Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA446157
`ESTTA Tracking number:
`12/13/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91173963
`Plaintiff
`Mini Melts, Inc.
`ROBERT G OAKE JR
`OAKE LAW OFFICE
`825 MARKET STREET, SUITE 250
`ALLEN, TX 75013
`UNITED STATES
`rgo@oake.com
`Opposition/Response to Motion
`Robert G. Oake, Jr.
`rgo@oake.com
`/s/ Robert G. Oake, Jr.
`12/13/2011
`Response to Reckitt's Motion for Judgment on the Pleadings.pdf ( 22 pages
`)(456354 bytes )
`Ex. 1 Jury Verdict Signed.pdf ( 4 pages )(115039 bytes )
`Ex. 2 Jury Instructions.pdf ( 28 pages )(1121821 bytes )
`Ex. 3 Findings of Fact and Conclusions of Law - Court (marked).pdf ( 7 pages
`)(137157 bytes )
`Ex. 4 Joint Pre-Trial Order 2.2.09 - Final.pdf ( 131 pages )(430579 bytes )
`Ex. 5 Transcript.pdf ( 20 pages )(1535509 bytes )
`Ex. 6 Final Judgment - Court.pdf ( 2 pages )(105553 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91/173,963
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`MINI MELTS, INC.,
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`Opposer,
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`v.
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`ADAMS RESPIRATORY OPERATIONS,
`INC.
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`Applicant.
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`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
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`MINI MELTS INC.’S RESPONSE TO RECKITT’S MOTION
`FOR JUDGMENT ON THE PLEADINGS AND MOTION TO DISMISS
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`Opposer Mini Melts, Inc. (Mini Melts) by and through its undersigned counsel,
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`files this response to Reckitt’s Motion for Judgment on the Pleadings and Motion to
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`Dismiss, respectfully showing as follows:
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`1.
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`As an initial matter, it appears that Reckitt’s motion includes matters that are
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`outside the pleadings. Therefore, it is not properly a motion for judgment on the pleadings.
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`In the event Reckitt’s motion is recharacterized as a motion for summary judgment,
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`Opposer Mini Melts requests leave to respond to the motion as a motion for summary
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`judgment.
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`2.
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`Reckitt argues that the issue of likelihood of confusion was decided in its favor in
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`the federal court litigation and is res judicata in this Opposition. There are two fatal
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`problems with this argument. First, the term “res judicata” usually refers to claim
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`preclusion, and claim preclusion cannot serve to bar an opposition based upon an earlier
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`infringement proceeding. Second, Reckitt may be referring to issue preclusion. However,
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`1
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`issue preclusion also does not act as a bar in this opposition because the standard that was
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`used for determining the issue of likelihood of confusion in the federal court litigation is
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`significantly different than the standard to be used for determining the issue of likelihood
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`of confusion in this opposition. When the standards are different, issue preclusion does not
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`arise.
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`The issue in the federal court litigation was whether Reckitt’s use of the trademark
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`“MINI MELTS” in the marketplace created a likelihood of confusion. Reckitt argued, and
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`the trial court found, that Reckitt marketed its products with the term “MUCINEX MINI-
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`MELTS.” The litigation therefore decided the issue of whether use of the term
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`“MUCINEX MINI-MELTS” and other trade dress on Reckitt’s drug1 created a likelihood
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`of confusion with the ice cream2 trademark “MINI MELTS®”. The answer was no. But
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`Reckitt did not apply for a trademark on the term “MUCINEX MINI-MELTS.” Rather,
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`Reckitt applied for a trademark on the terms “MINI-MELTS” and “MINIMELTS.” If
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`Reckitt is granted these trademarks, Reckitt will not be required to use the term
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`“MUCINEX” with the terms “MINI-MELTS” or “MINIMELTS” on its drug.
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`The issue in this opposition therefore is whether Reckitt’s use of the terms “MINI-
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`MELTS” or “MINIMELTS” will create a likelihood of confusion with the trademark
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`“MINI MELTS®.” Since that issue was not decided in the case below, the judgment in the
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`litigation does not act as a bar in this opposition under the doctrine of issue preclusion.
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`3.
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`Claim Preclusion - Reckitt cites the case of Jet, Inc. v. Sewage Aeration Systems,
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`223 F.3d 1360 (Fed. Cir. 2000) in support of its argument for res judicata. In Jet, the
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`1 MINI-MELTS drug consists of small, colorful, flavorful, free flowing particles that are
`marketed for children.
`2 MINI MELTS ice cream consists of small, colorful, flavorful, free flowing particles that
`are marketed for children.
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`2
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`

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`Trademark Trial and Appeal Board (TTAB) dismissed a petition for cancellation of the
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`registered trademark AEROB-A-JET based on claim preclusion. The Federal Circuit held
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`that claim preclusion did not apply and reversed and remanded. The court explained that
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`under the doctrine of claim preclusion "a judgment on the merits in a prior suit bars a
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`second suit involving the same parties or their privies based on the same cause of action."
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`Id. at 1362. (quoting and citing Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979)). The
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`court further explained “a second suit will be barred by claim preclusion if: (1) there is
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`identity of parties (or their privies); (2) there has been an earlier final judgment on the
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`merits of a claim; and (3) the second claim is based on the same set of transactional facts
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`as the first.” Id. The court held there was no dispute as to factors (1) and (2), and the case
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`reduced to an analysis of the transactional facts involved in the two causes of action.
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`
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`The court listed the operative facts underlying a claim for trademark infringement
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`under federal law, and they included “the defendant's use ‘in commerce’ of ‘any
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`reproduction, counterfeit, copy, or colorable imitation’ of the registered mark” (citing 15
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`U.S.C. §§ 114, 115 (Supp. 2000) (establishing trademark infringement and defenses). The
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`court then contrasted the set of facts that underlie a petition for cancellation (or limitation
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`on registration), which include “grounds upon which the mark should not have been
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`registered, which can include that the mark ‘consists or comprises a mark which so
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`resembles a mark registered in the Patent and Trademark office, or a mark or trade name
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`previously used by another and not abandoned, as to be likely . . . to cause confusion, or to
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`cause mistake, or to deceive’". (citing 15 U.S.C. § 1064 (Supp. 2000) (grounds for
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`cancellation), § 1052(d) (Supp. 2000) (limitation on registration)).
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`The court concluded that the “differences in transactional facts conclusively
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`3
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`demonstrates that claim preclusion cannot serve to bar a petition for cancellation based
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`upon an earlier infringement proceeding.” Id. at 1364. And specifically with regard to the
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`“likelihood of confusion” issue the court explained:
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`Indeed, we note that the only common ground between the two causes of
`action appears to be that, in some cases at least, both infringement and
`cancellation will involve a "likelihood of confusion" analysis. But even this
`superficial similarity provides no support for the operation of claim
`preclusion. In the infringement context, the "likelihood of confusion" is
`between the plaintiff's registered mark and the defendant's use of words,
`symbols, etc. (which need not, of course, be registered). See Marketing
`Displays, Inc. v. Traffix Devices, Inc., 200 F.3d 929, 933 (6th Cir. 1999). In
`contrast, in the cancellation context, the "likelihood of confusion" is
`between the respondent's registered mark and a prior-registered trademark
`(which need not be held by the petitioner) or prior use by the petitioner of
`an unregistered mark (such as in advertising or as a trade name) that has
`resulted in establishing a trade identity. See Towers v. Advent Software,
`Inc., 913 F.2d 942, 945-46 (Fed. Cir. 1990). While, as we note below, the
`particular facts of certain cases may allow for the use of issue preclusion to
`bar relitigation of the "likelihood of confusion" question, the overall
`transactional facts are simply too distinct to allow claim preclusion from an
`infringement action to bear on a subsequent cancellation claim. Accord
`Chromalloy Am. Corp. v. Kenneth Gordon (New Orleans), Ltd., 736 F.2d
`694, 697-98, 222 U.S.P.Q. (BNA) 187, 190 (Fed. Cir. 1984) (holding that
`infringement litigation between different marks did not claim preclude later
`petition in opposition to registration).
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`
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`Id. Although Jet involved a cancellation proceeding and not an opposition as in the
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`instant case, it is clear from the court’s analysis and citations that the two proceedings are
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`treated similarly with regard to litigation and claim preclusion. Indeed, in Chromalloy,
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`supra, claim preclusion was denied when the mark before the Board (LADY GORDAN)
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`was not one of the marks involved in the litigation.
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`4.
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`Issue Preclusion – In Jet, the case was remanded to determine the application of
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`issue preclusion. The court stated that the doctrine of issue preclusion requires four
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`factors: “(1) identity of the issues in a prior proceeding; (2) the issues were actually
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`litigated; (3) the determination of the issues was necessary to the resulting judgment; and
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`4
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`(4) the party defending against preclusion had a full and fair opportunity to litigate the
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`issues.” 223 F.3d at 1366. The court continued “[w]ith respect to factor (1)--whether the
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`‘likelihood of confusion’ analysis in an infringement action is the same as that in a
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`cancellation proceeding--we note that this circuit has held that even state court findings of
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`fact relating to the likelihood of confusion between the same marks will allow issue
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`preclusion to operate, if the issues are indeed identical.” (emphasis added) [citing Mother's
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`Restaurant, Inc. v. Mama’s Pizza, Inc., 723 F.2d 1566, 1569 (Fed. Cir. 1983) and Midland
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`Coop., Inc. v. Midland Int'l Corp., 421 F.2d 754 (CCPA 1970) (giving preclusive effect to
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`likelihood of confusion analysis in prior infringement proceedings). Id. The court further
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`stated that the factor (1) “identity of issues” analysis requires “inquiry into the actual facts
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`found and presented in the earlier litigation.” Id. (citing Jim Beam Brands Co. v. Beamish
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`& Crawford Ltd., 937 F.2d 729, 734, 19 U.S.P.Q.2D (BNA) 1352, 1356 (2nd Cir. 1991)).
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`A close examination of these three cited cases, Mother’s Restaurant, Midland Coop, and
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`Jim Beam Brands, reveals that issue preclusion does not apply to the instant case.
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`
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`Reckitt cites Midland Coop., Inc. v. Midland Int’l Corp., 421 F.2d 754 (CCPA
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`1970) in its motion, so we will begin with that case. In Midland, an applicant filed an
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`application to register “MIDLAND” for electric meters. The opposer filed a notice of
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`opposition on the ground of prior use of the identical term “MIDLAND” on, inter alia,
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`various electrical devices. The opposer filed a complaint in federal court and the
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`opposition was suspended. The district court resolved all issues in favor of the
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`applicant/defendant. The opposition then was resumed and the Board held in favor of the
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`applicant on the ground of issue preclusion stating “[w]hile * * * the question of
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`applicant's right to register "MIDLAND" in the United States Patent Office was not before
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`5
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`the court in the civil action and no ruling thereon was therefore made by it, the question of
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`likelihood of confusion in respect to applicant's use of said mark on electric meters and
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`opposer's use thereof on the goods recited in its notice of opposition was fully explored by
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`the court, it being held that the simultaneous use by the parties of the mark on the specified
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`goods would not be likely to cause confusion in trade.” Id. at 756.
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`The district court affirmed the Board, and the Court of Customs and Patent Appeals
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`affirmed the district court on the basis of issue preclusion stating: “The factual allegations
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`relating to [opposer’s] use of MIDLAND for various electrical devices, meters and other
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`goods appearing in the complaint are almost identical to those asserted in the notice of
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`opposition” and “[i]n both instances [opposer] relied on its ownership of a registration
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`covering the trade mark MIDLAND for various petroleum products.” This case stands for
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`the proposition that when the marks being compared are identical in both the opposition
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`and litigation, issue preclusion can arise. This case might have application to the instant
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`case if Reckitt simply used the term “MINI MELTS” to market its drug. But Reckitt used
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`the term “MUCINEX MINI-MELTS.” Therefore, Midland is not applicable to the facts of
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`the instant case, because the terms compared in the litigation and in this opposition are not
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`identical.
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`
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`In the second case, Mother's Restaurant, Inc. v. Mama’s Pizza, Inc., Mama’s Pizza
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`(Mama’s) petitioned to cancel the registered service mark MOTHER’S PIZZA PARLOUR
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`held by Mother’s Restaurant (MRI) on the basis that it was confusing similar to its own
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`service mark MAMA’S PIZZA. The PTO proceedings were suspended pending related
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`Texas state court litigation. In the litigation, the Texas court entered final judgment that
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`the trademark MOTHER’S PIZZA PARLOUR & SPAGHETTI HOUSE was not
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`6
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`deceptively similar to the trademark MAMA’S PIZZA. The Texas court also entered
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`findings of fact and conclusions of law that, inter alia, the service mark “MOTHER’S
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`PIZZA PARLOUR” was confusingly similar to the service mark “MAMA’S PIZZA” and
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`that Mama’s Pizza failed to prove that MRI was going to use the name “MOTHER’S
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`PIZZA PARLOUR” in the operation of a business in Texas. Neither party appealed the
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`judgment.
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`Following the litigation, the Board granted Mama’s motion for summary judgment
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`based in part on the preclusive effect of the state court finding of fact that the service mark
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`“MOTHER’S PIZZA PARLOUR” was confusingly similar to the service mark “MAMA’S
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`PIZZA”. The Federal Circuit affirmed, holding “[a]ll the essential requirements for the
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`application of issue preclusion have been met: (1) the issues to be concluded are identical
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`to those involved in the prior action; (2) in that action the issues were raised and "actually
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`litigated"; (3) the determination of those issues in the prior action was necessary and
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`essential to the resulting judgment; and (4) the party precluded (MRI) was fully
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`represented in the prior action.” Id. at 1569.
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`With regard to factor (1) identity of issues, the court held this requirement was
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`plainly met because the issue at the Board was the confusing similarity between MAMA’s
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`PIZZA and MOTHER’S PIZZA PARLOUR and the Texas court issued a finding of fact
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`explicitly dealing with this issue. With regard to factor (2) “actually litigated,” the court
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`stated “[b]oth the issue of confusing similarity between the MAMA'S PIZZA and
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`MOTHER'S PIZZA PARLOUR marks and the issue of prior use were "actually litigated"
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`in the Texas court, within the meaning of that requirement of the doctrine of issue
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`preclusion.” Id. at 570. The court explained that “[i]n their pleadings before the Texas
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`court, the parties distinctly raised the issues of confusion between their marks and of prior
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`use” and “[t]he record of the four-day trial in the Texas court reflects that the court heard
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`extensive testimony on both issues.”
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`MRI argued that the issue of confusing similarity between MAMA’s PIZZA and
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`MOTHER’S PIZZA PARLOUR was not “actually litigated” because the issue litigated
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`was the alleged confusion between MAMA’s PIZZA and MOTHER’S PIZZA PARLOUR
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`& SPAGHETTI HOUSE. But the court rejected that argument, stating “[t]he record of the
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`state court proceedings discloses no testimony on the issue of confusion between a
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`restaurant specifically called MOTHER'S PIZZA PARLOUR & SPAGHETTI HOUSE
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`and a Mama's restaurant.” Id.
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`Regarding factor (3) “necessary to the judgment,” MRI argued that “the court's
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`findings of fact concerning confusing similarity between the marks MOTHER'S PIZZA
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`PARLOUR and MAMA'S PIZZA were not necessary to the court's judgment.” The court
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`disagreed, holding that “the determination of confusion between MOTHER'S PIZZA
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`PARLOUR and MAMA'S PIZZA was necessary to the state court's final judgment with
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`respect to the counterclaim.” The counterclaim had been filed by Mother’s Restaurants of
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`Texas, Inc. (MRT) (a licensee of MRI) requesting that if the court found confusion
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`between the two marks, to enjoin Mama’s from using the mark on businesses established
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`after a certain period of time. The court denied the relief requested in the counterclaim
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`stating in conclusion of law 2 “[d]efendant Mother's Restaurants of Texas, Inc. is not
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`entitled to enjoin plaintiffs Mama's Pizza, Inc. and Mama's Pizza Franchise Company from
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`using the service mark "Mama's Pizza" because said service mark has been in continuous
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`use in commerce by Mama's Pizza, Inc. and its predecessors in title since October of 1968,
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`8
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`which is prior to any use date established by defendant Mother's Restaurants of Texas, Inc.
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`regarding United States Registration No. 1,040,322 for "Mother's Pizza Parlour". Id. at
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`1569. Regarding factor (4), the court held that MRI was subject to issue preclusion by the
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`court’s judgment against MRT due to MRI’s close relationship with MRT.
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`When the court’s analytical framework is applied to the facts of the instant case, it
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`is plain that issue preclusion does not exist. First, regarding factor (1), the issue in this
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`opposition is not identical to the issue decided in the litigation. The issue in this opposition
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`is whether the marks “MINI-MELTS” and “MINIMELTS” as used on a drug creates a
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`likelihood of confusion with the ice cream trademark MINI MELTS®. The issue decided
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`in the litigation was that Reckitt’s use of the term “MUCINEX MINI-MELTS” for its drug
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`did not create a likelihood of confusion with the ice cream trademark MINI MELTS®.
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`In Mother’s Restaurant, supra, the court made an explicit finding of fact regarding
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`the confusing similarity between MAMA’s PIZZA and MOTHER’S PIZZA PARLOUR.
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`In this case, there is no such finding regarding the confusing similarity or lack thereof
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`between MINI MELTS® for ice cream and MINI-MELTS or MINIMELTS for drugs.
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`Rather, the infringement question answered by the jury in the negative asked (Question 2)
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`“[d]id Plaintiff prove by a preponderance of the evidence that Defendant used Plaintiff’s
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`trademark in a manner likely to cause confusion, mistake, or deceit: (a) of typical or
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`potential purchasers as to Defendant’s goods’ source, affiliation, sponsorship, or other
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`association; (b) as to the origin, sponsorship, or approval of Defendant’s goods; or (c) as to
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`the affiliation, connection, or association of Defendant with Plaintiff? If your answer to
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`either (a), (b), or (c) is “Yes”, answer “Yes”. Otherwise, answer “No”. Answer “Yes” or
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`“No”. Answer: No. (Verdict is Exhibit 1).
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`9
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`This question did not ask about the likelihood of confusion when the trademark
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`MINI MELTS® for ice cream was compared with the marks MINI-MELTS or
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`MINIMELTS for drugs. Rather, the question asked about Defendant’s use of Plaintiff’s
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`trademark and the jury instructions regarding similarity of the marks instructed the jury to
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`consider similarity in the context of how the marks are encountered by consumers in the
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`marketplace. The jury instruction (page 24) was: (Jury Instruction is Exhibit 2).
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`2. Similarity of Design Between the Marks – If the overall impression
`created by Plaintiff’s trademark in the marketplace is similar to that created
`by Defendant’s trademark in appearance, sound, or meaning, there is a
`greater chance that consumers are likely to be confused by Defendant’s use
`of a similar mark. The relevant inquiry is whether, under the circumstances
`of the use, the marks are sufficiently similar that prospective purchasers are
`likely to believe that the two users are somehow associated. This factor is
`to be examined in the context of how the marks are encountered by
`consumers in the marketplace and the circumstances surrounding the
`purchase.
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`(emphasis added). As discussed below, Defendant’s consistent position throughout
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`trial – from opening statement through witness testimony and counsel’s argument to the
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`court and jury was that in the marketplace Defendant only used the term MINI-MELTS as
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`part of the larger term “MUCINEX MINI-MELTS.”
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`Further, in the dilution portion of the case tried to the court, the court made the
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`following findings of fact and conclusions of law:
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`Findings of Fact: (Findings of Fact and Conclusions of Law are Exhibit 3).
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`2.
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`Defendant Reckitt Benckiser, Inc. is a Delaware corporation.
`Defendant markets cough and cold medicine under the brand name
`and trademark Mucinex®. Mucinex® cough and cold medicine for
`children is marketed in a liquid form called “Children’s Mucinex
`Liquid” and in granulated form called “Children’s Mucinex Mini-
`Melts.” The granular form comprises miniature granules that are
`coated with a flavoring that melts in the child’s mouth.
`
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`14. Defendant markets its granulated cough and cold medicine as
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`10
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`Children’s Mucinex Mini-Melts, which is commonly sold in drug
`stores in single-dose granule packets.
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`18. Defendant’s Children’s Mucinex Mini-Melts cough and cold
`medicine and the related advertising campaign have not injured and
`are not likely to injure Plaintiff’s business reputation in any way.
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`Conclusions of Law:
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`8.
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`Defendant’s marketing of its cough and cold medicine Children’s
`Mucinex Mini-Melts has not and is not likely to tarnish Plaintiff’s
`reputation.
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`(emphasis added).
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`It therefore is clear that issue preclusion factor (1) is not met because there was no
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`finding or conclusion in the litigation regarding the likelihood of confusion between MINI
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`MELTS® for ice cream and MINI-MELTS or MINIMELTS for drugs in the abstract
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`outside of the context of the term “MUCINEX.” Indeed, the distinction was drawn clearly
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`by Reckitt itself in contention 30 in the pretrial order, as follows: “Reckitt contends that
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`it is easier for a USPTO examining attorney to reject a registration application of a mark
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`based upon a likelihood of confusion with a registered mark because examining attorneys
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`are not allowed to take into consideration market realities such as how the mark is actually
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`used with other words, with logos, with trade dress and with other distinguishing aspects
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`that are considered in an infringement action in court.” (Pretrial Order is Exhibit 4).
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`Regarding factor (2), in Mother’s Restaurant, supra, the court found the “actually
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`litigated” requirement was present because “[i]n their pleadings before the Texas court, the
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`parties distinctly raised the issues of confusion between their marks and of prior use” and
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`“[t]he record of the four-day trial in the Texas court reflects that the court heard extensive
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`testimony on both issues.” Just the opposite is true in this case. In the pretrial order, the
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`final pleading before trial, Defendant Reckitt contended:
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`11
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`27. Reckitt contends that there is no similarity between Plaintiff’s Mini
`Melts ice cream and Reckitt’s Mucinex Mini Melts for cough and
`colds. Plaintiff uses its Mini Melts ice cream mark in conjunction
`with its design utilizing small bits of ice cream and the phrase The
`Ice Cream Dream. Plaintiff utilizes a composite mark on all product
`packaging, equipment, business letterhead and on any other object
`that identifies the Plaintiff. (page 78).
`
`
`28. Reckitt uses its Mucinex Mini Melts mark in commerce on a line of
`Mucinex children’s pharmaceutical expectorants. In addition,
`its Mucinex Mini Melts mark with a design
`Reckitt used
`spokesvillian character Jr. Mucus. Reckitt uses the composite mark
`Mucinex Mini Melts. The dominant portion of Reckitt mark is
`Mucinex. Further, Reckitt uses the mark Mucinex in connection
`with a descriptive mark, Mini Melts, that is descriptive and would
`not be regarded by purchasers as an indicia of source. Consequently,
`even a cursory review of the marks, as consumers encounter the
`marks in the marketplace, reveals that there is no similarity in sight,
`sound or meaning between Plaintiff’s composite Mini Melts ice
`cream and Reckitt’s composite Mucinex Mini Melts. (Page 78).
`
`
`29. Reckitt contends that the similarity of a mark is determined by
`considering the mark as a whole and the analysis does not allow for
`a piecemeal dissection of the marks. (Page 78).
`
`
`30. Reckitt contends that it is easier for a USPTO examining attorney to
`reject a registration application of a mark based upon a likelihood of
`confusion with a registered mark because examining attorneys are
`not allowed to take into consideration market realities such as how
`the mark is actually used with other words, with logos, with trade
`dress and with other distinguishing aspects that are considered in an
`infringement action in court. (Page 78-79).
`
`
`31. Reckitt contends that Plaintiff has deceptively carved out a portion
`of Reckitt’s Mucinex Mini Melts and dissected Reckitt’s Mucinex
`Mini Melts to eliminate the dominant portion, i.e the Mucinex brand
`name, and the trade dress encountered by the consuming public.
`(Page 79)
`
`
`47. Reckitt’s use in commerce of Mucinex Mini Melts is below: (Page
`82)
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`
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`12
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`48. Reckitt’s Mini Melts mark is used as a secondary mark in
`conjunction with Reckitt’s Mucinex trademark. Reckitt first used the
`mark Mini Melts in March 2006. Reckitt sells its Mucinex Mini
`Melts in wholesale and retail stores. (Page 83).
`
`
`67. Reckitt came up with Mucinex Mini Melts for cough and cold
`medicine because Mucinex is the brand name and because Mini
`Melts accurately and fairly describes the nature of the miniature
`granules of the cough and cold medicine that immediately begin to
`melt in a person’s mouth when taken. (Page 85).
`
`
`69. Reckitt contends that the descriptor Mini Melts used as a component
`of Mucinex Mini Melts aptly and fairly describes the miniature
`granules that begin melting as soon as they are poured onto the
`child’s tongue. (Page 86).
`
`
`83. Reckitt hired an expert to conduct two consumer surveys to
`determine whether there was any likelihood of confusion as to the
`source, affiliation or sponsorship between Mucinex Mini Melts
`versus Plaintiff’s Mini Melts ice cream. (Page 87).
`
`
`86. Reckitt conducted a consumer survey to determine whether there
`was any likelihood of confusion as to the source, affiliation or
`sponsorship between the Plaintiff’s Mini Melts ice cream and
`Reckitt’s Mucinex Mini Melts cough and cold medicine. (Page 88).
`
`
`153. Reckitt contends that its Mucinex Mini Melts cough and cold
`medicine does not infringe any rights Plaintiff may have in its Mini
`Melts ice cream because there is no likelihood that people would
`believe that there is a connection between Mucinex Mini Melts
`cough and cold medicine and Mini Melts for cryogenically-frozen
`ice cream. (Page 98).
`
`
`235. Reckitt contends that certainly, no one associated “Mini Melts” with
`cough and cold medicine, as Reckitt’s product is known as
`“Mucinex Mini Melts,” not “Mini Melts,” a point that Plaintiff
`continues to ignore. (Page 114).
`
`13
`
`

`
`247. A side by side comparison of the two marks in question, in the
`context of how consumers encounter the marks in the marketplace,
`illustrates the difference in sight, sound and meaning: (Page 118).
`
`
`
`
`
`
`
`Contested Issues of Fact by Reckitt:
`
`16. Whether Defendant commercially used the term Mucinex Mini
`Melts for cough and cold medicine without the consent of the
`Plaintiff and in a manner that was likely to cause confusion among
`ordinary purchasers as to the source of the product. (Page 127).
`
`
`(emphasis added).
`
`With regard to the record of the trial in this case, in voir dire and opening
`
`statement, Reckitt's counsel stated as follows: (Portions of Transcript are Exhibit 5).
`
`DAY ONE
`
`Voir Dire – Siebman
`
`Page 46
`
`MR. SIEBMAN: May it please the Court.
`8 Ladies and gentlemen, my name is Clyde Siebman and I'm
`9 a lawyer that represents the Reckitt Benckiser company. The
`10 big issue that was totally overlooked by my opposing counsel
`11 was the fact that Ms. Winters was right. This case is about
`12 Mucinex. He didn't mention the word Mucinex in -- anywhere
`13 in his opening or comments to you or anywhere in his
`14 questions to you because there is absolutely no way anybody
`15 is going to be reasonably confused between Mucinex cold
`16 medicine and ice cream.
`
`
`
`14
`
`

`
`Page 48
`
` 7
`
` MR. SIEBMAN: Mucinex is a medicine manufactured --
`8 originally manufactured by Adams Respiratory. It is now
`9 Reckitt Benckiser that -- that has the Mucinex product, and
`10 it's not called Mini Melts. It's called Mucinex.
`
`Page 52
`
`14 You will never see Mini Melts standing alone by itself,
`15 and you will also only see -- what will jump out at you is
`16 going to be the Mucinex. What jumps out at you on the Mini
`17 Melts box is the Mucinex and Mr. Mucus. I think you
`18 referred to him as Mr. Mucinex. I assume that this is
`19 probably what you saw, because you definitely connected it
`20 to Mucinex and not ice cream.
`
`Opening Statement - Siebman
`
`Page 110
`
` 1
`
` not very much recollection about it. In fact, I don't
`2 think -- there was only two people that really recognized
`3 Mini Melts medicine. But then when you say Mucinex, there
`4 was only one or two people that had never heard about it. I
`5 mean everybody has heard about Mucinex and very few people
`6 have heard about Mini Melts medicine.
`7 The reason for that is that the brand is Mucinex. The
`8 "Mini Melts" is a descriptor, just like Mucinex liquid is a
`9 descriptor of the type of Mucinex. Bilayer tablets is a
`10 descriptor of the form that that medication takes. The
`11 nasal spray, Mucinex nasal spray is a descriptor of the type
`12 of nasal spray. The "Mini Melts" aspect of it describes the
`13 form in which the medication will take.
`14 And, Your Honor, if I may grab a product.
`15 You're going to learn through the trial that you
`16 compare the entire composite trademark, and the composite
`17 trademark in this is not just the Mini Melts. The Mucinex
`18 always appears bigger. You saw that in the advertisement
`19 that Plaintiff played in the opening. The Mucinex is the --
`20 is the brand. That's what is led with. Then the Mini Melts
`21 is always smaller and it's always in the context of the
`22 Mucinex brand.
`
`
`
`15
`
`

`
`Page 111
`
`18 As I pointed out previously, the most prominent word on
`19 the Mucinex Mini Melt cough and cold medicine is the word
`20 Mucinex. Even Mr. Mucus is more prominent than the word
`21 Mini Melt. And I think that is borne out in the fact that
`22 substantially more people are familiar with the term Mucinex
`23 than they are with the term Mini Melts in the context of the
`24 medicine.
`
`
`The relevant testimony during trial was as follows:
`
`DAY THREE
`
`Argument - Stein
`
`Page 183
`
` 4
`
` MR. STEIN: Thank you, Your Honor. The Defendant
`5 moves for an involuntary dismissal, directed verdict on the
`6 following grounds.
`7 The evidence presented in the Plaintiff's case is
`8 legally insufficient to establish confusing similarity
`9 between Mini Melts for ice cream and Mini Melts for Mucinex
`10 cough and cold medicine.
`
`Page 186
`
` 4
`
` The factors for determining confusing similarity, I've
`5 talked about the strength of the mark, the fact that it has
`6 been highly diluted already. But when looking at the
`7 composite nature of how we use Mini Melts always in
`8 combination with Mucinex and with very distinctive packaging
`9 that doesn't look like anything similar to the packaging of
`10 Mini Melts ice cream, that no reasonable juror would
`11 conclude that there is any confusing similarity between the
`12 two.
`
`DAY FOUR
`
`Direct–X - Arnett
`
`Page 19
`
` 4
`
` Q Okay. And so during the name selection process what
`5 made you decide on Mucinex Mini Melts as the name for the
`
`16
`
`

`
`6 brand of the granular form of Guaifenesin that would be
`7 marketed to children?
`8 A Mucinex Mini Melts was the best name of everything that
`9 we had come up with for describing the small granular form
`10 and describing the way that the product melted on a child's
`11 tongue when a parent poured it onto the child's tongue.
`12 And this wa