 91165912
`
`ALAVERT and WAL-VERT marks are chemically identical. Van
`
`Howe Test. at 17. Applicant markets its WAL-VERT product
`
`based on a comparison with opposer’s ALAVERT product.
`
`Gravitte Disc. at 22. Applicant sells the WAL-VERT product
`
`exclusively in its own stores. Van Howe Test. at 24.
`
`
`
`The packaging of record for the WAL-VERT product
`
`includes four references to applicant, including a prominent
`
`display of the WALGREEN house mark, and a statement that the
`
`product is distributed by Walgreen Co. The packaging also
`
`includes the following statement: “Compare to ALAVERT
`
`active ingredient.” Van Howe Test. at 25-27 and related
`
`Exh. 2. The packaging for applicant’s other private-label
`
`versions of products often include elements, such as colors,
`
`from the corresponding leading-brand products. Likewise,
`
`the packaging for the WAL-VERT product uses colors similar
`
`to those on the ALAVERT product. Van Howe Test. at 53 and
`
`related Exhs. 1 and 2; Van Howe Disc. at 38.
`
`
`
`Applicant places its WAL-VERT product side-by-side with
`
`opposer’s ALAVERT product on its shelves, and applicant
`
`often includes a shelf display inviting shoppers to compare
`
`the products. Rinka Disc. at 54. This is a practice
`
`applicant follows generally in promoting its private-label
`
`products, including the WAL-VERT product. Van Howe Test. at
`
`41, 45.
`
`9
`
`

`
`Opposition No. 91165912
`
`
`
`Applicant is not aware of any confusion between the
`
`ALAVERT and WAL-VERT marks. Van Howe Test. at 49. However,
`
`applicant has not conducted any research to determine
`
`whether there has been confusion. Id. at 55.
`
`
`
`Applicant has registered and used several marks which
`
`employ the prefix “WAL” followed by a hyphen and a portion
`
`of the mark for a leading brand in the pharmaceutical field.
`
`Applicant uses these marks on its private-label versions of
`
`the products identified by the leading brands and promotes
`
`them as a less expensive alternatives to the leading brands.
`
`Van Howe Test. at 13-14. For example, in the allergy
`
`category applicant has used and registered the following
`
`marks: WAL-ITIN corresponding to CLARITIN for allergy
`
`medications; WAL-DRYL corresponding to BENADRYL for allergy
`
`and cold medicines; and WAL-PHED corresponding to SUDAPHED
`
`for allergy and cold medications. Applicant follows a
`
`similar practice in other pharmaceutical categories and for
`
`a wide range of other types of goods. Van Howe Test. at 13;
`
`Applicant’s First Notice of Reliance Exhs. 1a-1k. Applicant
`
`sometimes also combines the “WAL” prefix with portions of
`
`generic terms, for example, WAL-PROFEN corresponding to
`
`10
`
`

`
`Opposition No. 91165912
`
` ibuprofen for pain and fever medications.3 In addition,
`
`applicant uses marks which do not employ the “WAL” prefix to
`
`identify other private-label products from applicant.
`
`Opposer’s Second Notice of Reliance Exhs. 83-119.
`
`
`
`Regarding applicant’s selection of the WAL-VERT mark,
`
`Mr. Van Howe, an official of applicant, stated the following
`
`in cross-examination during his testimonial deposition:
`
`… I take it that ‘VERT’ was selected to
`Q.
`connote the ALAVERT product.
`A. Correct.
`
`Van Howe Test. at 55.
`
`
`
`Mr. Van Howe also confirms in his discovery deposition
`
`that the “VERT” portion of the WAL-VERT mark is derived from
`
`the ALAVERT mark. Van Howe Disc. at 50. Mr. Rinka, another
`
`applicant official, also states that the choice of the WAL-
`
`VERT mark was to suggest that the product had the same
`
`ingredient as ALAVERT. Rinka Disc. at 31. Mr. Rinka also
`
`indicates that he is not aware of any other use of a mark
`
`which includes “VERT” for relevant products.
`
`
`
`We conclude that applicant selected the “VERT” element
`
`of the WAL-VERT mark because potential purchasers were
`
`
`3 Merriam-Webster’s Collegiate Dictionary (11th ed. 2003) includes
`a definition for “ibuprofen” as a “nonsteroidal anti-inflammatory
`drug.” The Board may take judicial notice of dictionary
`definitions. See University of Notre Dame du Lac v. J. C.
`Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd,
`703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
`
`
`11
`
`

`
`Opposition No. 91165912
`
`familiar with opposer’s ALAVERT mark and product due to the
`
`success of the ALAVERT product.
`
`Likelihood of Confusion
`
`The opinion in In re E. I. du Pont de Nemours & Co.,
`
`476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
`
`factors to consider in determining likelihood of confusion.
`
`See also In re Majestic Distilling Company, Inc., 315 F.3d
`
`1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Below, we will
`
`consider each of the factors as to which the parties have
`
`presented arguments or evidence. Specialty Brands, Inc. v.
`
`Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
`
`1282 (Fed. Cir. 1984).
`
`The Goods and the Channels of Trade
`
`The goods of the parties need not be identical to find
`
`a likelihood of confusion under Section 2(d) of the
`
`Trademark Act. They need only be related in such a way that
`
`the circumstances surrounding their marketing would result
`
`in relevant consumers mistakenly believing that the goods
`
`originate from the same source. On-Line Careline Inc. v.
`
`America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
`
`Cir. 2000); In re International Telephone & Telegraph Corp.,
`
`197 USPQ 910, 911 (TTAB 1978).
`
`Furthermore, in comparing the goods we must consider
`
`the goods as identified in the application and
`
`registrations. See Octocom Systems, Inc. v. Houston
`
`12
`
`

`
`Opposition No. 91165912
`
`Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
`
`(Fed. Cir. 1990) (“The authority is legion that the question
`
`of registrability of an applicant’s mark must be decided on
`
`the basis of the identification of goods set forth in the
`
`application regardless of what the record may reveal as to
`
`the particular nature of an applicant’s goods, the
`
`particular channels of trade or the class of purchasers to
`
`which the sales of goods are directed.”) See also Paula
`
`Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
`
`USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
`
`issue of likelihood of confusion must be decided on the
`
`basis of the respective descriptions of goods.”). Based on
`
`the identifications, we conclude that the goods of the
`
`parties are identical. In fact, the record establishes that
`
`applicant’s WAL-VERT product and opposer’s ALAVERT product,
`
`as sold, are the same. Van Howe Test. at 17.
`
`Furthermore, we also conclude, by simple logic, based
`
`on the identifications of goods, that the channels of trade
`
`for the parties’ goods and the potential purchasers for the
`
`parties’ goods are also the same. Here too, the record, in
`
`fact, shows that opposer’s ALAVERT product is sold in
`
`applicant’s stores on the same shelves as applicant’s WAL-
`
`VERT product inviting the same potential purchasers to
`
`compare the respective products.
`
`13
`
`

`
`Opposition No. 91165912
`
`The heading for the section of applicant’s brief
`
`addressing these factors states: “Similarities in Product,
`
`Consumers, and Channels of Trade Are Insignificant and
`
`Outweighed by Other Factors When Comparing Private Label
`
`Goods to their National Brand Brethren.” Applicant’s Brief
`
`at 17. In so arguing, applicant explicitly discounts the
`
`importance of the fact that the goods of the parties, the
`
`consumers and the channels of trade are identical.
`
`In the process, applicant also disregards the
`
`controlling law. Instead, as opposer points out, applicant
`
`relies on a series of infringement cases from the federal
`
`courts, most notably Conopco Inc. v. May Department Stores
`
`Co., 46 F.3d 1556, 32 USPQ2d 1225 (Fed. Cir. 1994), cert.
`
`denied, 514 U.S. 1078 (1995). Nearly all of the cases
`
`address issues of trade-dress infringement. Applicant’s
`
`reliance on these cases is misplaced in arguing a case which
`
`addresses registration only.
`
`If applicant succeeds in securing registration for the
`
`mark and goods identified in its application, the
`
`certificate of registration, among other things, will be
`
`“prima facie evidence of … the registrant’s exclusive right
`
`to use the registered mark in commerce on or in connection
`
`with the goods or services specified in the certificate,
`
`subject to any conditions or limitations stated in the
`
`14
`
`

`
`Opposition No. 91165912
`
`certificate.” Trademark Act Section 7(b), 15 U.S.C. §
`
`1057(b).
`
`Throughout applicant argues that there would not be
`
`confusion because applicant only sells products bearing the
`
`WAL-VERT mark in its own stores, because applicant uses its
`
`WALGREEN house mark and company name repeatedly on the
`
`packaging for the WAL-VERT product, and because applicant
`
`promotes the WAL-VERT product in a comparison with opposer’s
`
`ALAVERT product. However, none of these conditions are
`
`reflected in the application. Nor would the registration
`
`which might result from this application reflect any of
`
`these conditions. While these conditions might be relevant
`
`to any infringement action, we may not consider and have not
`
`considered them in our determination of applicant’s right to
`
`register the WAL-VERT mark in this proceeding.
`
`Accordingly, we conclude that the factors related to
`
`the goods and channels of trade favor opposer substantially
`
`in this case.
`
`Strength of the Registered Mark
`
`
`
`Applicant also argues that opposer’s ALAVERT mark is
`
`weak and even that it “… has a significant descriptive
`
`undercurrent” or that it is “fairly descriptive” or that it
`
`“carries a significant descriptive connotation.”
`
`Applicant’s Brief at 5, 10 and 14. Applicant also argues
`
`that ALAVERT creates the impression that the product “acts
`
`15
`
`

`
`Opposition No. 91165912
`
`to avert allergies” and that “the ALAVERT mark is not well
`
`known among consumers due to its low unaided awareness
`
`scores.” Applicant’s Brief at 9.4
`
`
`
`On the other hand, opposer argues that the ALAVERT mark
`
`is both conceptually and commercially strong and that
`
`applicant’s suggestions that it is somehow descriptive are
`
`off base.
`
`
`
`First, we dismiss out of hand applicant’s suggestions
`
`that the ALAVERT mark is descriptive. We concur with
`
`opposer in concluding that these arguments are out of bounds
`
`in the absence of a counterclaim attacking the validity of
`
`the ALAVERT registration. In the absence of such a
`
`counterclaim, we must and do accord the ALAVERT registration
`
`all applicable respect, including as prima facie evidence
`
`that the registered mark is valid under Trademark Act
`
`Section 7(b), and moreover, that the mark is inherently
`
`distinctive. See Tea Board of India v. Republic of Tea
`
`Inc., 80 USPQ2d 1881 (TTAB 2006).
`
`
`
`We concede, as applicant argues, that ALAVERT combines
`
`“pieces of the words ALLERGY and AVERT.” Applicant’s Brief
`
`at 14. However, we conclude that ALAVERT is a coined term
`
`
`4 Much of the evidence which forms the basis for applicant’s
`claim that the ALAVERT mark is weak is confidential, market
`research opposer itself performed both prior to launch of the
`ALAVERT product and since launch and the research Ms. Deradorian
`conducted prior to the product launch. Therefore, we will not be
`able to discuss that evidence in detail in this opinion.
`
`
`16
`
`

`
`Opposition No. 91165912
`
`which is at most suggestive, but not conceptually weak. We
`
`have no evidence that there is any other mark made up of the
`
`“AL” and “VERT” or “AVERT” elements, nor any evidence that
`
`“VERT” or “AVERT” is an element of any other mark in the
`
`relevant field. We also observe that the suggestive
`
`possibilities embodied in ALAVERT may be more varied than
`
`applicant suggests. The mark may also suggest that the
`
`ALAVERT product will keep the user alert, based on its non-
`
`sedating feature. Accordingly, we conclude that ALAVERT is
`
`a strong mark conceptually.
`
`
`
`With regard to its commercial strength, that is, the
`
`strength ALAVERT may have acquired on the basis of opposer’s
`
`use and promotion, we likewise conclude that ALAVERT is a
`
`commercially strong mark.
`
`
`
`
`
`Regarding the market research, on balance we find this
`
`evidence supportive of the conclusion that ALAVERT is at
`
`most suggestive and commercially strong. There is nothing
`
`in the Schering-Plough study which contradicts this
`
`conclusion. Quite understandably, applicant views opposer’s
`
`market research through a more critical lens. We find
`
`opposer’s criticisms of the Schering-Plough survey generally
`
`well taken. It is limited in its probative value because it
`
`was conducted before the launch of the ALAVERT product.
`
`Furthermore, the questions appear to be somewhat leading or
`
`biased. This is understandable since it was not conducted
`
`17
`
`

`
`Opposition No. 91165912
`
`to determine the strength or weakness of the ALAVERT mark,
`
`the purpose for which applicant now attempts to use it.
`
`
`
`Also, as to opposer’s own market research conducted
`
`over the course of opposer’s promotion and sale of the
`
`ALAVERT product, applicant fails to consider the full
`
`results. The full results, viewed objectively, show both
`
`that the ALAVERT product has been successful and that the
`
`ALAVERT mark has achieved substantial recognition. The
`
`results support the conclusion that ALAVERT is a
`
`commercially strong mark.
`
`
`
`In addition, the ALAVERT sales and related advertising
`
`and promotional efforts are impressive. They lend further
`
`support to the conclusion that ALAVERT is a strong mark.
`
`Applicant’s own actions in adopting the WAL-VERT mark, in
`
`particular, the decision to use “VERT” as a significant
`
`element of the mark to associate its private-label product
`
`with the ALAVERT product lends further support to the
`
`conclusion that ALAVERT is a strong mark.
`
`
`
`Accordingly, we conclude that this factor favors
`
`opposer.
`
`Purchaser Sophistication
`
`
`
`Applicant also argues, under du Pont, that the goods at
`
`issue here are not “impulse” purchases, but subject to
`
`“careful, sophisticated purchasing.” In re E. I. du Pont de
`
`Nemours & Co., 177 USPQ at 567. Applicant emphasizes that
`
`18
`
`

`
`Opposition No. 91165912
`
`the packages and other related materials related to the
`
`goods at issue here carry a good deal of information, that
`
`there are many over-the-counter allergy products from which
`
`to choose, and that potential purchasers must consider that
`
`information, including potential side effects, carefully to
`
`ensure that the product they select will address their
`
`specific symptoms and needs. Applicant argues that these
`
`circumstances establish that “a higher degree of care and
`
`consideration must go into the purchasing decision.”
`
`Applicant’s Brief at 27. Applicant, thus, argues that there
`
`is a diminished likelihood of confusion as a result.
`
`Opposer disagrees, noting, among other things, that the
`
`products in question are relatively inexpensive.
`
`
`
`The goods in question, over-the-counter allergy
`
`medications, are not in the category of impulse purchases.
`
`Nor are they particularly expensive. We conclude that a
`
`purchaser exercises a certain degree of care in purchasing
`
`any medication, even one which is relatively inexpensive.
`
`On the other hand, the products are not so expensive that
`
`the purchaser would engage in a protracted analysis
`
`attendant to purchases of expensive goods which are
`
`purchased infrequently. Furthermore, the potential
`
`purchasers of these products include a large segment of the
`
`general public, including some less sophisticated
`
`individuals.
`
`19
`
`

`
`Opposition No. 91165912
`
`
`
`While many purchasers may examine the information on
`
`the packaging to ensure that the product is suitable for
`
`their needs, this does not mean that purchasers would be
`
`less likely to confuse trademarks which are otherwise
`
`confusing. And, of course, even sophisticated purchasers
`
`are not immune to trademark confusion. In re Pellerin
`
`Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). Therefore, we
`
`conclude that the conditions of purchase in this case would
`
`not diminish the likelihood of confusion.
`
`
`
`Accordingly, we find that this factor is neutral in
`
`this case.
`
`Actual Confusion
`
`Applicant also argues that the absence of evidence of
`
`actual confusion indicates that there is no likelihood of
`
`confusion here noting, among other things, the substantial
`
`sales of both products and the side-by-side displays in its
`
`stores. Again, opposer disagrees noting that the absence of
`
`actual confusion, by itself, does not mean that there is no
`
`likelihood of confusion and that the circumstances present
`
`here explain the lack of such evidence.
`
`We agree with opposer. First, we note that the absence
`
`of actual confusion does not necessarily lead to the
`
`conclusion that there is no likelihood of confusion. In
`
`this case, it is unclear whether there has been a true
`
`opportunity for confusion. Applicant has sold its WAL-VERT
`
`20
`
`

`
`Opposition No. 91165912
`
`product under highly restricted conditions. As we noted,
`
`applicant sells its products, which are identical to those
`
`of opposer, only in its own stores and only in the packaging
`
`which repeatedly references applicant. Furthermore, the
`
`respective products are sold side-by-side based on a
`
`comparison. Again, none of these restrictions are stated in
`
`the application. The side-by-side comparison which is the
`
`rule here, would be an exception in the marketplace
`
`generally. We must evaluate the likelihood of confusion in
`
`this case apart from these restrictive conditions.
`
`Consequently, the absence of actual confusion with regard to
`
`sales under these conditions is of little probative value in
`
`assessing the likelihood of confusion apart from these
`
`conditions.
`
`Accordingly, we conclude that this factor is neutral in
`
`this case.
`
`The Marks
`
`In comparing the marks we must consider the appearance,
`
`sound, connotation and commercial impression of the marks at
`
`issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
`
`Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
`
`(Fed. Cir. 2005).
`
`Furthermore, we note that, “the degree of similarity
`
`[between the marks] necessary to support the conclusion of
`
`likely confusion declines” when the goods are identical.
`
`21
`
`

`
`Opposition No. 91165912
`
`Century 21 Real Estate Corp. v. Century Life of America, 970
`
`F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
`
`denied, 506 U.S. 1034 (1992). The goods in this case are
`
`identical.
`
`Opposer argues that ALAVERT and WAL-VERT are similar
`
`stating:
`
`Here, the visual and aural similarities
`between ALAVERT® and WAL-VERT are glaring because
`both words are arbitrary terms, with prefixes that
`differ by only one letter (plus a hyphen) and
`identical suffixes. In addition, because both
`words are meaningless, there are no preexisting
`connotations that would enable consumers to
`distinguish between them.
`
`Opposer’s Brief at 12.
`
`
`
`Applicant argues,
`
`First, Applicant’s mark begins with a distinctly
`different prefix, namely WAL-. Use of the WAL-
`prefix and the hyphen following same breaks the
`mark into two pieces. The hyphen adds a visually
`distinctive element to Applicant’s mark.
`
`Applicant’s Brief at 22.
`
`
`
`Applicant adds that the differences in spelling and
`
`presentation result in significant differences in appearance
`
`and sound, as well as commercial impression. Applicant also
`
`argues that the “WAL” prefix, which it has used for decades
`
`in numerous marks, is uniquely identified with applicant,
`
`the Walgreen Company. Furthermore, applicant argues that
`
`its mark does not suggest that the user of its product will
`
`avert allergies as ALAVERT suggests.
`
`22
`
`

`
`Opposition No. 91165912
`
`
`
`First, we reject applicant’s arguments to the effect
`
`that its WAL-VERT mark is distinguishable because of
`
`applicant’s prior use of other comparable marks on its
`
`private label products, such as, WAL-DRYL and WAL-ITIN. As
`
`opposer correctly points out, we must limit our
`
`consideration to the marks at issue here. Applicant
`
`effectively asks us to recognize its “family of marks” as a
`
`defense in this case; we decline to do so. Blansett
`
`Pharmacal Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d
`
`1473, 1477 (TTAB 1992) (NALEX for nasal decongestants held
`
`similar to NOLEX for nasal decongestants).
`
`
`
`Furthermore, in its arguments applicant assumes that
`
`potential purchasers of the WAL-VERT product will understand
`
`the “WAL” prefix to identify a Walgreen private label
`
`product and that potential purchasers will understand
`
`further that applicant alone is the source of the product.
`
`This is not necessarily true. In questioning Mr. Marschall
`
`during his discovery deposition applicant’s counsel states,
`
`“Not to be too cute, but my understanding is that sometimes
`
`the store labels are private labels, and are actually made
`
`by national brands, but they’re just labeled differently.”
`
`Marschall Disc. at 119. Thus, we cannot assume, as
`
`applicant urges, that potential purchasers all fully
`
`understand the arrangement which applies in this case, that
`
`is, that Walgreen produces the WAL-VERT product independent
`
`23
`
`

`
`Opposition No. 91165912
`
`of others, including opposer. We must allow for the
`
`likelihood that potential purchasers will assume that the
`
`WAL-VERT

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket