throbber
THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
`
`Mailed:
`March 20, 2009
`Bucher
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`Novartis AG
`
`v.
`
`Cera Products, Inc.
`
`________
`
`Opposition No. 91173560
`against Serial No. 78747999
`_______
`
`
`Peter S. Sloane, Stephen J. Quigley and Angela M. Martucci
`of Ostrolenk Faber Gerb & Soffen, LLP, for Novartis AG.
`
`
`Morton J. Rosenberg and Rajiv S. Shah of Rosenberg Klein &
`Lee for Cera Products, Inc.
`_______
`
`Before Bucher, Zervas and Ritchie, Administrative Trademark
`Judges.
`
`Opinion by Bucher, Administrative Trademark Judge:
`
`Cera Products, Inc. seeks registration on the Principal
`
`Register of the mark CERAFLU (in standard character format)
`
`for goods identified in the application, as amended, as
`
`“oral hydration powdered nutritional supplement drink mix”
`
`in International Class 5.1
`
`
`Application Serial No. 78747999 was filed on November 6,
`1
`2005 based upon applicant’s allegation of a bona fide intention
`to use the mark in commerce.
`
`

`
`Opposition No. 91173560
`
`Novartis AG has opposed this application on the ground
`
`of priority of use and likelihood of confusion, alleging
`
`that applicant’s mark, when used in connection with the
`
`identified goods, so resembles the following marks:
`
`THERAFLU
`
`THERAFLU VAPOR STICK
`
`THERAFLU THIN STRIPS
`
`for “cough and cold preparation”
`in International Class 5;2
`
`for “cough and cold medicine” in
`International Class 5;3 and
`
`for “cough, cold and allergy
`preparations” in International
`Class 5;4
`
`as to be likely to cause confusion, to cause mistake or to
`
`deceive, under Section 2(d) of the Lanham Act, 15 U.S.C.
`
`§ 1052(d). In addition, opposer alleged prior common law
`
`rights in the term THERAFLU for a variety of pharmaceutical
`
`preparations and dietary supplements for the treatment of
`
`cold and flu symptoms. Opposer has also opposed this
`
`application on the ground of dilution, alleging that
`
`applicant’s mark will blur the distinctiveness of opposer’s
`
`famous THERAFLU mark.
`
`Applicant, in its answer, denied all the essential
`
`allegations of these claims.
`
`
`2
`Registration No. 1452879 issued on August 18, 1987; renewed.
`
`Registration No. 2744823 issued on July 29, 2003.
`
`Registration No. 3266132 issued on July 17, 2007.
`
` 3
`
`
`
` 4
`
`
`
`- 2 -
`
`

`
`Opposition No. 91173560
`
`I.
`
`THE RECORD
`
`In addition to the pleadings and the file of the
`
`involved application, the record also includes the trial
`
`transcript of Eric Edward Fehling, employed by Novartis
`
`Consumer Health as Brand Manager of opposer’s THERAFLU
`
`brands, whose testimony was taken on June 3, 2008, along
`
`with the related exhibits; opposer’s notice of reliance,
`
`filed on June 10, 2008, making of record certified copies of
`
`opposer’s pleaded registrations and copies of third-party
`
`registrations; copies of applicant’s answer to opposer’s
`
`first set of interrogatories to applicant, applicant’s
`
`response to opposer’s second set of interrogatories to
`
`applicant, applicant’s answer to opposer’s first set of
`
`request for production of documents and things, and
`
`applicant’s response to opposer’s first set of requests for
`
`admissions; a copy of the confidential transcript of the
`
`discovery deposition of Charlene Riikonen, applicant’s
`
`president, dated August 24, 2006, and filed under seal; and
`
`printouts from printed publications obtained through the
`
`Lexis/Nexis computer database.
`
`Applicant filed a notice of reliance introducing into
`
`the record copies of several of its own and third-party
`
`registrations and opposer’s responses to applicant’s
`
`discovery requests.
`
`- 3 -
`
`

`
`Opposition No. 91173560
`
`Both parties filed briefs, and opposer filed a reply
`
`brief. Also, we note that both parties have designated
`
`portions of the record and the briefs as “Confidential.”
`
`Accordingly, we will refer to the information so designated
`
`in only a very general fashion.
`
`II.
`
`FACTUAL FINDINGS
`
`Opposer is a global pharmaceutical company. Fehling
`
`Dec. at 8. Novartis AG, headquartered in Basle,
`
`Switzerland, has approximately $39 billion in annual
`
`revenues and over 100,000 employees. Opposer’s subsidiary,
`
`Novartis Consumer Health, Inc., sells personal care products
`
`ranging from cough/cold medications to dietary supplements,
`
`from analgesics to gastrointestinal products to foot care
`
`products. These products are sold under brand names such as
`
`TRIAMINIC, COMTREX, BENEFIBER, EXCEDERIN, BUFFERIN,
`
`MAALOX, EX-LAX, LAMISIL and KERI. Id. at 7 - 9.
`
`Applicant, a Maryland corporation, is a small
`
`privately-held company having fewer than ten employees.
`
`Charlene Riikonen, the President of Cera Products, Inc.,
`
`is responsible for promoting applicant’s products,
`
`largely through visits to medical meetings. Otherwise,
`
`applicant has no sales representatives on staff. Ms.
`
`Riikionen’s husband, Esko Riikonen, is also an Officer
`
`- 4 -
`
`

`
`Opposition No. 91173560
`
`of applicant. Riikonen Dep. at 61, 75, 77, 84, 86 – 87,
`
`109, Opposer’s Notice of Reliance at Ex. D at Answer to
`
`Interrogatory Nos. 16, 17.
`
`III. ANALYSIS
`
`A. Opposer’s Standing
`
`Opposer’s standing is a threshold inquiry made by the
`
`Board in every inter partes case. In Ritchie v. Simpson,
`
`170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
`
`Circuit enunciated a liberal threshold for determining
`
`standing, i.e., whether one’s belief that one will be (is)
`
`damaged by the registration is reasonable and reflects a
`
`real interest in the case. See also Jewelers Vigilance
`
`Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
`
`2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
`
`Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
`
`1982). Opposer has properly made its pleaded registrations
`
`of record. We consider this sufficient to establish
`
`opposer’s interest and, therefore, standing to oppose
`
`registration of applicant’s mark, in this proceeding. See
`
`Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
`
`(Fed. Cir. 2000).
`
`- 5 -
`
`

`
`Opposition No. 91173560
`
`B. Opposer’s Priority
`
`Moreover, because opposer has established that it owns
`
`valid and subsisting registrations of its pleaded marks,
`
`Section 2(d) priority is not an issue in this case as to the
`
`marks therefor and goods covered thereby. See King Candy
`
`Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
`
`182 USPQ 108 (CCPA 1974); and Carl Karcher Enterprises Inc.
`
`v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).5
`
`Opposer has also, as discussed infra, established its common
`
`law priority through Mr. Fehling’s testimony and documentary
`
`evidence in connection with THERAFLU marks for additional,
`
`related products.
`
`C.
`
`Likelihood of Confusion
`
`We turn, then, to the issue of likelihood of confusion
`
`under Section 2(d) of the Trademark Act. Our determination
`
`must be based upon our analysis of all of the probative
`
`facts in evidence that are relevant to the factors bearing
`
`on the issue of likelihood of confusion. See In re E. I.
`
`du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
`
`1973). See also In re Majestic Distilling Company, Inc.,
`
`315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
`
`
`5 We note in addition that applicant does not contest either
`opposer’s standing to bring this proceeding or its priority of
`use.
`
`- 6 -
`
`

`
`Opposition No. 91173560
`
`considering the evidence of record on these factors, we keep
`
`in mind that “[t]he fundamental inquiry mandated by Section
`
`2(d) goes to the cumulative effect of differences in the
`
`essential characteristics of the goods and differences in
`
`the marks.” See Federated Foods, Inc. v. Fort Howard Paper
`
`Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
`
`Renown of opposer’s mark
`
`The first du Pont factor we consider is the factor of
`
`fame. The fame of the prior mark plays a dominant role in
`
`likelihood of confusion cases featuring a famous mark. Bose
`
`Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
`
`1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
`
`1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker
`
`Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350,
`
`22 USPQ2d 1453 (Fed. Cir. 1992). Fame for likelihood of
`
`confusion purposes arises “as long as a significant portion
`
`of the relevant consuming public … recognizes the mark as a
`
`source indicator.” Palm Bay Imports, Inc. v. Veuve Clicquot
`
`Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
`
`1689, 1694 (Fed. Cir. 2005). That is, we look to the class
`
`of customers and potential customers of a product or
`
`service. In this case, the relevant public for opposer’s
`
`- 7 -
`
`

`
`Opposition No. 91173560
`
`goods and applicant's goods includes all members of the
`
`general public.
`
`Opposer’s THERAFLU product was first launched in the
`
`United States in 1987. Opposer has been selling a growing
`
`number of THERAFLU products nationwide for over twenty
`
`years.6 In 2007, the most recent year for which the record
`
`contains any data, opposer enjoyed annual sales of its
`
`THERAFLU products approaching a hundred-million dollars
`
`($100,000,000.00). Among all the products currently on the
`
`market that are directed to the treatment of flu symptoms,
`
`THERAFLU maintains a number one ranking measured by gross
`
`sales. Further, opposer’s latest market research to
`
`evaluate the popularity and recognition of its THERAFLU
`
`mark shows that opposer’s THERAFLU mark has an aided brand
`
`awareness of 93% among relevant consumers.7 Fehling dep. at
`
`17 – 22.
`
`
`6
`The record includes testimonial evidence from Mr. Fehling,
`with documentary support, regarding a range of products offered
`by opposer to treat various cold and flu symptoms. Opposer’s
`products are offered in various forms such as powder, thin
`strips, caplets, vapor patches, and vapor fan units. Mr. Fehling
`also testified about opposer’s plans to expand further into
`homeopathic products.
`
` 7
`
`This statement simply reflects the fact that Mr. Fehling
`
`testified about the results of a company study completed prior to
`this litigation, and not our scrutiny of a survey conducted in
`support of opposer’s position herein.
`
`
`- 8 -
`
`

`
`Opposition No. 91173560
`
`Commensurate with the impressive sales are opposer’s
`
`extensive promotional efforts surrounding the THERAFLU
`
`mark. Opposer spent more than $ 32 million in advertising
`
`and promotion during the five months of the flu season of
`
`the year before Mr. Fehling’s testimony in June 2008.
`
`Novartis Consumer Health, through its over-the-counter
`
`division in the United States, ties its level of promotional
`
`expenditures directly to a set percentage of sales. Hence,
`
`each year as the gross annual sales increase, so do the
`
`promotional expenditures. Id. at 47. While the details of
`
`opposer’s nationwide promotional campaigns for THERAFLU
`
`products on TV, radio, and print ads remain confidential,
`
`the documentation is substantial and most detailed. Id. at
`
`30 – 32, Opposer’s Exhibits ## 6 and 7. For example,
`
`opposer has provided detailed flow charts listing day-by-day
`
`television ad placement information over a period of more
`
`than five years, often on popular, primetime shows on
`
`national cable and over-the-air networks. Id.
`
`Mr. Fehling testified about involvement by local radio
`
`personalities (Id. at 33); THERAFLU ads targeted to the
`
`Hispanic market (Id. at 33 - 34); national, free standing
`
`inserts for Sunday papers having routine runs of 45 million
`
`copies (Id. at 34 – 35, Opposer’s Exhibit #8); promotion in
`
`national drug and grocery stores (Id. at 36); in-store
`
`- 9 -
`
`

`
`Opposition No. 91173560
`
`creatives (Id. at 37-38, Opposer’s Exhibit #9); product
`
`samples (Id. at 38); and Mr. Fehling authenticated an
`
`exhibit of a hundred pages of relevant screen-prints from
`
`opposer’s Internet website, www.theraflu.com (Id. at 39,
`
`Opposer’s Exhibit #10,). This website information shows
`
`bilingual (e.g., English-language and Spanish-language)
`
`pages; online coupons; an interactive flu tracker; and
`
`educational information, including an interactive solution
`
`finder for the flu-sufferer. Id. at 40 – 41. Opposer has
`
`advertised online through in-stream and in-banner ads
`
`through http://www.valueclickmedia.com (Id. at 42), and
`
`through targeted ads, e.g., with any Google search statement
`
`like “Flu.” Opposer has placed advertisements for THERAFLU
`
`ads on the sides of New York City buses and billboards along
`
`busy thoroughfares. Id. at 43. Opposer and its THERAFLU
`
`products have been the subject of articles published in
`
`national trade periodicals, local newspapers and national
`
`newspapers and magazines, including The Washington Post and
`
`Newsweek. In addition, opposer points to unsolicited
`
`mentions of the helpfulness of THERAFLU products by
`
`national television personalities like Kelly Ripa, Deborah
`
`Norville, Anderson Cooper and Stephen Colbert. Id. at 48.
`
`By the standards established by the Federal Circuit, as
`
`noted above, opposer’s mark THERAFLU is famous for remedies
`
`- 10 -
`
`

`
`Opposition No. 91173560
`
`for cough, cold and flu symptoms, a point never seriously
`
`disputed by applicant. On this record, we find for purposes
`
`of our likelihood of confusion analysis, that opposer’s
`
`THERAFLU mark is famous in connection with remedies for
`
`cold and flu symptoms and is entitled to broad protection.
`
`Bose, 63 USPQ2d at 1305. The Federal Circuit has stated
`
`repeatedly that there is no excuse for even approaching the
`
`well-known trademark of a competitor inasmuch as “[a] strong
`
`mark … casts a long shadow which competitors must avoid.”
`
`Kenner Parker Toys, Inc. v. Rose Art Industries, Inc.,
`
`22 USPQ2d at 1456. Hence, we find that the du Pont factor
`
`focusing on fame weighs heavily in favor of finding a
`
`likelihood of confusion herein.
`
`The Goods
`
`We now consider the relatedness of the parties’
`
`respective goods. Applicant seeks registration of its mark
`
`for use in connection with “oral hydration powdered
`
`nutritional supplement drink mix,” in International Class 5.
`
`Opposer’s registrations identify its relevant goods as
`
`remedies for cough and colds, and opposer has demonstrated
`
`its common law usage on a variety of products for treating
`
`the symptoms of colds and flu.
`
`- 11 -
`
`

`
`Opposition No. 91173560
`
`It is well established that the goods of the parties
`
`need not be similar or competitive, or even offered through
`
`the same channels of trade, to support a holding of
`
`likelihood of confusion. Rather, it is sufficient that the
`
`respective goods of the parties be related in some manner,
`
`and/or that the conditions and activities surrounding the
`
`marketing of the goods are such that they would or could be
`
`encountered by the same persons under circumstances that
`
`could, because of the similarity of the marks, give rise to
`
`the mistaken belief that they originate from the same
`
`source. See Hilson Research, Inc. v. Society for Human
`
`Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
`
`International Telephone & Telegraph Corp., 197 USPQ 910
`
`(TTAB 1978). Clearly, the inquiry is not whether the goods
`
`will be confused with each other, but rather whether the
`
`public will be confused as to their source. See Safety-
`
`Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1403,
`
`186 USPQ 476, 477 (CCPA 1975).
`
`The involved goods are all pharmaceutical preparations
`
`and dietetic substances adapted for medical use by
`
`individuals suffering the symptoms of a cold or flu.
`
`However, in support of its position that its powdered drink
`
`mixes are quite different from opposer’s goods, applicant
`
`argues that it is selling a “food product” (not regulated by
`
`- 12 -
`
`

`
`Opposition No. 91173560
`
`the FDA), while opposer is marketing a medicated over-the-
`
`counter (OTC) product having drugs among its ingredients,
`
`and that therefore opposer’s product is regulated by the
`
`FDA.
`
`While this distinction as to FDA approval appears to be
`
`true, it is not determinative under the facts of this case.
`
`Applicant’s CERAFLU product is directed to users needing
`
`hydration as a result of having influenza. Opposer’s
`
`original THERAFLU product is basically to treat flu
`
`symptoms, with a focus on medication designed to relieve
`
`cough and cold symptoms. However, we note that applicant is
`
`not marketing ordinary, light beverages (or beverage mixes)
`
`in International Class 32, but is selling beverages (or
`
`beverage mixes) for medical purposes in International Class
`
`5.
`
`Hence, both applicant’s and opposer’s products are
`
`designed for the individual suffering symptoms of a
`
`cold/flu. They come in the same powdered form in the same
`
`basic flavors (e.g., citrus/lemon/lime). Certainly, neither
`
`requires a prescription, and there is no evidence that
`
`consumers weigh the value of FDA approval when considering
`
`their over-the-counter, flu-treatment options.
`
`Applicant repeatedly points out that the only way in
`
`which opposer’s product provides hydration is that the
`
`- 13 -
`
`

`
`Opposition No. 91173560
`
`powder is necessarily mixed with eight ounces of hot water.
`
`On the other hand, the record shows that, in fact, media
`
`publications have promoted the hydrating power of THERAFLU
`
`and opposer points out that its THERAFLU FORTIFENSE
`
`packaging states that THERAFLU provides the additional
`
`fluids that doctors recommend for flu-sufferers: “Its
`
`powerful Hot Liquid format provides comforting warmth and
`
`hydration while helping to maintain a healthy immune system”
`
`(emphasis supplied). An oft-used slogan in opposer’s
`
`television ad campaigns and on its point of sale creatives
`
`for THERAFLU has been: “Relieve Your Cold, Hydrate Your
`
`Body.” Fehling dep. at 19, 44 – 47, Exhibits ## 12 and 13.
`
`Clearly then, hydration has been a key communication point
`
`in promotional materials directed to prospective THERAFLU
`
`consumers.
`
`Opposer argues that applicant’s nutritional
`
`supplements are very closely related to the cough and cold
`
`medicines and preparation covered by opposer’s
`
`registrations, and the related goods for which it has
`
`demonstrated prior use. In its reply brief, opposer
`
`states “both Applicant’s and Opposer’s products are non-
`
`prescription, powdered products, packaged in individual
`
`serving sizes, intended to be mixed with water, to treat
`
`people suffering from influenza.” Reply brief at 4. In
`
`- 14 -
`
`

`
`Opposition No. 91173560
`
`addition to pointing out that it markets both medicated
`
`preparations for relief of cold and allergy symptoms as
`
`well as electrolyte replacement fluids, opposer points to
`
`third-party use-based registrations to show examples of
`
`the same mark being used on both types of goods:
`
`CIMA
`
`
`
`for “vitamin preparations, dietary
`supplements, and pharmaceutical
`tablets, pills and capsules;
`namely, cold medicines, antacid
`pain relievers, analgesics, cold
`tablets, mineral supplements,
`electrolyte replacements, ulcer
`preparations, sinus preparations,
`antibiotics and antibacterials” 8
`
`for “gelatin-coated vitamins,
`minerals, herbal and nutritional
`supplements; gelatin coating
`compositions sold as an integral
`component of capsules, caplets,
`tablets, and encapsulated liquid
`pharmaceuticals, namely analgesics,
`NSAIDS, anticonvulsants, cough and
`cold preparations,
`immunosuppressants, osteoporosis
`agents, a full line of gelatin
`coated pharmaceuticals and
`nutritional supplements” 9
`
`for “gelatin-coated vitamins,
`minerals, herbal and nutritional
`supplements; pharmaceutical
`preparations, namely, gelatin
`coating compositions sold as an
`integral component of capsules,
`caplets and tablets for the
`treatment and/or alleviation of
`
`
`8
`Registration No. 1728502 issued on October 27, 1992;
`renewed.
`
`Registration No. 2972571 issued on July 19, 2005.
`
` 9
`
`
`
`
`- 15 -
`
`

`
`Opposition No. 91173560
`
`cold, cough, flu, allergy and sinus
`symptoms and premenstrual syndrome;
`pharmaceutical preparations,
`namely, gelatin coating
`compositions sold as an integral
`component of capsules, caplets and
`tablets, namely analgesics,
`antitussives, anti-inflammatories,
`antipyretics, antihistamines,
`decongestants, vitamins; and a full
`line of gelatin-coated
`pharmaceuticals and nutritional
`supplements in oral dosage form” 10
`
`
`Opposer argues correctly that third party registrations
`
`such as these that cover a number of different goods have
`
`probative value in demonstrating that such goods are of a
`
`type which may emanate from a single source. See In re
`
`Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB
`
`1988).
`
`Indeed, given the close relationship of these goods,
`
`we find that this critical factor favors opposer.
`
`Trade Channels
`
`Under the du Pont factor focusing on the similarity of
`
`the trade channels, we note that none of the identifications
`
`of goods in opposer’s registrations or applicant’s
`
`application includes any trade channel limitations. We
`
`therefore presume that the goods of the application and
`
`
`10
`Registration No. 2978111 issued on July 26, 2005. No claim
`is made to the term “Gelcaps” apart from the mark as shown.
`
`- 16 -
`
`

`
`Opposition No. 91173560
`
`registrations travel in all the appropriate channels of
`
`trade for such goods. See Hewlett-Packard Co. v. Packard
`
`Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
`
`Octocom Systems Inc. v. Houston Computer Services Inc., 918
`
`F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987); and Schieffelin &
`
`Co. v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB
`
`1989) [“[M]oreover, since there are no restrictions with
`
`respect to channels of trade in either applicant’s
`
`application or opposer’s registrations, we must assume that
`
`the respective products travel in all normal channels of
`
`trade ….”].
`
`Additionally, Mr. Fehling testified that THERAFLU
`
`branded products are sold in all types of drug stores like
`
`Walgreens and CVS, major national chains like Target,
`
`grocery stores like Kroger and Safeway, in discount stores
`
`like Costco, Wal(cid:121)Mart and Kmart, convenience stores like the
`
`local 7/ll or small “mom and pop” stores, at gas stations,
`
`airport newsstands, military installations, etc. Opposer
`
`sells THERAFLU to third party repackers who repackage the
`
`product into single-dose or trial size packaging (for
`
`convenience stores, hotels, etc.) and THERAFLU is sold
`
`online by third parties such as Amazon.com and
`
`Drugstore.com. Id. at 47 -55. Applicant is hoping to ramp
`
`- 17 -
`
`

`
`Opposition No. 91173560
`
`up its meager sales to reach as many prospective new
`
`consumers as possible. Riikonen Dep. at 95.
`
`Further, the record shows that the flu-remedies of both
`
`parties are available to all members of the general public
`
`online. Finally, the record shows that among the wholesale
`
`enterprises available to distribute this type of goods on to
`
`retailers, both opposer and applicant have contractual
`
`relationships with Cardinal Health Corp. for further
`
`distribution of their respective products.
`
`Hence, the du Pont factor focusing on the channels of
`
`trade also weighs in favor of finding a likelihood of
`
`confusion.
`
`Conditions of Purchase
`
`We now consider opposer’s contention at p. 29 – 30 of
`
`its brief that opposer’s goods and applicant's goods are
`
`both inexpensive. In fact, applicant has admitted that its
`
`CERAFLU product is inexpensive. Riikonen Dep. at 29. The
`
`record shows that the parties’ respective goods are
`
`often sold for under $5.00 a packet. Riikonen Dep. at 29,
`
`Fehling Dep. at 19 – 20. In addition to the fact that
`
`many prospective purchasers may be somewhat debilitated
`
`due to their suffering flu symptoms, the relatively
`
`inexpensive price exacerbates the risk that consumers will
`
`- 18 -
`
`

`
`Opposition No. 91173560
`
`mistake one product for the other. It has often been stated
`
`that purchasers of inexpensive consumer goods such as here
`
`are held to a lesser standard of care. See Specialty
`
`Brands, Inc. v. Coffee Bean Distrib., Inc., 748 F.2d
`
`669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984); see also
`
`McNeil Consumer Brands, Inc. v. U.S. Dentek Corp., 116 F.
`
`Supp. 2d 604, 608, 56 USPQ2d 1758, 1761 (E.D. Pa. 2000)
`
`["The average consumer does not put a significant amount
`
`of time or thought into the purchase of off-the-shelf pain
`
`reliever].
`
`Thus, we find that the du Pont factor focusing on the
`
`conditions of purchase weighs in favor of a finding of
`
`likelihood of confusion herein.
`
`Variety of Goods on Which the Mark is Used:
`
`Opposer has used the THERAFLU mark on a variety of
`
`products all directed to those having flu symptoms, and the
`
`THERAFLU line of products has been continually increasing
`
`over the years. The FORTIFENSE dietary supplement is
`
`touted as coming “From the makers of Theraflu.” While
`
`THERAFLU is often sold in its original, powdered form, the
`
`mark is also used prominently on a daytime cold and cough
`
`syrup, a nighttime cold and cough syrup, thin strips for the
`
`tongue, caplets, vapor patch, and a vapor fan unit. In
`
`- 19 -
`
`

`
`Opposition No. 91173560
`
`addition to the fact that the packaging for opposer’s goods
`
`mentions the benefits of hydration for the flu-wracked body,
`
`it would not be a stretch for those familiar with opposer’s
`
`line of flu remedies to believe that opposer was now
`
`offering a dietary supplement for persons with influenza
`
`directed to oral rehydration and electrolyte replacement.
`
`This factor also favors opposer.
`
`We note that applicant, in defense of its adoption of
`
`its CERAFLU mark, points to its prior registrations for
`
`CERASPORT, CERALYTE and CERA VACX. However, we must
`
`consider applicant’s mark currently before us, not the
`
`different ones in applicant’s prior registrations. It is
`
`only when applicant combined its “CERA-” prefix with the “–
`
`FLU” suffix that the resulting term moved into the shadow of
`
`opposer’s famous THERAFLU mark. Applicant’s earlier-
`
`registered “CERA-” marks – none of which includes the term
`
`“-FLU” – are irrelevant in considering whether the opposer
`
`has demonstrated a likelihood of confusion during this
`
`opposition proceeding vis-à-vis its registered THERAFLU
`
`marks.
`
`Actual Confusion
`
`The absence of any known examples of actual confusion,
`
`as reported by both parties, does not compel a different
`
`- 20 -
`
`

`
`Opposition No. 91173560
`
`result in our likelihood of confusion analysis. Although
`
`neither party is aware of any actual confusion, evidence of
`
`actual confusion is not essential to proving a case of
`
`likelihood of confusion. Giant Food, Inc. v. Nation’s
`
`Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
`
`1983).
`
`Most importantly, we note that between February 2006
`
`and June 2007, applicant incurred $ 765 in promotional costs
`
`for its CERAFLU line of products, and had only $ 4,000 in
`
`sales of CERAFLU products during this same period.
`
`Response to Interr. ## 21 and #22 Thus, due to the fairly
`
`limited exposure of applicant’s product in the marketplace,
`
`we further discount the apparent lack of actual confusion.
`
`At best for applicant, this is a neutral factor.
`
`The marks
`
`We consider then the similarity or dissimilarity of the
`
`marks, determining whether the marks are similar in sound,
`
`appearance, meaning, and commercial impression. Palm Bay
`
`Imports, Inc. 73 USPQ2d at 1692. The test is not whether
`
`the marks can be distinguished when subjected to a side-by-
`
`side comparison, but rather whether the marks are
`
`sufficiently similar in their entireties that confusion as
`
`to the source of the services offered under the respective
`
`- 21 -
`
`

`
`Opposition No. 91173560
`
`marks is likely to result. The focus is on the recollection
`
`of the average purchaser, who normally retains a general
`
`rather than a specific impression of trademarks. Sealed Air
`
`Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
`
`We begin our analysis of this factor mindful of the
`
`fact that as the fame of a mark increases, the degree of
`
`similarity between the marks necessary to support a
`
`conclusion of likely confusion declines. Bose Corp. v. QSC
`
`Audio Products Inc., 63 USPQ2d at 1309.
`
`We turn first to the connotations of each of these
`
`respective marks. The derivation of the “-FLU” suffix seems
`
`obvious. Also, this fits a pattern of third-party
`
`registrations that applicant made of record, with marks
`
`having “-FLU” endings and applied to pharmaceuticals for flu
`
`prevention and/or flu symptoms (for horses and humans):
`
`EQUI-FLU
`
`for “equine influenza vaccine” in
`International Class 18;11
`
`for “pharmaceutical antiviral
`preparation” in International
`Class 5;12
`
`
`
`
`11
`Registration No. 0849292 issued on May 21, 1968; second
`renewal.
`
`12 Registration No. 2576662 issued on June 4, 2002,
`Section 8 affidavit (six-year) accepted and Section 15
`affidavit acknowledged. The drawing is lined for the colors
`green and yellow and color is claimed as a feature of the
`mark.
`
`- 22 -
`
`

`
`Opposition No. 91173560
`
`WAL-FLU
`
`DURAFLU
`
`HEXAFLU
`
`for “flu relief medicine” in
`International Class 5;13
`
`for “pharmaceutical preparations,
`namely a tablet used to treat the
`symptoms of flu, which consist of
`fever, aches and pains, runny
`nose, congestion, and non-
`productive cough” in
`International Class 5;14
`
`for “pharmaceutical preparations,
`namely a tablet used to treat the
`symptoms of flu, which consist of
`fever, aches and pains, runny
`nose and congestion” in
`International Class 5;15
`
`
`Applicant, Cera Products, Inc., explains its “CERA-”
`
`formative as an acronym referencing either “Cereal based
`
`rehydration assistance” or “Charlene and Esko Riikonen
`
`Associates.” When combined, applicant argues that the term,
`
`“Cera-Flu,” is intended to “ … show that the mark CERAFLU
`
`is a product manufactured, sold and has a point origin from
`
`[applicant] and its use would be for users who experience
`
`dehydration.” Answer to Interrogatory No. 35. In
`
`explaining the adoption of this mark, applicant refers to
`
`its earlier “CERA-” formative marks, as follows:
`
`
`13
`Registration No. 2704550 issued on April 8, 2003, Section 8
`affidavit (six-year) accepted and Section 15 affidavit
`acknowledged.
`
`14
`
`15
`
`
`Registration No. 2712009 issued on April 29, 2003.
`
`Registration No. 2859043 issued on June 29, 2004.
`
`- 23 -
`
`

`
`Opposition No. 91173560
`
`CERASPORT
`
`for “thirst quenching soft drinks” in
`International Class 32;16
`
`CERAVET
`
`CERALYTE
`
`for “food supplement, namely, maltodextrin
`combined with minerals, for domestic pets and
`livestock” in International Class 5;17
`
`for “food supplement, namely maltodextrin
`combined with minerals, namely, sodium
`chloride, potassium chloride, and trisodium
`citrate” in International Class 5;18
`
`CERA VACX
`
`for “food supplement containing rice syrup
`solids, sodium bicarbonate, and trisodium
`citrate” in International Class 5;19
`
`
`Applicant’s CERAFLU product is an extension of its
`
`existing product line. The record shows that the CeraSport
`
`product is intended to prevent and/or correct dehydration
`
`due to sweat loss from physical exertion and/or heat stress.
`
`CeraSport, in its citrus-flavored, powder form is quite
`
`similar to the CeraFlu formulation – a product, as we have
`
`seen, for hydrating persons having influenza. However,
`
`despite applicant’s acronym explanation for the derivation
`
`of its trade name (Cera Products, Inc.) and “CERA-”
`
`formative prefix, we view the term CERAFLU as a coined term
`
`whose final syllable suggests it may well be a flu remedy.
`
`Registration No. 2233010 issued on March 16, 1999; renewed.
`
`
`16
`Registration No. 2209673 issued on December 8, 1998;
`renewed.
`
`17
`
`18
`
`19
`
`Registration No. 2899079 issued on November 2, 2004.
`
`Registration No. 3384798 issued on February 19, 2008.
`
`- 24 -
`
`

`
`Opposition No. 91173560
`
`Applicant also argues in its brief that opposer’s
`
`“ … prefix ‘THERA’ is believed to be merely [a shortened
`
`form of] the generic word therapy.” We view that as
`
`applicant’s conjecture on the origins of opposer’s mark.
`
`Contrariwise, if one finds the prefix, “THERA-,” to be
`
`arbitrary, then one is comparing two coined terms (i.e.,
`
`CERAFLU and THERAFLU) without any established meaning. On
`
`the other h

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