Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA293411
`ESTTA Tracking number:
`07/02/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91169571
`Plaintiff
`G&W Laboratories, Inc.
`Gregg A. Paradise
`Lerner, David, Littenberg, Krumholz & Mentlik, LLP
`600 South Avenue West
`Westfield, NJ 07090
`UNITED STATES
`gparadise@ldlkm.com, litigation@ldlkm.com
`Brief on Merits for Plaintiff
`Gregg A. Paradise
`gparadise@ldlkm.com, litigation@ldlkm.com
`/Gregg A. Paradise/
`07/02/2009
`1032881_1.pdf ( 19 pages )(56270 bytes )
`
`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TRADEMARK
`G&W 10.2O-027
`
`
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`
`
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`
`
`
`Opposition No. 91169571
`
`For: GW PHARMACEUTICALS
`
`Published: February 7, 2006
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`Serial No. 78354188
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`G&W LABORATORIES, INC.,
`
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`Opposer,
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`
`
`
`
`v.
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`GW PHARMA LTD.,
`
`
`
`
`
`
`Applicant.
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`
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`
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`OPPOSER'S TRIAL BRIEF
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`1032881_1.DOC
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`

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`
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`TABLE OF CONTENTS
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`Page
`
`TABLE OF AUTHORITIES ........................................................................................................... i
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`I.
`
`INTRODUCTION ...............................................................................................................1
`
`
`
`II.
`
`DESCRIPTION OF THE EVIDENCE OF RECORD ........................................................1
`
`III.
`
`IV.
`
`A.
`
`B.
`
`Opposer's Evidence..................................................................................................2
`
`Applicant's Evidence................................................................................................3
`
`STATEMENT OF THE ISSUE...........................................................................................3
`
`RECITATION OF RELEVANT FACTS............................................................................3
`
`A.
`
`B.
`
`G&W Has Long Prior and Extensive Use Of The Mark
`"G&W" And The Design Mark For Its Pharmaceutical Products ...........................3
`
`G&W's Registered Marks G&W and the G&W
`Design Are Registered On The Principal Register ..................................................4
`
`C.
`
`Applicant Has Made No Use Of The GW PHARMACEUTICALS Mark .............5
`
`V.
`
`STATEMENT OF THE LAW AND ARGUMENT ...........................................................5
`
`A.
`
`B.
`
`The G&W Mark And Design Has Priority ..............................................................5
`
`The duPont Factors For Which There Are
`Evidence All Weigh in Favor of Finding Confusion Likely....................................6
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`The Mark G&W Is Essentially Identical To GW
`PHARMACEUTICALS ..............................................................................7
`
`The Goods Identified In The Opposed Application
`And The Goods Of G&W's Registrations Are
`Closely Related ............................................................................................8
`
`The Goods Of The Application And G&W's
`Registrations Are Such As Are Distributed Through
`Overlapping Trade Channels And To Overlapping
`Classes Of Customers ................................................................................11
`
`The G&W Mark And G&W Design Are Strong .......................................12
`
`Absence Of Evidence Of Actual Confusion Is Immaterial........................13
`
`The Remaining Factors Either Favor G&W Or Do Not Apply .................14
`
`VI.
`
`SUMMARY.......................................................................................................................15
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`1032881_1.DOC
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`i
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`

`
`INDEX OF CASES
`
`
`
`
`
`Page(s)
`
`Cases
`Am. Sugar Refining Co. v. Andreassen,
`296 F.2d 783 (C.C.P.A. 1961) ..........................................................................................12
`
`Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank,
`811 F.2d 1490 (Fed. Cir. 1987) ....................................................................................7, 11
`
`Clinton Detergent Co. v. Procter & Gamble Co.,
`302 F.2d 745 (C.C.P.A 1962) .....................................................................................10, 11
`
`In re Denisi,
`225 U.S.P.Q. 624 (T.T.A.B. 1985) .....................................................................................7
`
`In re E.I. du Pont de Nemours & Co.,
`476 F.2d 1357 (C.C.P.A. 1973.) .....................................................................................6, 8
`
`Federated Foods, Inc. v. Ft. Howard Paper Co.,
`544 F.2d 1098 (C.C.P.A. 1976.) .........................................................................................7
`
`In re Kent-Gamebore Corp.,
`59 U.S.P.Q. 2d 1373 (T.T.A.B. 2001) ..............................................................................13
`
`King Candy Co. v. Eunice King's Kitchen, Inc.,
`496 F.2d 1400 (C.C.P.A. 1974.) .........................................................................................5
`
`Monarch Mktg. Sys. Inc., Elan Sys. Inc.,
`39 U.S.P.Q. 2d 1032 (T.T.A.B. 1996) ..............................................................................12
`
`Octocom Sys., Inc. v. Houston Computer Servs., Inc.,
`918 F.2d 937 (Fed. Cir. 1990) ............................................................................................9
`
`Omega SA v. Compucorp,
`229 U.S.P.Q. 191 (T.T.A.B. 1985.) ....................................................................................6
`
`On-Line Careline Inc. v. Am. Online Inc.,
`229 F.3d 1080 (Fed. Cir. 2000) ..........................................................................................9
`
`Palm Bay Imps., Inc. v. Veuve Clicquot
`Ponsardin Maison Fondee en 1772,
`396 F.3d 1369 (Fed. Cir. 2005) ................................................................................6, 7, 13
`
`Safety-Kleen Corp. v. Dresser Indus., Inc.,
`518 F.2d 1399 (C.C.P.A. 1975) ..........................................................................................8
`
`In re Shell Oil Co.,
`992 F.2d 1204 (Fed. Cir. 1993.) .........................................................................................7
`
`Weiss Assocs., Inc. v. HRL Assocs., Inc.,
`902 F.2d 1546 (Fed. Cir. 1990) ....................................................................................7, 13
`
`1032881_1.DOC
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`ii
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`
`
`I.
`
`
`INTRODUCTION
`
`G&W Laboratories, Inc. ("G&W" or "Opposer") having trademark registrations for its
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`G&W Mark and Design, opposes the registration of GW PHARMACEUTICALS to GW Pharma
`
`Ltd. ("Pharma" or "Applicant") on the basis of priority and likelihood of confusion. The
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`evidence of record in this action establishes that G&W has used its word Mark since 1919, and
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`its Design Mark since 1981. G&W filed to register its Marks on the Principal Register on
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`October 3, 2000, which were both ultimately granted in June and August 2002, respectively. In
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`contrast, Applicant Pharma has not shown any use of its GW PHARMACEUTICALS Mark.
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`The applicable du Pont factors weigh strongly in favor of finding a likelihood of
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`confusion between G&W's Marks and Applicant's proposed Mark. When the Marks are
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`compared, the dominant portions of the Marks look and sound the same. Applicant's mere
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`addition of an ampersand character does not sufficiently distinguish the Marks to avoid
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`confusion. In addition, the goods identified under both Marks are very closely related
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`considering they both include pharmaceutical preparations. Lastly, Opposer's Mark and Design
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`are very strong, given the commercial success and association in the industry over 90 years of
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`use. Thus, because G&W has priority confusion will likely result and Applicant's Mark for GW
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`PHARMACEUTICALS should be refused registration.
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`II.
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`DESCRIPTION OF THE EVIDENCE OF RECORD
`
`G&W timely filed its Notice of Opposition on March 7, 2006, on the grounds of priority
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`and likelihood of confusion.
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`Pharma timely filed its Answer on May 15, 2006. However, on June 14, 2007, Pharma
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`moved for leave to amend its answer to include a counterclaim to cancel Opposer's Registrations
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`(U.S. Trademark Registration Nos. 2,577,687 and 2,606,786) in their entireties on the ground of
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`1032881_1.DOC
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`

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`
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`fraud, alleging that G&W had not rendered the Class 35 services in the registrations on behalf of
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`others and had not used the Marks in commerce for those services. G&W subsequently filed its
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`answer to Pharma's counterclaim on October 26, 2007.
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`On May 22, 2008, G&W filed a motion to dismiss Pharma's counterclaim as moot
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`because Class 35, the matter sought to be canceled from G&W's Registrations by Pharma, had
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`already been deleted from the Registrations upon the filing of G&W's Section 8 Affidavits.
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`G&W also sought dismissal of the counterclaim against Class 5 for failure to state a claim. After
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`fully briefing the issues, the TTAB issued a precedential opinion on January 29, 2009, by
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`entering judgment on the counterclaims as to the services in Class 35 in Registration
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`Nos. 2,577,687 and 2,606,786 and dismissing the counterclaims as to Class 5 in Registration
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`Nos. 2,577,687 and 2,606,786.
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`Thus, all that remains of this action is G&W's opposition of Pharma's Mark, GW
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`PHARMACEUTICALS.
`
`A.
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`Opposer's Evidence
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`Prior to filing its answer to the amended complaint, on September 10, 2007, G&W filed a
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`Notice of Reliance with certified copies of the Certificates of Registration, with title and status,
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`for its U.S. Trademark Registration Nos. 2,577,687 and 2,606,786.
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`On September 11, 2007, G&W filed a second Notice of Reliance, which included
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`Applicant's Responses to G&W's Interrogatories, Document Demands and Applicant's
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`Supplemental Responses to G&W's Interrogatories.
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`Pursuant to notice, the trial deposition of Stephen C. Greene, Vice President and General
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`Counsel at G&W, was taken on July 27, 2007. The transcript was corrected and executed by
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`Mr. Greene on August 13, 2007. A copy of the transcript of the deposition with Exhibits 1-34
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`(except Exhibit 3 and without portions of pages 25 and 93, which were designated as TRADE
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`1032881_1.DOC
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`2
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`
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`SECRET/COMMERCIALLY SENSITIVE, as well as the interrogatory responses on page 6 of
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`Exhibit 34) were timely filed with the TTAB on September 11, 2007.
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`B.
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`Applicant's Evidence
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`During the testimony period, Pharma filed no Notices of Reliance and took no discovery.
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`III.
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`STATEMENT OF THE ISSUE
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`The issue is whether there is a likelihood of confusion as to source or sponsorship
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`between the two Marks at issue, Opposer's G&W (words and design) and Applicant's GW
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`PHARMACEUTICALS. GW PHARMACEUTICALS is for "Pharmaceutical and veterinary
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`preparations . . . ," while G&W is for "pharmaceutical preparations . . . ," both in Class 5.
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`IV. RECITATION OF RELEVANT FACTS
`
`A.
`
`G&W Has Long Prior and Extensive Use Of The Mark
`"G&W" And The Design Mark For Its Pharmaceutical Products
`
`G&W was founded in 1919 by Carl Greenblatt and another gentleman by the name of
`
`Mr. Weiss and is still in business today. (Greene Dep. 9.) Since inception, G&W has been a
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`substantial and successful manufacturer, distributor, and seller of pharmaceuticals, including
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`tabular and topical products. (Id. at 17.)
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`G&W has used its G&W Mark and G&W Design ("G&W's Marks") since 1919 in
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`marketing its topical products and pharmaceuticals. G&W sells products under its Mark and
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`Design throughout the United States, Canada, Russia, the Ukraine, Puerto Rico, Jamaica, and
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`other U.S. territories. (Id. at 19, 21.) Some of the products marketed under G&W's Marks
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`include suppositories, tablets, topicals (creams), ointments, lotions, gels, liquids, pads in liquids,
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`and nasal sprays. (Id. at 19.) Virtually all of G&W's products are sold under the G&W Marks.
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`(Id. at 32-37.)
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`1032881_1.DOC
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`3
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`B.
`
`G&W's Registered Marks G&W and the G&W
`Design Are Registered On The Principal Register
`
`G&W first used the G&W word Mark as early as 1919 when the company was formed.
`
`(Id. at 17.) When G&W was formed, it began selling topical products and pharmaceuticals under
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`the G&W Mark. (Id.) In 1981, G&W began using its Design Mark in interstate commerce and
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`continues to do so today. (Id. at 18.) However, since its first use in 1919, G&W expanded its
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`product line so that by October 2000, G&W's use of the G&W Marks included suppositories;
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`tablets; namely, laxative tablets and anti-diarrheal tablets; pharmaceutical preparations in topical
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`semi-liquid dosage
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`forms; namely,
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`topical dermatological creams and ointments;
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`liquid-containing pads for treating hemorrhoid-related conditions and for cleansing the rectal and
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`vaginal areas. (Notice of Reliance G&W Reg. Nos. 2,577,687, 2,606,786, Sept. 10, 2007.)
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`G&W continues to make and distribute these goods throughout the world. (Greene Dep. 21.)
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`G&W has taken steps to protect its G&W Mark and Design by securing the following
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`U.S. trademark registrations:
`
`Reg. No. Mark
`
`Issued
`
`Goods
`
`2,577,687
`
`G&W
`
`2,606,786
`
`G&W
`Design
`
`(Notice of Reliance.)
`
`June 11, 2003
`
`Suppositories; tablets, namely, laxative tablets and
`anti-diarrheal tablets; pharmaceutical preparations in
`topical semi-liquid dosage forms, namely, topical
`dermatological creams and ointments;
`liquid-containing pads for treating
`hemorrhoid-related conditions and for cleansing the
`rectal and vaginal areas.
`August 13, 2002 Suppositories; tablets, namely, laxative tablets and
`anti-diarrheal tablets; pharmaceutical preparations in
`topical semi-liquid dosage forms, namely, topical
`dermatological creams and ointments;
`liquid-containing pads for treating
`hemorrhoid-related conditions and for cleansing the
`rectal and vaginal areas.
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`1032881_1.DOC
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`C.
`
`Applicant Has Made No Use Of The GW PHARMACEUTICALS Mark
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`Applicant filed Application Serial No. 78/354188 on January 20, 2004, on the basis of an
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`intent to use the Mark GW PHARMACEUTICALS for "pharmaceutical and veterinary
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`preparations, namely, herbs, herbal extracts, formulas containing herbal extracts, medicinal oils
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`and pure extracts of medicinal plants and herbs, for use in the treatment of multiple sclerosis,
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`neuropathic pain, spinal cord injury, bladder dysfunction, peripheral neuropathy, cancer pain,
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`peri-operative pain, rheumatoid arthritis, inflammatory bowel disease, neurogenic symptoms,
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`psychotic disorders, diseases of the central nervous system, stroke and head injury, motion
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`sickness and chemically induced sickness; herbs for medicinal purposes; herb teas for medicinal
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`purposes; plants and plaint materials in dried or preserved form for medicinal purposes." (Notice
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`of Reliance Interrogs. 26, 27, Sept. 11, 2007.) Applicant has not filed any evidence showing use
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`of the Mark at any time. In addition, Applicant did not produce any evidence during the testing
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`period to show use. Instead, Applicant demonstrated through Interrogatory answers that its Mark
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`has not been used. (Interrog. Resp. 6.)
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`V.
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`STATEMENT OF THE LAW AND ARGUMENT
`
`Applicant should not be permitted to register GW PHARMACEUTICALS because a
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`likelihood of confusion exists, and because of G&W's clear priority. The applicable du Pont
`
`factors weigh strongly in favor of finding a likelihood of confusion.
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`A.
`
`The G&W Mark And Design Has Priority
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`There is no issue of priority, as the G&W Marks are the subject of subsisting Principal
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`Register registrations. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 1401
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`(C.C.P.A. 1974.) At the very least, and in the absence of any evidence of earlier use, Applicant
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`is nevertheless entitled to rest on the presumption that its word Mark and Design Mark were in
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`1032881_1.DOC
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`
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`use as of the filing date of its application for registration. Omega SA v. Compucorp, 229
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`U.S.P.Q. 191, 193 (T.T.A.B. 1985.)
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`Opposer has established that its word Mark G&W was in use since 1919 when the
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`company began using G&W in connection with topical products and pharmaceuticals. G&W has
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`been used in continuous and exclusive use since that time. (Greene Dep. 17.) The G&W word
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`Mark is clearly seen on G&W's catalogs throughout the company's existence, such as, for
`
`example, the 1970 catalog and price list. (Id. at 33-34, Exh. 5.) With regard to the G&W Design
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`Mark, Opposer established that it has been in continuous and exclusive use since 1981. (Greene
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`Dep. 18-19.) Thus, Opposer has used its G&W Marks since 1919 and 1981, respectively.
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`G&W's Registrations for its Mark and Design were both filed on October 3, 2000. At the
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`very least, G&W is entitled to that date of use. Even though Applicant has attempted registration
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`of its Mark based on an intent to use, it has not shown use of its Mark, and has not demonstrated
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`any evidence on the record to the contrary. In fact, Applicant admits that its Mark is not
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`currently being used. (Notice of Reliance Interrog. 1 Sept. 11, 2007.) Thus, the earliest date
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`Applicant can claim is its application filing date of January 20, 2004. As this date is well after
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`G&W's filing date and decades after its established first use date. There is no dispute regarding
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`G&W's priority, as Applicant does not show any evidence of priority.
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`B.
`
`The du Pont Factors For Which There Are
`Evidence All Weigh in Favor of Finding Confusion Likely
`
`The relevant standard for determining likelihood of confusion was established in In re
`
`E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973.) The points of comparison for a
`
`word Mark are appearance, sound, meaning, and commercial impression. Palm Bay Imps.,
`
`Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir. 2005)
`
`(citing E.I. du Pont de Nemours, 476 F.2d. at 1361.) In any likelihood of confusion analysis, two
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`1032881_1.DOC
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`key considerations are the similarities between the Marks and the similarities between the goods.
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`Federated Foods, Inc. v. Ft. Howard Paper Co., 544 F.2d 1098 (C.C.P.A. 1976.) If there is any
`
`doubt as to whether there is a likelihood of confusion, that doubt must be resolved in favor of the
`
`prior registrant. In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir. 1993.)
`
`The most significant of the du Pont factors here are the similarities between the Marks
`
`and the goods. But all of the other factors for which there is evidence weigh in favor of finding
`
`confusion likely: the strength of G&W's Mark, the overlap in customers, the type of purchasers
`
`and trade channels.
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`1. The Mark G&W Is Essentially Identical To GW PHARMACEUTICALS
`
`Marks may be confusingly similar in appearance despite the addition, deletion, or
`
`substitution of letters or words. Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546 (Fed.
`
`Cir. 1990) (holding TMM confusingly similar to TMS, both for system software); Canadian
`
`Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490 (Fed. Cir. 1987) (holding
`
`COMMCASH likely confused with COMMUNICASH both for banking services). The mere
`
`addition of matter that is descriptive or suggestive of the named goods or services does not avoid
`
`likelihood of confusion. In re Denisi, 225 U.S.P.Q. 624 (T.T.A.B. 1985) (holding PERRY'S
`
`PIZZA likely confused with PERRY'S both for restaurant services). Stated another way, if the
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`dominant portion of both Marks is the same, then confusion may be likely, notwithstanding the
`
`peripheral differences. Palm Bay, 396 F.3d at 1369.
`
`Applicant's Mark GW PHARMACEUTICALS is confusingly similar to Opposer's Mark
`
`G&W. For starters, the dominant portion of the Marks (G&W vs. GW) are very similar
`
`considering the only difference in the dominant portion of Applicant's Mark is the elimination of
`
`the ampersand between the letters "G" and "W." The removal of the "&" does not distinguish
`
`Applicant's Mark significantly from Opposer's registration to eliminate confusion. Even though
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`1032881_1.DOC
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`7
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`
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`Opposer's Mark includes the ampersand, the two dominant portions are pronounced, sound, and
`
`look very similar. Furthermore, Applicant's addition of the word PHARMACEUTICALS does
`
`not distinguish the dominant portion of its Mark to the point of significantly avoiding confusion.
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`The word PHARMACEUTICALS is nothing more than a descriptive term for the goods and
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`does not avoid confusion. In fact, the Examining Attorney has required Applicant to disclaim
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`the term PHARMACEUTICALS.
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`Furthermore, even though Opposer is known as G&W in the industry, its full name is
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`G&W Laboratories. In the pharmaceutical industry, the words "pharmaceuticals" and
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`"laboratories" are often used interchangeably. (Greene Dep. 64-65.) These terms are
`
`descriptions for the nature of the pharmaceutical business, and pharmaceutical firms are, by their
`
`nature, laboratories, because they are involved in research and development. (Id. at 65.) Thus,
`
`the word PHARMACEUTICALS adds nothing to the dominant portion of Pharma's application.
`
`Accordingly, when the Marks are considered in their entireties, it is clear that G&W's
`
`Mark for G&W is so similar to GW PHARMACEUTICALS in sound, appearance, and meaning
`
`that it is essentially identical and causes confusion.
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`2. The Goods Identified In The Opposed Application And
`The Goods Of G&W's Registrations Are Closely Related
`
`The goods or services do not have to be identical or even competitive in order to
`
`determine that there is a likelihood of confusion; they merely must be related. E.I du Pont, 476
`
`F.2d at 1357. The real issue is not whether the goods will be confused with each other, but rather
`
`whether the public will be confused about their source. Safety-Kleen Corp. v. Dresser Indus.,
`
`Inc., 518 F.2d 1399, 1404 (C.C.P.A. 1975). In order for confusion to result, the goods may be
`
`related such that the circumstances surrounding their marketing are such that they are likely
`
`encountered by the same persons under circumstances that may rise to the mistaken belief that
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`1032881_1.DOC
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`8
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`
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`they originated from the same source. On-Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080
`
`(Fed. Cir. 2000). The inquiry as to the related nature of the goods revolves around the
`
`identification in the application as published, since that defines the scope of the claim by the
`
`applicant to the exclusive right to use the Mark. Octocom Sys., Inc. v. Houston Computer Servs.,
`
`Inc., 918 F.2d 937, 942 (Fed. Cir. 1990).
`
`Pharma's application
`
`identifies
`
`its products as "pharmaceutical and veterinary
`
`preparations" with more specific goods and services described as including herbs, herbal
`
`extracts, formulas containing herbal extracts, medicinal oils and pure extracts of medical plants,
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`and herbs used for peri-operative pain, cancer pain, and herb teas for medicinal purposes. There
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`are no limitations as to channels of trade.
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`G&W's registrations identify its goods as suppositories; tablets; namely, laxative tablets
`
`and anti-diarrheal tablets; pharmaceutical preparations in topical semi-liquid dosage forms;
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`namely, topical dermatological creams and ointments; liquid-containing pads for treating
`
`hemorrhoid-related conditions and for cleansing the rectal and vaginal areas. (Greene Dep. 15,
`
`17, Exhs. 1, 2.) There are similarly no limitations as to trade channels. The goods that G&W
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`has sold since 1919 are pharmaceutical topical products. (Greene Dep. 17.) G&W also sells
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`suppositories such as promethazine and Acephen, which are used for pain management,
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`anti-inflammatory, antinausea and cancer treatment therapies, and various tablets and topical
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`preparations for dermatologic use. (Id. at 56-62; Exhs. 22-30.)
`
`It is evident that the goods under Pharma's application and those of G&W's registrations
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`are closely related pharmaceutical goods with overlapping uses. For example, Pharma's
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`medicinal oils and herbal extracts may be included in a pharmaceutical topical preparation for
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`dermatologic use. In addition, its herbs and herbal extracts might be used in suppositories used
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`1032881_1.DOC
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`9
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`for pain management and anticancer drugs. In fact, one of the uses specifically listed in Pharma's
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`application is cancer related pain. When two products are used for similar purposes, and the
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`goods of the parties clearly are of a nature that, if sold under the same or similar marks, the
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`purchaser would likely assume that they originate with a single producer, there is likely
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`confusion and the opposition should be sustained. Clinton Detergent Co. v. Procter & Gamble
`
`Co., 302 F.2d 745 (C.C.P.A 1962).
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`In Clinton Detergent, the C.C.P.A. agreed with Opposer that Applicant's product
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`CARJOY was a detergent for washing cars, and that Opposer's product JOY was a detergent for
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`washing dishes. The court found that the CARJOY and JOY products were directly competitive
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`because "CARJOY is primarily a detergent, and although not especially effective as a
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`dishwashing agent, can be used as such . . . ." Id. at 746. The C.C.P.A. found that "the two
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`products, while not primarily intended for the same use, may be used for identical purposes." Id.
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`Here, G&W's products can be formulated to include herbal extracts and formulas
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`containing herbal extracts in its pharmaceuticals including suppositories, tablets, and topical
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`preparations. In addition, G&W's products can and are used for treating cancer pain,
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`anti-inflammation and nausea, which are all uses of Pharma's products. The goods are closely
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`related because, as in Clinton Detergent, both G&W's and Pharma's products can be used for the
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`identical purposes.
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`Further, pharmaceutical products may, and are likely to, emanate from the same source.
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`Where such products are sold under the same or similar marks, the purchaser would likely and
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`reasonably assume that they originate with a single producer. Pharma is hoping to enter the
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`market with medicine used in the treatment of cancer pain, nausea, and other diseases and
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`conditions described in its identification of goods. (Notice of Reliance Resp. to Interrog. Nos. 7,
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`9, Sept. 11, 2009.) G&W's goods can and are used for treatment of those same conditions.
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`(Greene Dep. at 56-62.) The goods of G&W and those of Pharma "clearly are of such nature
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`that, if sold under the same or similar marks, the purchaser would likely assume that they
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`originate with a single producer." Clinton Detergent, 302 F.2d at 748-49. There is no reason to
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`assume that people using the goods of G&W or those of Pharma will understand that they come
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`from different sources. Thus, a likelihood of confusion is evident.
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`3. The Goods Of The Application And G&W's Registrations
`Are Such As Are Distributed Through Overlapping
`Trade Channels And To Overlapping Classes Of Customers
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`The goods identified in G&W's registrations and continuously sold under the G&W Mark
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`and Design, and the potential goods sold under Pharma's application, are such as are distributed
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`through overlapping trade channels and to overlapping classes of customers.
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`G&W's goods sold under the G&W Mark and Design are generally marketed to
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`wholesalers, distributors, buyers at GPOs, and managed care organizations. (Greene Dep. 37.)
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`G&W products are also marketed in trade magazines that are distributed to pharmacists and other
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`health care professionals. (Greene Dep. 30, 50.)
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`The goods listed in Pharma's application are not restricted as to trade channels. The
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`Board must therefore assume that Pharma's goods will be sold in all channels of trade customary
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`for such goods to all appropriate purchasers for goods of the type. Canadian Imperial Bank, 811
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`F.2d at 1460. Customary channels of trade for pharmaceuticals include prescriptions through
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`physicians, and distribution by wholesalers and distributors. (Notice of Reliance Resp. to
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`Interrog. 2, Sept. 11, 2007.) Furthermore, Pharma has admitted that its goods are intended for
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`sale throughout the United States. (Id. Resp. to Interrog. 5.) This is the same marketplace in
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`which G&W sells its goods under the G&W Mark and Design. (Greene Dep. 21.)
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`The goods identified in G&W's registrations and continuously sold under the G&W Mark
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`and Design and the goods of Pharma's application are such as are distributed to overlapping
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`classes of customers. Pharma's goods are intended to be purchased by, and promoted to, the
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`same general pharmaceutical distribution channels such as prescriptions through physicians and
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`distributors. (Notice of Reliance Resp. to Interrog. 2, Sept. 11, 2007.) G&W also promotes its
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`products through distributors and prescriptions through physicians. (Greene Dep. 30, 50.)
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`Ultimately, if receiving a prescription from a physician for either G&W's product or
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`Pharma's product, customers may purchase the product from the same drug store. Under these
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`circumstances, it is clear that G&W's goods and Pharma's goods will travel in the same channels
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`of trade to the same types of purchasers. See Am. Sugar Refining Co. v. Andreassen, 296 F.2d
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`783, 784 (C.C.P.A. 1961) (likelihood of confusion found where "both products move through the
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`same channels of trade; they are both sold in the same types of stores, including supermarkets,
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`delicatessens, chain and independent stores; in general as well as department stores; that both
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`products are sold to the same buyers on the retail level, generally to housewives; and to
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`wholesalers and jobbers in the food field").
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`Accordingly, this factor weighs strongly in favor of finding confusion likely.
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`4. The G&W Mark And G&W Design Are Strong
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`Strength of a mark is determined by the nature of the mark, by the commercial success of
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`the mark, and by the number and nature of use of similar third-party marks for related goods.
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`Monarch Mktg. Sys. Inc., Elan Sys. Inc., 39 U.S.P.Q.2d 1032, 1037-38 (T.T.A.B. 1996).
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`The G&W Mark and Design are both strong insofar as they are inherently distinctive, as
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`evidenced by their registration on the Principal Register with no disclaimers and no recourse to
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`acquired distinctiveness under Section 2(f.)
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`The strength of G&W's Mark and Design are enhanced by commercial success in the
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`pharmaceutical industry. G&W has used the G&W Mark for 90 years, since 1919, and its
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`Design Mark for over 28 years. (Greene Dep. 7, 19.) In 2005 and 2006, G&W's sales figures
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`were over $50 million. (Id. at 5.) G&W sells its products marketed under the G&W Mark and
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`Designs through distributors and through prescriptions from physicians that are ultimately
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`purchased from pharmacies. (Id. at 30) The G&W products are distributed throughout the
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`United States and appear in trade magazines and advertisements. (Id. at 21, 26, 31, 50.)
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`Furthermore, G&W participates at trade shows organized by industry associations and at
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`customer shows. (Id. at 26.) At all shows literature, such as sales sheets and product
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`information, is distributed, as well as through direct mailings to targeted audiences. (Id.)
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`There is no evidence of any third-party use of similar marks for related goods to dilute
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`the strength of G&W's Mark and Design. Palm Bay, 396 F.3d at 1369, 1373-74.
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`Given the nature of the mark, the length of use, the extent of the use, the commercial
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`success, and the lack of third party use of similar marks for related goods, there is no question
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`that G&W's Mark and Design are sufficiently strong to bar registration of essentially the
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`identical mark for related goods. Accordingly, this factor strongly favors a finding of confusion.
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`5. Absence Of Evidence Of Actual Confusion Is Immaterial
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`The relevant test is whether there exists a likelihood of confusion, not actual confusion.
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`It is unnecessary to show actual confusion to establish a likelihood of confusion. Weiss, 902
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`F.2d at 1549. In fact, the absence of evidence of actual confusion is not surprising here, given
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`that Applicant is not yet even using the Mark in commerce. See In re Kent-Gamebore Corp., 59
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`U.S.P.Q.2d 1373, 1375 (T.T.A.B. 2001) ("without information on the nature and extent of
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`applicant's use of the mark in the United States, we cannot conclude that there has been
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`opportunity for actual confusion").
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`However, despite Pharma not even sell