Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA526920
`ESTTA Tracking number:
`03/15/2013
`
`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
`Motion to Compel Discovery
`Robert G. Oake, Jr.
`rgo@oake.com
`/Robert G. Oake, Jr./
`03/15/2013
`Motion to Compel.pdf ( 19 pages )(167518 bytes )
`Declaration - Brean.pdf ( 1 page )(277902 bytes )
`Reckitt's Response to Interrogatories TTAB.pdf ( 15 pages )(46282 bytes )
`Reckitt Response to Mini Melts Document Requests TTAB.pdf ( 25 pages
`)(47479 bytes )
`Transcript.pdf ( 45 pages )(1993291 bytes )
`P9.pdf ( 23 pages )(1039329 bytes )
`P23.pdf ( 2 pages )(48293 bytes )
`P34.pdf ( 7 pages )(574828 bytes )
`P44.pdf ( 7 pages )(409792 bytes )
`P47.pdf ( 22 pages )(1348737 bytes )
`P49.pdf ( 2 pages )(189427 bytes )
`P62.pdf ( 23 pages )(1823179 bytes )
`P63.pdf ( 5 pages )(138052 bytes )
`P79.pdf ( 8 pages )(2937180 bytes )
`P418.pdf ( 4 pages )(223899 bytes )
`P419.pdf ( 1 page )(103533 bytes )
`P420.pdf ( 3 pages )(188733 bytes )
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Mini Melts, Inc.,
`Opposer,
`
`
`
`
`
`
`
`
`
`
`v.
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`
`
`
`
`
`
`Reckitt Benckiser LLC,
`
`
`
`
`
`
`
`
`
`Applicant.
`
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`
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`§
`§
`§
`§
`§ Opposition No. 91/173,963
`§
`§
`§
`
`OPPOSER’S MOTION TO COMPEL ANSWERS TO INTERROGATORIES AND
`PRODUCTION OF DOCUMENTS RESPONSIVE TO REQUESTS FOR PRODUCTION
`
`Pursuant to Fed. R. Civ. P. 37 and TMEP Section 523 et seq., Opposer Mini Melts, Inc.
`
`moves to compel answers to interrogatories and documents responsive to requests for
`
`production, respectfully showing as follows:
`
`1.
`
`Timeliness of Motion: This motion is timely because the parties stipulated that
`
`discovery closes on March 19, 2013.
`
`2.
`
` Summary of Motion: This Board should overrule Applicant's relevancy and
`
`"hypothetical" objections because
`
`the
`
`information and documents requested concern
`
`pharmaceutical safety considerations, which is a relevant issue in this Opposition. Applicant
`
`intends to use the marks MINIMELTS and MINI-MELTS on "use only as directed"
`
`pharmaceutical products1 that can have serious side effects when consumed. The pharmaceutical
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`products are small, flavorful, colorful, free-flowing particles that are marketed to be consumed
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`primarily by children. Opposer’s MINI MELTS novelty ice cream goods are small, flavorful,
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`colorful, free-flowing particles that are marketed to be consumed primarily by children. Opposer
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`opposes Applicant's marks because, inter alia, Applicant's Marks [MINIMELTS and MINI-
`
`
`1 The Goods and Services listed on the applications for MINIMELTS and MINI-MELTS are "IC
`005. US 006 018 044 046 051 052. G & S: Pharmaceutical preparations for use as an
`expectorant."
`
`1
`
`

`
`MELTS] so resemble Opposer's MINI MELTS trademark as to be likely, when used on or in
`
`connection with the goods of Applicant, to cause confusion, mistake, or deception within the
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`meaning of Section 2(d) of the Lanham Act.
`
`
`
`When making a determination whether a mark is likely to cause confusion, mistake, or
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`deception within the meaning of Section 2(d) of the Lanham Act and the mark involves a
`
`pharmaceutical product, this Board considers it relevant whether confusion as to source or
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`product can lead to physically harmful results (numerous cases cited below). The subject
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`interrogatories and requests for production all concern in some manner the issue of whether
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`likelihood of confusion as to source or product between MINI MELTS ice cream and
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`MINIMELTS/MINI-MELTS drugs have led, or can lead, to physically harmful results.
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`Therefore, the interrogatories and requests for production are relevant to this opposition and
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`Applicant should be compelled to answer the subject interrogatories and requests for production.
`
`3.
`
`Subject Interrogatories and Objections/Answers: (Copy attached).
`
`INTERROGATORY NO. 16 - Describe in detail any instances or complaints known to you
`where a person took more than the recommended dosage of Mucinex mini-melts and identify all
`people and documents related to each such occurrence.
`
`Answer: Reckitt objects to this request because it is irrelevant and not likely to lead to the
`discovery of admissible evidence.
`
`INTERROGATORY NO. 17 - Describe in detail any instances, reports, or complaints known to
`you where a child consumed Mucinex mini-melts and the consuming child or anyone else
`mentioned or referred to Mini Melts Ice Cream in any communication to anyone concerning the
`child’s consumption of Mucinex mini-melts.
`
`Answer: Reckitt objects to this request because it is irrelevant and not likely to lead to the
`discovery of admissible evidence.
`
`INTERROGATORY NO. 18 - If a child aged two to six years old consumed an entire box of
`Mucinex mini-melts at one time, what symptoms would the child likely exhibit and what dangers
`would there be to the child?
`
`
`
`2
`
`

`
`Answer: Reckitt objects to this request because it is irrelevant, hypothetical and not likely to
`lead to the discovery of admissible evidence.
`
`INTERROGATORY NO. 19 - Do you believe there are any hazards or dangers in using the
`name Mini-Melts for a “use only as directed” medicinal product for children when a novelty ice
`cream product that is marketed to, and consumed primarily by, children is named “Mini Melts,”
`and explain why or why not.
`
`Answer: Reckitt objects to this request because it is irrelevant, hypothetical and not likely to lead
`to the discovery of admissible evidence.
`
`INTERROGATORY NO. 20 - If you are aware that any other medicinal product, either
`prescription or over the counter, has been sold by using a name or mark that is the same as a
`registered trademark on a candy, ice cream, or other consumable novelty product, state what the
`name of the medicinal product is and what name or mark is used.
`
`Answer: Reckitt objects to this request because it is irrelevant, hypothetical and not likely to lead
`to the discovery of admissible evidence.
`
`Note that Applicant Reckitt makes no effort to answer these interrogatories, but rather
`
`
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`objects on the basis of relevancy.
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`4.
`
`Subject Requests for Production and Objections/Responses: (Copy attached).
`
`
`
`REQUEST NO. 16 - All documents referring or relating to any instances or complaints known to
`you where a person took more than the recommended dosage of Mucinex mini-melts.
`
`RESPONSE: Reckitt objects to this Request to the extent it seeks to impose upon Reckitt any
`obligation greater than that imposed by the applicable rules. Further, Reckitt objects to this
`request as irrelevant and not likely to lead to the admissibility of discoverable evidence.
`
`REQUEST NO. 17 - All documents referring or relating to any instances, reports, or complaints
`known to you where a child consumed Mucinex mini-melts and the consuming child or anyone
`else mentioned or referred to Mini Melts Ice Cream in any communication to anyone concerning
`the child’s consumption of Mucinex mini-melts.
`
`RESPONSE: Reckitt objects to this Request to the extent it seeks to impose upon Reckitt any
`obligation greater than that imposed by the applicable rules. Further, Reckitt objects to this
`request as irrelevant and not likely to lead to the admissibility of discoverable evidence.
`
`REQUEST NO. 18 - All documents referring or relating to the symptoms a child aged two to six
`years old would likely exhibit if the child consumed an entire box of Mucinex mini-melts at one
`time.
`
`3
`
`
`
`

`
`RESPONSE: Reckitt objects to this Request to the extent it seeks to impose upon Reckitt any
`obligation greater than that imposed by the applicable rules. Further, Reckitt objects to this
`request as irrelevant, hypothetical and not likely to lead to the admissibility of discoverable
`evidence.
`
`Note that Applicant Reckitt does not state "no documents exist" that are responsive to the
`
`
`
`requests as Applicant did for other requests. Rather, Applicant object on the basis of relevancy.
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`5.
`
`Statement of Facts - Opposer Mini Melts, Inc. manufactures and sells cryogenically frozen
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`pieces of ice cream in the United States under the federally registered trademark MINI MELTS®.
`
`(Tr. 22:141; Ex. P79, pp.1,8).2 The United States distribution network for Mini Melts consists of
`
`several hundred customer/distributors, including the following account types: (1) leisure (zoos,
`
`aquariums, arenas); (2) parks (theme parks, water parks); (3) family entertainment centers
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`(bowling, skating, mini-golf); (4) vending; (5) retail (malls, free-standing); (6) military; (7)
`
`special events (NASCAR, cheerleading competitions); (8) fairs (carnivals, flea markets,
`
`festivals); (9) other (colleges, hotels); and (10) dealers (those who sell to others). (Tr. 22:141;
`
`Ex. P63).
`
`Mini Melts ice cream is sold in at least 35-40 of the United States. (Tr. 22:154). Mini Melts
`
`has been sold at, for example, Texas Motor Speedway, Texas Stadium, the Hawaiian Falls water
`
`parks in Dallas, (Tr. 22:154), the Bronx Zoo in New York, the Central Park Zoo in Manhattan, the
`
`New York Aquarium in Brooklyn, Wet and Wild in Orlando, the Columbus Zoo in Columbus,
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`Ohio, Phillips Arena in Atlanta, Dollywood Theme Park in Pigeon Forge, Tennessee, and at many
`
`large shopping malls in the United States. (Tr. 23:117-118; Ex. P418). In addition, the vending
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`operation is an important part of Mini Melts sales (Tr. 22:143), and one large distributor has
`
`approximately 150 vending machines placed in various locations. (Tr. 22:149).
`
`
`2
`The trial occurred on June 19, 2009 and June 22 - 25, 2009. The parenthetical (Tr.
`22:141) means Transcript, June 22, Page 141.
`
`4
`
`

`
`In 2011 and 2012, wholesale Mini Melts ice cream sales by Mini Melts USA in the
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`contiguous United States were made to 189 distributors, each of whom serve a number of
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`customers and venues in their geographic area. (Declaration of Lawrence Brean, ¶3). Mini Melts
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`ice cream currently is sold in vending machines in 160 Wal-Mart stores. (Declaration of
`
`Lawrence Brean, ¶4).
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`Mini Melts ice cream typically is sold from a serving freezer, cart, or vending machine, each
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`of which prominently displays the MINI MELTS® trademark. (Tr. 23:119-120). Mini Melts’ total
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`ice cream sales for the years 2005, 2006, and 2007 were $1,427,000, $2,654,000, and $2,725,000,
`
`respectively. (Tr. 22:150-152). For the combined years 2011 and 2012, total sales of Mini Melts ice
`
`cream by Mini Melts, USA, Inc. in the contiguous United States was $6,019,780. (Declaration of
`
`Lawrence Brean, ¶2). 3
`
`Mini Melts advertises in trade magazines, Entrepreneur Magazine (and affiliate magazines),
`
`and in franchise magazines. (Tr. 22:154). Mini Melts distributes a brochure that describes its ice
`
`cream product, includes some of its locations, and depicts some of its equipment. (Tr. 22:141-143;
`
`Ex. P79). Mini Melts also advertises with Google and otherwise over the Internet. (Tr. 22:154).
`
`The website address for Mini Melts is minimelts.com. (Ex. P79. p.1).
`
`Mini Melts enters into agreements with customer/distributors, and the agreements grant
`
`the customer/distributor the right to use the MINI MELTS® trademark. (Tr. 23:124-125; Ex. P62,
`
`p.6-11). The customer/distributors of Mini Melts do media advertising such as radio advertising,
`
`local print advertising, coupons, and they are free to develop their own advertising strategies. (Tr.
`
`
`3 Mini Melts USA, Inc. currently manufactures and sells Mini Melts ice cream in the contiguous
`United States under exclusive license from Mini Melts, Inc. (Declaration of Lawrence Brean, ¶1).
`The basis for the sales information before 2009 is the documentation and testimony admitted
`during the federal court trial that occurred in 2009. The basis for the sales and other customer
`information after 2009 is the declaration of Lawrence Brean, Vice President of Operations for
`Mini Melts USA, Inc.
`
`5
`
`

`
`22:155). The MINI MELTS® trademark is well known where MINI MELTS® ice cream is sold due
`
`to Mini Melts’ marketing efforts and the marketing efforts of its customer/distributors. (Tr. 22:174).
`
`According to Reckitt’s trademark survey expert James T. Berger, (Tr. 24:113, 114), 42% of those he
`
`interviewed had heard of Mini Melts ice cream. (Tr. 24:153). Berger testified that according to his
`
`survey results, Mini Melts ice cream had “a pretty high recognition in the marketplace.” (Tr.
`
`24:153). Mini Melts has spent a considerable amount of time, money and effort developing the
`
`MINI MELTS® name, brand, and image, and Mini Melts wants the MINI MELTS® name to be
`
`associated with a fun and delicious premium ice cream product. (Tr. 22:165).
`
`After Mini Melts established trademark rights in the term MINI MELTS®, Reckitt began
`
`to use the term “Mini-Melts” in connection with the sale of its Children’s Mucinex and Junior
`
`Strength Mucinex products. (Exs. P23, P34, P49). For example, the term “Mini-Melts” is
`
`displayed on the box Reckitt uses to package its Children’s Mucinex and Junior Strength Mucinex
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`products (Ex. P419), and the term “Mini-Melts” is used at least eight times in text in Reckitt’s web
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`site for its Mucinex product (www.mucinex.com) (Ex. P23). Reckitt’s web site for its Mucinex
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`product also states:
`
`When your child's chest is congested, you can help him clear out excess mucus
`with new Children's Mucinex Mini-Melts. Mini-Melts are a unique new form of
`Mucinex designed especially for children. They're great-tasting and fun-to-take.
`You just pour a packet of quick-melting Mini-Melts on your child's tongue, and
`they're easily swallowed. There's no battle to get him to take it. So Mucinex can
`go right to work and break up the mucus that's causing your child's congestion.
`Mini-Melts come in kid-friendly Bubble Gum and Grape flavors. Id. (Ex. P23,
`p.2).
`
`In preparing for trial in federal court on the issue of tarnishment, Mini Melts general
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`manager Bill Mizzell asked Mini Melts retail customers if they would watch short Mucinex Mini
`
`Melts commercials (that included Mr. Mucous) on the computer, look at a print ad on the
`
`computer, and fill out a short three question questionnaire. The three questions were as follows:
`
`6
`
`

`
`QUESTION 1:
`
`Is the image projected by the association of the name MINI MELTS with Mucous and the
`Mucous Characters in the animated commercials and print ad at odds with the image
`projected by the name MINI MELTS to identify an ice cream novelty treat?
`
`Answer: _______ Please explain your answer: (use reverse side if necessary)
`
`QUESTION 2:
`
`Does the use of the name MINI MELTS in the animated commercials and print ad
`portray the name MINI MELTS in an unwholesome or unsavory context likely to evoke
`unflattering thoughts about the MINI MELTS ice cream product?
`
`Answer: _______ Please explain your answer: (use reverse side if necessary)
`
`QUESTION 3:
`
`Does the use of the name MINI MELTS in the animated commercials and print ad reduce
`the MINI MELTS trademark's reputation and standing in your eyes as a wholesome
`identifier of MINI MELTS ice cream products?
`
`Answer: _______ Please explain your answer: (use reverse side if necessary) (Ex. P9).
`
`In the Mini Melts tarnishment questionnaire, every respondent answered “Yes” to at least
`
`
`
`
`
`
`
`
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`one question and many also offered explanations. Some of the respondent’s “Yes” answers were
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`relevant on the issues of confusion and danger to the public, as follows:
`
`Name
`
`
`Dee Brown
`Susan Faluto
`Lindsay Gwynn
`Kelley Vecchitto
`Guy Vecchitto
`Jason Gagahon
`Pat Nizen
`
`Question 1 Question 2 Question 3
`
`
`
`Yes1
`Yes
`Yes
`No2
`No3
`Yes
`Yes4
`Yes5
`No
`Yes6
`Yes
`Yes
`Yes7
`Yes
`Yes
`Yes8
`No
`No
`Yes9
`Yes
`Yes
`
`
`
`Customer Explanations as noted above:
`
`
`1.
`
`2.
`
`If kids see this in medicine cabinet, will think it’s the ice cream product
`(not good)!
`That’s the problem it’s made to look appealing to children, which in turn
`is very dangerous.
`
`7
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`

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`3.
`4.
`
`5.
`
`It only turns me off as a medicine because this is a dangerous comparison.
`Children may think the medicine is candy or ice cream, and this is
`dangerous.
`Mini Melts is a trademark name for ice cream, not children’s medicine and
`[illegible] dangerous.
`Children would confuse medicine for a dessert.
`Children could get them mixed up.
`Little kids might perceive [sic] Mucienex [sic] as ice cream.
`Children may think the medicine is ice cream and overdose.
`
`6.
`7.
`8.
`9.
`
`During voir dire in the federal court trial below, the following occurred:
`
`MR. OAKE: Okay. I think that's good. We have all heard and seen the fake Rolex
`cases where you have a Rolex watch and it's not a real Rolex but has the Rolex
`trademark. That's a typical trademark – they violated the trademark rights and
`they can be shut down for that. But let me also say there is another area of
`trademark law that is equally important and that is prevention of confusion when
`you have different products but there is a relationship between a product where
`people are likely to be confused whether there has been approval of one company
`to the other company using the name or sponsorship or endorsement or affiliation
`or other connection. Those words are in the statute, trademark statute. With me
`having said that, does anybody believe that is not a legitimate purpose of
`trademark law, to also prevent confusion as between different products, where
`there may be confusion as to whether there is endorsement, sponsorship or
`affiliation? Anybody? [Juror No. 3], I don't mean to pick on you, but do you think
`that's a legitimate purpose of trademark law?
`
`JUROR NO. 3: The way I see it or what I'm understanding here is like for the
`trademark for like I guess it's ice cream versus medicine, I feel it could be like a
`conflict there, the reason being they both can be ingested and one will have no
`adverse reactions as opposed to another. Like Mini Melts would be sugar, food, in
`other words. The other one would be medication that could be -- a child could see
`that as candy or something that could cause harm to the child. And that, in my
`opinion, could cause danger to a child and potentially death, so that would be a
`conflict I think.
`
`MR. OAKE: Okay. Thank you, sir. [Juror No. 4], again on the issue of whether
`trademark law legitimately should protect the likelihood of confusion as to
`whether one company approved or sponsored another person's product, how do
`you feel about that?
`
`JUROR NO. 4: I agree with that. I believe in protecting the product that you came
`up with, and I agree with [Juror No. 3], the confusion, if it is two totally separate
`products. I have children so to think that they may be harmed in some way or get
`confused, I agree with that. (emphasis added).
`
`
`8
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`

`
`(Tr. 19:40-42).
`
`The box containing Reckitt’s Mini Melts medicine contains warnings that, inter alia,
`
`state: “Keep out of reach of children. In case of overdose, get medical help or contact a Poison
`
`Control Center right away”; “do not take more than 6 doses in any 24-hour period.” (Ex. P419).
`
`The box has a dosing chart as follows: (Ex. P419).
`
`Age
`adults and children 12 years and over
`children 6 years to under 12 years
`children 4 years to under 6 years
`Children under 4 years
`
`
`Dose
`2 to 4 packets every 4 hours
`1 to 2 packets every 4 hours
`1 packet every 4 hours
`do not use
`
`The box also states: “Easy-to-open packets make dosing a snap! Just tear open at printed
`
`mark, sprinkle entire contents of Mucinex® Mini-Melts™ onto tongue, and swallow”. (Ex.
`
`P419).
`
`In December 2005, Hellebusch, an independent research company, conducted a Qualitative
`
`Research Study on Sprinkles Cough/Cold Medication for Reckitt. In this study, one mother said she
`
`was worried that the medicine would look too much like sugar crystals, which could possible be
`
`misleading to children. (Ex. P44, p.5) Mothers also were concerned that the medicine would taste
`
`so good their children would try to take more than needed. (Ex. P44, p.5,6). Reckitt originally
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`intended to use the name “Sprinkles” or “Crystals” as the name for its children’s granular
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`mucous medicine now called Mini-Melts, but Reckitt did not because Reckitt felt the names
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`sounded too much like candy and that children might be confused. (Tr. 25:81-82). In particular,
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`Reckitt employee Matthew Leung testified he had a discussion with Reckitt employee Marylou
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`Arnett and Reckitt employee Bob Cassall about the concerns of mothers concerning the form of the
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`product. (Tr. 25:81). Mr. Leung testified that Reckitt was thinking about calling the new product
`
`Sprinkles or Pixies, but since it was a drug for children, Reckitt wanted to make sure the medicine
`
`9
`
`

`
`did not sound like a candy and would not be confused with a candy. (Tr. 25:81-82). Ultimately,
`
`Reckitt did not use the names Sprinkles or Pixies.
`
`During the federal court trial, Reckitt’s vice-president in charge of regulatory matters, David
`
`Long, testified that part of the advertising code indicates that it is inappropriate to market over the
`
`counter drugs or advertise over the counter drugs in a way that would suggest they are candy. (Tr.
`
`25:97) He did not know whether Mini Melts ice cream would be considered candy under the code.
`
`(Tr. 25:98).
`
`
`
`MEDWATCH Reports produced by Applicant in the federal court litigation indicate
`
`Reckitt is aware that children are gaining access to Mini Melts medicine, taking it without
`
`parental supervision, and are taking too much. (Ex. P47). These reports state “Father reports his 4
`
`year old son ingested 8 packets of Mucinex (100 mg guaifenesin) granules at the same time because
`
`they tasted good” (p.3); “Mother reported patient took seven packets of Junior Strength Mucinex
`
`(100 mg guaifenesin) Mini-Melts at one time” (p.4); “Mother states her 3 y.o. daughter accidentally
`
`ingested about 3 packets of Mucinex® Mini-Melts™ (100 mg guaifenesin)” (p.5); “Father reported
`
`that the five year-old child took 2 packets of Mucinex Mini-Melts (100 mg guaifenesin) granules
`
`unsupervised and the patient’s previous dose of Mini-Melts was given by the parent 10 hours prior
`
`to the accidental ingestion” (p.6); “Mother reported that her four year-old child accidentally took
`
`approximately 4 packets of Mucinex Mini-Melts (100 mg guaifenesin) granules at once” (p.7);
`
`“Mother reported her son experienced vomiting 30 minutes after taking one Mucinex Mini-Melts
`
`(50 mg guaifenesin) granule packet every 12 hours x 2 doses for congestion. The vomiting
`
`occurred with both doses” (p.10); “Mother reported her son experienced vomiting and rash after
`
`taking one Mucinex Mini-Melts (50 mg guaifenesin) granule packet once for chest and sinus
`
`10
`
`

`
`congestion. The vomiting started 15 minutes after taking the Mucinex and resolved after child
`
`vomited 3 times; the rash is resolving now” (p.15).
`
`
`
`Indeed, Reckitt stipulated that there were adverse incident reports with regard to their
`
`Mucinex Mini Melts product, that children have gotten hold of Mucinex Mini Melts, and that
`
`children have vomited from ingesting Mucinex Mini Melts. (Tr. 25:110, 111).
`
`
`
`Mr. David Long, Reckitt’s vice-president in charge of regulatory matters, testified that
`
`Guaifenesin, an active ingredient in Mucinex Mini Melts, is an ingredient that is included in the
`
`OTC monograph for cough/cold products as an expectorant. (Tr. 25:86). Mr. Long was not aware
`
`of any known drug interactions between Mucinex Mini Melts and any other drugs. (Tr. 25:99, 100).
`
`He testified that he was not interested in knowing about such drug interactions because Mucinex
`
`Mini Melts is covered by the monograph. (Tr. 25:100). However, Mr. Long also testified that the
`
`monograph covering Mucinex Mini Melts was put out in the early 1980s and has not been updated
`
`since. (Tr. 25:101).
`
`
`
`The Drugs.com website page (http://www.drugs.com/cdi/mucinex-cough-mini-melts-
`
`granule-packets.html) related to Mucinex Mini-Melts states in relevant part as follows: (Ex. P420).
`
`Do NOT use Mucinex Cough Mini-Melts Granule Packets if: you are allergic to
`any ingredient in Mucinex Cough Mini-Melts Granule Packets, you are taking or
`have taken a monoamine oxidase inhibitor (MAOI) (eg, selegiline) within the last
`14 days, you are taking a selective serotonin reuptake inhibitor (SSRI) (eg,
`fluoxetine). Contact your doctor or health care provider right away if any of these
`apply to you.
`
`Some MEDICINES MAY INTERACT with Mucinex Cough Mini-Melts Granule
`Packets. Tell your health care provider if you are taking any other medicines,
`especially any of the following: MAOIs (eg, selegiline) and SSRIs (eg,
`fluoxetine) because the risk of serious side effects may be increased by Mucinex
`Cough Mini-Melts Granule Packets. This may not be a complete list of all
`interactions that may occur. Ask your health care provider if Mucinex Cough
`Mini-Melts Granule Packets may interact with other medicines that you take.
`Check with your health care provider before you start, stop, or change the dose of
`any medicine.
`
`11
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`….
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`
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`
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`Mucinex Cough Mini-Melts Granule Packets should not be used in CHILDREN
`younger than 4 years old; safety and effectiveness in these children have not been
`confirmed.
`
`….
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`Seek medical attention right away if any of these SEVERE side effects occur:
`Severe allergic reactions (rash; hives; itching; difficulty breathing; tightness in the
`chest; swelling of the mouth, face, lips, or tongue).
`
`Mr. Long testified that he had no knowledge of the potentially dangerous drug
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`interactions related to Mucinex Cough Mini Melts as listed on the drugs.com website. (Tr.
`
`25:103).4
`
`
`
`6.
`
`Argument - This case presents the only known situation in the United States
`
`where a drug company named a “use only as directed” medicine the same name as the federally
`
`registered trademark of a popular children’s novelty treat.5 There is a good reason that it never
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`has been done before. It is neither safe nor smart. Indeed, Mini Melts believes that Reckitt’s
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`actions create a likelihood of product confusion and danger to the public. During the jury trial in
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`federal court, Tom Mosey, the president and owner of Mini Melts testified that safety was a
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`concern because a child could get access to the Mini Melts medicine and think because of the
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`identity of names that it is Mini Melts ice cream or that they can take as much of it as they want
`
`
`4 The federal court trial primarily involved the issue of whether the phrase "Mucinex Mini-
`Melts" infringed the mark "Mini Melts." The jury found it did not. This Opposition involves
`comparison of the marks "Mini-Melts" and "MiniMelts" with "Mini Melts." The federal court
`trial occurred in a district court located in the Fifth Circuit. Unlike the Third Circuit, Second
`Circuit and the Trademark Trial and Appeal Board, the Fifth Circuit has not yet recognized the
`relevancy of safety considerations in the likelihood of confusion analysis (no case has yet
`addressed it), and the trial court did not permit a jury instruction on the issue of safety
`considerations.
`5
`Both Mr. David Long, Reckitt’s vice president for regulatory affairs, and Tom Mosey,
`Mini Melts’ owner and president, testified that they were not aware of any other situation where
`a use only as directed drug has been named the same name as a children’s novelty treat. (Tr. 25:111;
`2:171).
`
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`to and harm themselves. (Tr. 22:171). As discussed above in the statement of facts, Mr. Mosey's
`
`belief is shared by the two potential jurors in the federal jury trial, numerous respondents in the
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`three question tarnishment survey conducted by Mini Melts, and by Reckitt itself.
`
`
`
`Applicant Reckitt has objected that Opposer Mini Melts' subject interrogatories and
`
`requests for production are irrelevant and hypothetical. Reckitt's objections should be overruled
`
`and this motion to compel should be granted because the issue of safety is relevant to the issue of
`
`likelihood of confusion. When making a determination whether a mark is likely to cause
`
`confusion, mistake, or deception within the meaning of Section 2(d) of the Lanham Act and the
`
`mark involves a pharmaceutical product, this Board considers it relevant whether confusion as to
`
`source or product can lead to physically harmful results. See, e.g., Glenwood Laboratories, Inc.
`
`v. American Home Products Corp., 455 F.2d 1384, 1387 (CCPA 1972) ("[T]he Patent Office
`
`functions as a guardian of the public interest in interposing an obstacle to the use of marks which
`
`when applied to goods to be consumed by the public would be likely to confuse .... Once the
`
`transition is made from pure registration considerations to a consideration of the marks in use, it
`
`follows immediately that the nature of the goods becomes a relevant factor. The goods here
`
`involved being drugs, confusion as to which could unquestionably give rise to serious
`
`consequences, we think due consideration ought properly be given that fact in the determination
`
`of likelihood of confusion."); In re Alvogen IP Co., 2012 TTAB LEXIS 17, *13 (TTAB 2012)
`
`("Our conclusion is consistent with prior decisions which state that, where the marks are used on
`
`pharmaceuticals and confusion as to source can lead to serious consequences, it is extremely
`
`important to avoid that which will cause confusion."); Johnson & Johnson v. Kumar, 2009
`
`TTAB LEXIS 663 (TTAB 2009) ("[I]t it is settled that where the marks are used on
`
`pharmaceutical products and the consequences of confusion can be serious, it is extremely
`
`13
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`

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`important to avoid such confusion."); Alfacell Corporation v. Anticancer, Inc., 2004 TTAB
`
`LEXIS 441, *17, 71 U.S.P.Q.2D (BNA) 1301 (TTAB 2004) ("As a final point, prior decisions
`
`state that, where the marks are used on Pharmaceuticals and confusion as to source can lead to
`
`serious consequences, it is extremely important to avoid that which will cause confusion."); In re
`
`Leiner Health Products Inc., 2000 TTAB LEXIS 614, *4-5 (TTAB 2000) ("in the field of
`
`pharmaceutical products, in view of the possibility of dire consequences which could arise from
`
`taking the wrong medicine, an extra measure of care must be taken to prevent confusion.").
`
`
`
`In In re The Tetra Corp., 2007 TTAB LEXIS 526 (TTAB 2007), this Board quoted
`
`Professor McCarthy as follows:
`
`The tests of confusing similarity are modified when the goods involved are
`medicinal products. Confusion of source or product between medicinal products
`may produce physically harmful results to purchasers and greater protection is
`required than in the ordinary case. If the goods involved are medicinal products
`each with different effects and designed for even subtly different uses, confusion
`among the products caused by similar marks could have disastrous effects. For
`these reasons, it is proper to require a lesser quantum of proof of confusing
`similarity for drugs and medicinal preparations. ... 3 J. McCarthy, McCarthy on
`Trademarks & Unfair Competition (4th ed. 2006) at §23:32.
`
`In Biogen, Inc. v. Altana Pharma AG, 2005 TTAB LEXIS 502 (TTAB 2005), this Board
`
`
`
`cited with approval the Third Circuit's opinion in Kos Pharms., Inc. v. Andrx Corp., 369 F.3d
`
`700 (3d Cir. N.J. 2004). In Kos, the Court stated:
`
`We recently described how the 1962 amendments to the Lanham Act broadened
`the scope of trademark protection beyond the traditional source-of-origin
`confusion. Checkpoint, 269 F.3d at 295 (citing deletion of the phrase "purchasers
`as to the source of origin of such goods or services" from the end of the former
`definition, which now reads "likely to cause confusion, or to cause mistake, or to
`deceive").
`
`The Act is now broad enough to cover "the use of trademarks which are likely to
`cause confusion, mistake, or deception of any kind, not merely of purchasers nor
`simply as to source of origin." Syntex Labs., Inc. v. Norwich Pharmacal Co., 437
`F.2d 566, 568 (2d Cir. 1971).
`
`
`
`I