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
`ESTTA236847
`ESTTA Tracking number:
`09/15/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91178696
`Plaintiff
`AstraZeneca AB
`Keith E. Danish
`Kirkpatrick & Lockhart Preston Gates Ellis LLP
`599 Lexington Avenue
`New York, NY 10022-6030
`UNITED STATES
`nytrademarks@klgates.com,keith.danish@klgates.com
`Motion for Summary Judgment
`Darren W. Saunders
`trademarks@hblaw.com, dsaunders@hblaw.com
`/Darren W. Saunders/
`09/15/2008
`LEXIUM Opp. No. 91178696 - Opp Motion for Summary Judgment.pdf ( 17
`pages )(544881 bytes )
`LEXIUM Opp. No. 91178696 - MCCARTHY Support Declaration - Opposer's
`Motion for SJ.pdf ( 5 pages )(161913 bytes )
`LEXIUM Opp. No. 91178696 - SAUNDERS Support Declaration - Opposer's
`Motion for SJ.pdf ( 2 pages )(42795 bytes )
`LEXIUM Opp. 91178696 - Exhibit A.pdf ( 7 pages )(113076 bytes )
`LEXIUM Opp. 91178696 - Exhibit B.pdf ( 4 pages )(75641 bytes )
`LEXIUM Opp. 91178696 - Exhibit C.pdf ( 5 pages )(120145 bytes )
`LEXIUM Opp. 91178696 - Exhibit D.pdf ( 10 pages )(616219 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 1.pdf ( 11 pages )(2200786 bytes )
`LEXIUM Opp. 91178696 - Exhibit 2.pdf ( 9 pages )(1957860 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 3.pdf ( 8 pages )(2674067 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 4.pdf ( 74 pages )(5425331 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 5 redacted.pdf ( 1 page )(58545 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 6.pdf ( 12 pages )(2696278 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 7.pdf ( 3 pages )(859576 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 8.pdf ( 2 pages )(248584 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 9 redacted.pdf ( 1 page )(61593 bytes )
`LEXIUM Opp. No. 91178696 - Exhibit 10 redacted.pdf ( 1 page )(61890 bytes )
`
`

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`
`
`i i
`
`I hereby certify that the Oppose!“ ‘s Motion fifl’ Summary Judgment is
`being trélnesinitted by cfieclronic maifi to the United States 3? tent and Trademark
`‘ Office on Septelnher I5, 2008.
`
`By‘
`
`
`Atforneyfgi“ bp S
`__”_______,_._i
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Arty‘ Ref No. 3
`
`In re:
`Published:
`Applicant:
`Mark:
`
`Application Ser. No. 77/006,953
`April 3, 2007
`Paradigm Inc.
`LEXEUM
`
`_______________________________________________________"ax
`
`)
`
`) )
`
`) )
`
`) Opposition No. 91178696
`)
`
`) )
`
`) )
`
`Astrazenczca AB,
`
`Paradigm Inc.,
`
`Opposer,
`
`V
`
`Applicant.
`
`....................................................... nnlux
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`SYLl}30i\64623 I\1
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`

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`TABLE OF CONTENTS
`
`I.
`
`H.
`
`PRELIMINARY STATEMENT ....................................................................................... ..l
`
`FACTS ............................................................................................................................... ..2
`
`A.
`
`The NEXTUM® Mark ............................................................................................ ..2
`
`B.
`
`C.
`
`The NEXIUM® Trademark Registration .............................................................. ..4
`
`Paradigm’s LEXIUM Mark ................................................................................... ..5
`
`III.
`
`ARGUMENT ..................................................................................................................... ..6
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Applicable Standard for Summary Judgment ................................................. ..6
`
`Astrazeneca has Standing ...................................................................................... ..6
`
`AstraZeneca’s Priority of Use is Undisputed ......................................................... ..7'
`
`There is a Strong Likelihood of Confusion Between
`NEXIUEK/I® and LEXIUM ..................................................................................... ..7
`
`1.
`
`2.
`
`3.
`
`The NEXlUM® Trademark is Famous ..................................................... ..9
`
`The NBXIUM® and LEXTUM. Marks Are Extremely
`Similar in Sight, Sound and Appearance ................................................. ..1O
`
`The LEXIUM Goods are Closely Related and the Trade
`Channels and Classes of Consumers Overlap .......................................... ..ll
`
`a.
`
`h.
`
`The Goods are Related ................................................................. ..l1
`
`The Goods May Be Marketed In the Same Trade
`Channels to the Same Class of Purchasers .................................. ..l2
`
`4.
`
`There is No Evidence of Dilution by Third Party Marks ......................... ..l3
`
`IV.
`
`CONCLUSION ............................................................................................................ ..l4
`
`I SYLIBG1\646231\l
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`Opposcr, AstraZeneca AB (“Astrazeneca”), hereby moves t.he Trademark Trial. and
`
`Appeal Board, pursuant to Rule 56 of the Federal Rules of Civil Procedure and 37 C.F.R. §
`
`2.127, for summary judgment against Applicant, Paradigm, Inc. (“Paradigm”), on the ground of
`
`likelihood of confusion under Section 2(d) of the Trademark Act for the reasons set forth herein
`
`and in the accompanying declarations and evidence submitted therein.
`
`There are no genuine issues of niateriai fact in dispute and there is a iikelihood of
`
`confusion as a matter of Eaw. AstraZerieca has standing and priority of use and registration. The
`
`respective marks are identical with the exception of the first letter in each mark. The respective
`
`products are both orally ingested preparations used to treat, mitigate, or affect ‘functions of the
`
`body and both products aid or improve sleep. The identification of goods of AstraZeneca’s
`
`pleaded registration for NEXiUi\/£® and the opposed appiication do not contain any restriction as
`
`to the channels of trade or end users of the respective pharmaceuticals. Accordingly,
`
`AstraZeneca is entitled to suinniary judgment as a matter of law denying registration of
`
`LEXEUM by Paradigm.
`
`I.
`
`PRELIMINARY STATEMENT
`
`With a world of dissimilar marks from which to choose, Paradigm selected a mark which
`
`is virtually identical to not only a prior registered mark for a product in the same field, but one of
`
`the best known pharmaceutical trademarks in the United States. Regardless ofParadigrn'"s
`
`intentions, the mark LEXIUM is so similar to Ast.raZeneca’s NEXIUM mark as to be likeiy to
`
`cause confusion.
`
`As a result of AstraZeneca’s efforts, the NEXlUM® product has become one of the top
`
`two prescribed pharmaceuticals in the United States. More than 5 miiiion patients take
`
`NEXlUM®. Over the past eight years, sales ofNEXIUM® have aggregated billions of doilars.
`
`| SYl_lB01\64623l\i
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`-1.
`
`

`
`ln short, the NEXEUM mark has achieved unprecedented fame and brand recognition in the
`
`United States.
`
`In 2007, Astrazerieca learned about the intent—to~use trademark application for the term
`
`LEXZUM in connection with “sleep aid preparations” in International Class 5. AstraZeueca
`
`timeiy tiled a Notice of Opposition.
`
`As d.emoiistrated herein, the there are no genuine issues of material fact with regard to
`
`standing, priority of use, and iikelihood of confusion. Accordingl.y, AstraZeneca is entitled to
`
`judgment as a matter of law and its opposition should be sustained.
`
`II.
`
`FACTS
`
`A.
`
`The NEXIUlVI® Mark
`
`AstraZerieca is one of the top pharmaceutical companies in the wortd and is engaged in
`
`the manufacture and sale ofpharinaceutical products and in research to discover new medicines
`
`and treatments. (Declaration of John A. McCarthy (hereinafter “McCarthy Decl.” ‘Q 2).
`
`Approximately 60 million Americans experience gastroesophageal reflux disease
`
`(GERD) symptoms more than twice a week. (McCarthy Decl. ‘Q 4). GERD is also known as acid
`
`reflux disease, which causes a painful burning sensation commonly referred to as heartburn. (Id)
`
`In 2000, AstraZeneca introduced NEXIUMCRD, a prescription pharmaceutical for the treatment of
`
`the symptoms of acid reflux disease or GERD. (McCarthy Decl.
`
`4). NEXIUM has been an
`
`extraordinary success. Within. just a few years of its introduction in 2000, Ncxium had become
`
`the second largest selling pharmaceutical in the United States. (McCarthy Deci. ‘ii 5). From
`
`2001 theough 2007', net wholesale saies of NEXiUl\/l® was $17.2 billion. (Id).
`
`Astrazeneca has devoted substantial resources in the advertising and promotion of
`
`NEXIUM.®. (McCarthy Deci. ‘ti 8). Through its extensive efforts, AstraZeneca has successfully
`
`SYLlB01\64623l\]
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`

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`developed extraordinary customer loyalty and goodwill in its NEXIUM® trademark.
`
`in
`
`addition, consumer recognition of NEXIUM is among the highest for any pharmaceutical
`
`product.
`
`AstraZeneca proinotes NEXlUM® in most forms of media, such as television and radio
`
`cornmercials, print advertising, in—store dispiays, brochures, billboards, online advertising and on
`
`its website vrwirv,purpiepiEli:-oin. (McCarthy Decl. fl 7). The trademark is prominently displayed
`
`in advertising. (McCarthy Decl. ‘Ml 7-9). NEXlUM® has also received extensive unsolicited
`
`product coverage.
`
`In 2007, there were at least 4,934 media articies about NEXiUM®.
`
`(McCarthy Dec}. ‘J 1.0).
`
`By 2007, media coverage of NEXlUM® reached 1.6 billion people.
`
`(Id). According to a
`
`2007 healtheare market research survey, AstraZeneca’s website for NEXlUM®,
`
`v~rwvv'.§:?:urrilezpill.e-om, ranked in the top 5 for pharmaceutical product websites with the highest
`
`percentage of visitors requesting prescriptions after visiting the site. (McCarthy Decl.
`
`12).
`
`For a one year period, July I, 2007—July l, 2008, the purplepillcom website Was visited
`
`4,326,591 times (McCarthy Decl. it 14), with an average of 13,314 visits per day. (Id).
`
`The NEXiUl\/l® rnark is widely recognized as one of the most famous marks in the
`
`healthcare industry. And, according to a consumer tracking survey designed to gauge brand
`
`awareness among users of NEXlUM® in regional markets in the United States from January 14-
`
`May 31, 2008, there was a 97% total "brand awareness among the target group (people who
`
`experience syrnptoms or treat heartburn at least 2 days a week and have used medication in the
`
`past 3 months) and a 96% total brand awareness among the non-target group. (McCarthy Decl. fil
`
`16).
`
`SYE,l80}\6~16231\l
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`AstraZeneca’s advertising campaigns have received a number of awards. For example, in
`
`2006 and 2007, the NEXIUM® online campaign won a gold award from the lnternet Advertising
`
`Competition, one of the premiere award competitions in the online industry, and was designated
`
`the best oriline campaign in the pharmaceutical category for those years. (McCarthy Decl. ‘lg 13).
`
`In 2007, the NEXIUM website, wwvr.pr:.rplepili.com, was selected by the Webby Awards as one
`
`of the top websites in the pharmaceutical category. (Id).
`
`In addition, Astrazeneca has a “Prescription Savings Program” under which it delivers
`
`AstraZeneca products free of charge to eligible low income patients. AstraZeneca was the first
`
`company in the pharmaceutical industry to promote its prescription savings program in television
`
`commercials. Television ads for NEXIUM featuring the prescription saving program have aired
`
`continuously since April 2005. In 2006, 97,614 NEXIUM patients were provided patient
`
`assistance through AstraZeneca’s programs, which equates to patient savings of $105 million.
`
`(McCarthy Dec} 11 15).
`
`As a result of the extensive and successful advertising and promotion for NEXlUM®,
`
`the NEXiUM® brand name and tradernarlr has acquired a high degree of recognition in the
`
`minds of the consuming public.
`
`B.
`
`The NEXIUMCD Trademark Registration
`
`AstraZeneca’s exclusive ownership of the NEXlUM® trade.rnari( is evidenced by U.S.
`
`'I.‘radernarl< Registration No. 2,483,060, registered on August 28, 2001 for “pharmaceutical
`
`preparations for the treatment of gastrointestinal diseases” in international Class 5. (Deciaration
`
`of Darren W. Saunders (“Saunders Deal”) ‘fl 3, Ex. B). The trademark is registered in standard
`
`character format. (Id) The registration sets forth a date of first use of July 6, 2000. (Id). The
`
`registration is valid and subsisting.
`
`SYLiBt)l\64623l\]
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`AstraZeneca has aggressively enforced its NEXIUM® trademark. Since registration in
`
`2001, Astrazeneca has formally opposed a number of federal trademark appiications and/or uses
`
`of marks confnsingty similar to NEX1UM®, including:
`
`(1) opposed Soft Gel. Technologies,
`
`lncfs attempt to register NEVIUM (Application Serial No. 76/301,127) (Opposition No.
`
`91125429); (2) opposed Bimini Bay Outfitters, Ltd.’s attempt to register NEXIUM (Application
`
`Serial No. 76/155,804) (Opposition No. 91 l51487); (3) opposed Gastropal Partners’ attempt to
`
`register IBIXIUM (Application Serial No. 78/228,707) (Opposition No. 91158938); (4) opposed
`
`Bimedia, l'nc.‘s attempt to register DEXIUM (Application Serial No. 76/517,772) (Opposition
`
`No. 91161234); (5) opposed Gastropal Partners, Palafox Laboratories, Inc., and Vital Needs
`
`Products, lnc.’s attempt to register BIXIUM (Application Serial No. 78/228,714) (Opposition
`
`No. 91158960); (6) opposed Nexiurn, Incfs attempt to register NEX1UM.CO1\/E (Application
`
`Serial No. 75/ 845,490) (Opposition No. 91122876); and (7) filed a trademark infringement
`
`action against Fred Namdar and Nexium, Inc. in the Eastern District of New York (9:00—cv—
`
`03517-38). (Saunders Deel. it 4, Ex. (3).).
`
`C.
`
`E’aradigm’s LEXIUM Mark
`
`On September 25, 2006, Paradigm tiled an intent—to—use application, Serial No.
`
`77/006,953, to register the mark LEXIUM for “sleep aid preparations” in International Class 5.
`
`The application for LEXIUM was ‘filed long after Astrazeneca commenced use of and obtained a
`
`federal registration for l\lEX1UM®. (Saunders Decl. '11 3, Ex. A at 111“; 24-25). By its own
`
`admission, Paradigm had. actual knowledge of AstraZeneca’s trademark at the time it adopted the
`
`LEXIUM mark and at the time it filed its trademark application. (Saunders Decl. $1 2, Ex. A at ‘,1
`
`1). It also admits to having constructive notice of the NEXIUM® mark at the time it adopted the
`
`LEXIUM mark and when it filed its trademarl< application. (Saunders Deel. 112, Ex. A at fl 2).
`
`SYLlB01\64623l\1
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`The identification of goods in the LEXEUM appiication does not contain any trade channel
`
`restrictions or method of sale restrictions.
`
`III.
`
`ARGUMENT
`
`A.
`
`The Applicable Standard for Summary Judgment
`
`The Board may render judgment for the moving party on summary judgment if there is
`
`no genuine issue as to any material fact. F ed. R. Civ. P. 56(0); 37 C.F.R. 2.1 l6(a). A genuine
`
`issue of materiai fact exists only if a reasonable fact finder viewing the entire record couid
`
`resolve the dispute in favor of the non~moving party. Otoeom Sys, Inc. v. Houston Computer
`
`Services, 918 F.2d 937, 940, 16 USPQ2d 1783 (Fed. Cir. 1990). “As a party moving for
`
`summary judgment in its favor on its Section 2(d) ciairn, petitioner must establish that there is no
`
`genuine dispute that (1) it has standing to maintain this proceeding; (2) that it is the prior user of
`
`its pleaded mark; and (3) that contemporaneous use of the parties’ respective marks on their
`
`respective goods would be likely to cause confusion, mistake or to deceive consumers.” Fram
`
`Trak Ina’us., Inc. v. Wire Tracks LLC, 77 USPQ2d 2000, 2004 (TTAB 2006). If the moving party
`
`demonstrates an absence of issues of material fact, the non—moving party must respond by setting
`
`“forth specific facts showing there is a genuine factual issue for trial.” ¥ed.R.Civ.P. 56(e). The
`
`non—movi.ng party “may not rest upon the mere allegations or deniais of {its] pleadings.” Id.
`
`B.
`
`AstraZeneca has Standing
`
`There is no question that AstraZeneca has standing to bring this opposition proceeding.
`
`Under Section i3(a) of the Trademark Act, 15 U.S.C. § 1063(a), “[a]ny person who believes that
`
`he would be damaged by the registration of a mark upon the principal register. . .may. . file an
`
`opposition stating the grounds therefore.” Where a likelihood of confusion is at issue, standing
`
`may be shown by alleging and proving that the opposer has a reai commercial interest in its own
`
`svz,is0i\.e4s23i\i
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`mark, plus a reasonable basis for the beiief that it would be damaged by the registration of the
`
`opposed mark. Lipton Irzdus, Inc. v. Ralsron Purina Co., 670 F.2d 1024, E028—29, 213 USPQ
`
`185, 187 (CCPA 1982).
`
`AstraZeneca has a proven real interest in the outcome of this proceeding and a reasonable
`
`basis for believing it would be damaged by the registration of Paradigrn’s LEXIUM mark. it is
`
`undisputed that AstraZeneca is the owner of trademark Registration No. 2,483,060 for
`
`NEXIUD/£® and that Astrazeneca has priority by virtue of its prior use of the NBXIUM® mark.
`
`(Id). The record is replete with evidence of AstraZeneca’s extensive use of the mark.
`
`(McCarthy Decl. W 644). It cleariy has a real interest in the proceeding.
`
`in addition, the marks
`
`LEXIUM and NE.XiUM® are nearly identical in sound and appearance, having only one
`
`different letter. AstraZeneca thus has a reasonable belief that consumers are likeiy to be
`
`confused, mistaken, or deceived into believing that these products come from the same source
`
`and that it will be damaged as a result of the registration of the LEXIUM mark. Accordingiy,
`
`Astrazeneca has standing to bring this opposition proceeding.
`
`C.
`
`AstraZeneca’s Priority of Use is Undisputed
`
`Priority of use is undisputed here. The NEXIUM® trademark registration is valid and
`
`subsisting and has a tiling date that predate the filing ofParadig1n’s application for LEXIUM.
`
`(Id). Moreover, Paradigm admits that its appiication for LEXIUM was filed after the
`
`registration ofNEX1UM® and after the date of first use of the trademark NEXlUM®. (Saunders
`
`Decl. ‘gl 3, Ex. A at ‘M 24-25). Accordingly, AstraZeneca has priority of use.
`
`D.
`
`There is a Strong Likelihood of Confusion Between NEXIUM® and
`LEXIUM
`
`In conducting a likelihood of confusion analysis, the Trademark Tria} and Appeal Board
`
`considers those factors enumerated in In re E]. DuPont DeNem0ur.s* & Ca, 476 F.2d 1.357, l"/'7
`
`I
`
`SYLIBt11\64623l\I
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`USPQ 563, 567 (CCPA 1973).] No one factor is determinative and the Board need only consider
`
`those factors that are dispositive. Han Beauty, Inc. v. Alberto»-Culver Ca; 236 F.3d 1333, 1336,
`
`57 USPQ2d 15:37; 1559 (Fed. Cir. 2001). All doubts as to whether confusion; mistake or
`
`deception is likely should be resolved in favor of the senior user, here Astrazeneca. Planters Nut‘
`
`& Chocolate C0. V. Crown Nut Co, Inc; 305 F.2d 916, 924-25, 134 USPQ 509 (CCPA 1962);
`
`Kimberiy—CZark Corp. v. H. Douglas Enters, 774 F.2d 1144, 1147, 227 USPQ 541, 543 (Fed.
`
`Cir. I985).
`
`in this case, the most relevant factors are: (I) the fame of the NEXiUM® mark; (2)
`
`the similarity of the marks; (3) the relatedness of the goods and overlapping trade channels; and
`
`(4) the number and nature of similar marks in use on similar goods. There is no genuine issue of
`
`material fact as to any of these factors. Accordingly, Astrazeneca is entitled to judgment as a
`
`matter of law denying registration of LEXIUM.
`
`The DuPont factors are:
`
`The similarity or dissimilarity of the marks in their entiretics as to appearance,
`(I)
`sound, connotation and commercial impression;
`(2)
`The similarity or dissimilarity and nature of the goods or services as described in
`an application or registration or in connection with which a prior mark is in use;
`(3)
`The similarity or dissimilarity of established, likely to continue trade channels;
`(4)
`The conditions under which and buyers to whom sales are made
`(5)
`The fame of the prior mark (sales, advertising, length of use);
`(6)
`The number and nature of similar marks in use on similar goods;
`(7)
`The nature and extent of any actuai confusion;
`(8)
`The iength of time during and conditions under which there has been concurrent
`use without evidence of actual confusion;
`(9)
`The variety of goods on which a mark is used or is not used;
`(10)
`The market interface between applicant and the owner of a prior mark;
`(1 l)
`The extent to which applicant has a right to exclude others from use of its mark on
`its goods;
`(12)
`(13)
`
`The extent of potential confusion, i.e., Whether de minimis or substantiai; and
`Any other established fact probative of the effect of use.
`
`In re El. DuPont DeNemours & Co., 476 F.2d at 1361.
`
`I SYLIBOi\64623l\l
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`1.
`
`The NEXIUM® Trademark is Famous
`
`The fame of a mark “plays a ‘dominant role’ in the process of balancing the DuPont
`
`factors.” Recot Inc. 12. MC. Beeton, 214 F.3d B22, 1327', 54 USPQ2d 1894,
`
`l897—98 (Fed. Cir.
`
`2000). As the fame of the mark increases, the degree of similarity between the marks necessary
`
`to sustain a conclusion of likelihood of confusion decreases. Bose Corp. v. QSC Audio Products
`
`Inc, 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). The fame ofa mark may be
`
`measured indirectly, for instance, by Volume of sales and advertising expenses. Id. at 1306.
`
`Famous marks enjoy a wide scope of legal protection. Kenner Parker Toys Inc. v. Rose Art‘
`
`Industries Inc, 963 F.2d 350, 352, 22 USPQ2d E453 (Fed. Cir. 1992). The Federal Circuit has
`
`repeatedly cautioned that:
`
`There is no excuse for even approaching the well-known
`trademark of a competitor. . .and. .. all doubt as to whether
`confusion, mistake or deception is likely is to be resolved against
`the newcomer, especially where the established mark is one which
`is famous.
`
`Nina Ricei, S.A.R.L. V. E. T.F. Enters, 889 F.2d E070, 1.074, 12 USPQ2d 1.901, l90-4 (Fed. Cir.
`
`l989) (quoting Planters Nut, 305 F.2d at 924-25, 134 USPQ at 501 l). As established in the
`
`Facts section above, NEXIUM is a famous mark. Astrazeneca has used the mark NEXlUM®
`
`continuously and exclusively for eight years. (McCarthy Decl. ‘ll 5). There are more than 5
`
`million customers of NEXlUM® and, over a six—year period, not wholesale sales have reached
`
`billions of dollars. (McCarthy Decl. ‘llfil 6-7).
`
`The evidence demonstrates that the NEXIUMCEQ mark has achieved substantial fame.
`
`See, e. g., K1‘mberly—Clark, 227 USPQ at 543 (I-~lUGGllES famous for diapers where $300 million
`
`in sales and $15 million in advertising in one year); Plamers Nut, 134 USPQ at 506 (MR.
`
`PEANUT famous for nuts where $350 million in sales, $10 million in advertising and over 10
`
`[ SYl..lB0l\64623l\l
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`- 9 -
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`years of use); Giant Food Inc. v. Nation is Fooakervice, Inc, 710 F.2d 1565, 1569-70, 218 USPQ
`
`390, 392-93 (Fed. Cir. 1983) (GIANT FOOD famous for supermarket services and food based
`
`on saies over $1 billion in one year, “considerable amount of money” in advertising, and 45
`
`years use).
`
`As a famous mark, NEX1Ul\/l® is entitled to a broad scope of protection. This
`
`factor weighs heaviiy in /~\straZeneca‘s favor.
`
`2.
`
`The NEXIUM® and LEXiUl\/I Marks are Extremely Similar
`in Sight, Sound and Connotation
`
`The similarity of the respective marks is tested by comparing the marks in overali
`
`appearance, sound and connotation. Hewlett-Packard Co. v. Packard Press, Inc, 281 F.3d 1261,
`
`62 USPQ2d 1001 (Fed. Cir. 2002). “[:l}t is not necessary that marks be similar in all three of the
`
`elements of sight, sound and meaning to support a finding of likeiiitood of confusion.” Interstate
`
`Brands Corp. v. McKee Foods Corp, 5 3 USPQ2d 3910, 1914 (TTAB 2000). Here, the
`
`LEXIUM mark is virtually identical to AstraZeneca’s NEXlUM® mark in each respect.
`
`The respective marks, “LEXIUM” and “NEXIUM”, are similar in appearance. Both
`
`marks are standard character marks and they are the same but for the first letter. The marks are
`
`also aurally similar. Simply put, LEX1UM sounds like NEXIUM. 2
`
`In addition, the connotations of the marks are similar. Neither mark has any meaning.
`
`Because neither of the marks has any meaning or significance in connection with the respective
`
`2 The replacement of one letter in an otherwise identical mark does not distinguish the
`appearance or sound. of the marks. See, e. g., Apple Computer 1:. TVNET. net" Ina, Opposition No.
`91 168 875 (TTAB 2007) (VTUNES was nearly identical in appearance to ITUNES and
`substitution of one letter to dominant portion of mark is insufficient to distinguish the marks);
`Int'er,s‘Iate Brands, 5 3 USPQ2d 1910 (“H01-I03” confusingly similar to “Yo~Yo’s" for snack
`cakes in sound and appearance).
`
`I SYL1B01\64623l\1
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`

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`goods and because the marks are so similar in appearance and sound, the overall impressions of
`
`the marks are also similar.
`
`3.
`
`The LEXIUM Goods are Closely Related and the Trade Channels
`and Classes of Consumers Overlap
`
`In order to find a likelihood of confusion, it is not necessary that the goods or services on
`
`or in connection with which the marks are used be identical or even competitive. McDonald is‘
`
`Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). “It is enough if there is arelationship
`
`between them such that persons encountering them under their respective marks are likely to
`
`assume that they originate at the same source or that there is some association between their
`
`sources.” Id. Here, the goods are closely related and the channels of trade and classes of
`
`consumers overlap.
`
`a.
`
`The Goods are Related
`
`When scrutinizing the relatedness of the goods and channels of trade, the Board looks to
`
`the identification of goods, as set forth in the application, “regardless of what the record may
`
`reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the
`
`class of purchasers to which the sales of the goods are directed.” Otocom $323., 918 F.2d at 942,
`
`16 USPQ2d at 1787.
`
`Paradigm seeks to register LEXIUM for “sleep aid preparations” in lnternational Class 5.
`
`The NEXIUl\/l® tradernark is registered for “pharmaceutical preparations for the treatment of
`
`gastrointestinal diseases” in International. Class 5. (Saunders Decl. 1] 6, Ex. D). Both parties’
`
`products are ingestihle preparations for the treatment or mitigation ofcond.itior1s which have an
`
`adverse effect on the human body and which may be taken at home without medical supervision,
`
`regardless of whether the products are sold over-the-counter or by prescription. In re Star
`
`Pharmaceuticals, Inc, 22E USPQ 84, 85 (TTAB E984) (“pharizriaceutical preparations, narneiy,
`
`I
`
`svi.rBo1\e4s231\.1
`
`- 11 ~
`
`

`
`bethanechol tablets for the treatment of urinary retention and residual urine” closeiy related to
`
`existing registration for “pharmaceuticals, namely, aspirin”, despite the fact that the former is a
`
`prescribed medication, since description of goods is unrestricted and products of both parties are
`
`intended for oral ingestion. and may be taken at home without medicai supervision.).
`
`In addition, at least one recent study concluded. that NEXEUM reduced nighttime
`
`heartburn and GERD—related sleep disturbances and improved sleep quality. See “E]j”ecI of
`
`Esomeprazoie on Nighttime Heartburn arid Sleep Quality in Patients with GERD: A
`
`Randomized, Placebo-Controlled Trial” (Saunders Dec} fl 5, Ex. D). Since Applicar1t’s
`
`LEXIUM product is a sleep aid and since NEXIUM has been found to improve sleep quality by
`
`reducing nighttime heartburn, both products have a cornrnon effect on patients ~ ~ improved
`
`sleep. For this added reason, the products are similar.
`
`Moreover, it is well settied that “where the marks are used on pharmaceuticals and
`
`confusion can lead to serious consequences, it is even more important to avoid that which will
`
`cause such confusion.” Blarisetr Pharmcrcal Co. Inc. v. Ccirmrick Laborctrories free, 25 USPQ2d
`
`1473, 1477 (TTAB 1992) (citing American Home Products Corp. v. US1/Pitarmaceurtcal Corp,
`
`190 USPQ 357' (TTAB 1976)). This principie is fully applicabie here.
`
`1).
`
`The Goods May Be Marketed In the Same Trade Channeis to
`the Same Class of Purchasers
`
`There is aiso an overlap in the channels of trade and ciass of customers for the parties’
`
`respective products, thus increasing the likelihood of confusion. The record demonstrates that
`
`the identification of goods in the opposed application does not contain any restriction or
`
`limitation as to the channels of trade or class of consumer who may purchase this product. The
`
`same is true of the identification of goods in the NEXIUM® registration.
`
`svi,i}3o1\s45231\1
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`- 12 -
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`

`
`Where there is an absence of limiting language restricting the channels of trade or
`
`consumers, it must be presunied that the parties’ goods would be sold in the same channels of
`
`trade and to the same classes of consumers. Hewfet'I«Pac*kard, 281 F.3d at l268, 62 USPQ2d at
`
`1005 (“absent restrictions in the application and registration, goods and services are presumed to
`
`travel in the same channels of trade to the same ciass of purchasers”). Therefore, even though
`
`NEXlUl\/I® is currently sold as a prescription and Paradigm intends that the LEXIUM product
`
`be distributed in retail outlets, there is a presumption that the goods are sold in the same
`
`marketing channeis to the same class of purchasers. See, e. g., Blcmsert Pharmacal, 25 USPQ2d
`
`at 1477 (confusion highly likely between NOLEX for pharmaceutical composition for the
`
`treatment of nasal congestion and NALEX for prescription pharmaceutical for the relief of nasal
`
`congestion because oniy difference between the marks was a single vowel and respondent’s
`
`goods were not restricted and thus, Board assumed that the goods could be dispensed either by
`
`prescription or over—the-counter); In re Star Pharmaceuticals, 221 USPQ at 85 (nothing in the
`
`identification of goods to limit applicant’s use of the inark. to prescription drugs—-—“there is no
`
`assurance that toclay’s ‘prescription only’ preparations may not become available over the
`
`counter tomorrow”). Accordingly, because Paradigm’s goods presumably will be soid in the
`
`same channels of trade as NEXlUl\/l® and to the same customers, this factor tips decidedly in
`
`AstraZeneca’s favor.
`
`4.
`
`There is No Evidence of Diiution by Third Party Marks
`
`The record reflects that Astrazeneca has been extremeiy vigilant in protecting the
`
`Ni?,Xl‘.UM® mark against encroachment. Astrazeneca has opposed numerous trademark
`
`applications and has otherwise taken steps to prevent dilution of its valuable trademark.
`
`(Saunders Decl. 1] 4, Ex. C).
`
`importantly, there is no evidence of any third-party use or
`
`SYLl'BOl\646231\i
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`w 13 -
`
`

`
`registration of rnarks similar to NEXIUM® for pharmaceutical and related products.
`
`NEXlUM® is therefore a strong mark with a broad scope of protection.
`
`IV.
`
`CONCLUSION
`
`For the foregoing reasons, there are no genuine issues of material fact with respect to
`
`likelihood of confusion, and AstraZeneca respectfully requests that the Board grant its motion for
`
`surnrnary judgment and sustain the Notice of Opposition against Paradigrifs application for
`
`LEXIUM, Serial No. 77/006,953.
`
`Dated: New York, New York
`
`September 15, 2008
`
`Respectfully submitted,
`
`Hiscock & Barclay, LLP
`
`By: {WWW 5/
`
`Darren W. Saunders
`
`Mark I. Peroff
`
`Seven Times Square
`New York, NY 10036
`Tel; (212) 7846800
`Fax: (232) 7846777
`
`Altorrzeysfor Opposer As:mZeneca AB
`
`SYL1B0l\64623I\1
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`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and exact copy of the foregoing OPPOSER’S
`
`MOTION FOR SUMMARY JUDGMENT has been served this 15”‘ day of September, 2008, by
`
`electronic mail to:
`
`Mark B. Harrison, Esq.
`Venabie
`
`575 7th Street, NW
`Washington, DC 20004-4385
`202.34-4.40} 9
`
`mbharrison@Ver1ab1e.com
`
`Dated: September 15,2008
`
`By: x eviitfiflp
`
`Angela LaM rte
`HISCOCK & BARCLAY, LL]?
`Seven Times Square
`New York, New York 10036
`
`Tel. No.: (212) 784-5800
`Email: aIamorte@hb1aw.eom
`
`SYL1BO]\64623]\'i
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`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Atty‘ Ref No. .'
`
`Application Ser. NO. 77/006,953
`In re:
`April 3, 2007
`Published:
`Paradigm Inc.
`Applicant:
`LEXEUM
`Mark:
`_______________________________________________________.__X
`
`Astrazeneca AB,
`
`)
`)
`
`; Opposition No. 91178696
`g DECLARATION or JOHN A.
`) MCCARTHY IN SUPPORT OF
`OI’P()SER’S MOTION FOR
`) SUMMARY JUDGMENT
`‘)
`.1-
`
`) )
`
`.
`Pa“ad"gm1“°'*
`
`Opposeri
`
`V
`
`Applicant.
`
`....................................................... M};
`
`1, John A. McCarthy, having been warned that willful false statements and the like are
`
`punishable by fine or imprisonment, Or both, under 18 U.S.C. 1001, and that such willful false
`
`statements and the like may jeopardize the validity of the application or document or any
`
`registration resulting therefrom, hereby declare as follows:
`
`1.
`
`I am the Commercial Brand Leader for the Nexium Team at Astrazeneca. Iain
`
`responsiblte for the sale and marketing ofNEX1"Ul\/i in the United States.
`
`E subm