IN THE UNITED STATES PATENT AND TRADEMARK OFI
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`TTAB
`
`
`
`ASTRAZENECA AB,
`
`PARADIGM, INC.,
`
`OPPOSER,
`
`APPLICANT.
`
`
`
`\u#\_/\_/\_/\_/\_/\_/
`
`OPPOSITION NO.
`91178696
`
`"77/WA, 6/’§“g
`
`APPLICANT’S RESPONSE TO OPPOSER’S
`
`MOTION FOR SUMMARY JUDGMENT
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`Applicant, Paradigm, Inc., respectfully submits its response to Opposer’s Motion
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`for Summary Judgment, pursuant to Rule 2.116 of the Trademark Rules of Practice, 37
`
`C.F.R. § 2.l27(e) and Rule 56 of the Federal Rules of Procedure. This response is
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`supported by the accompanying Memorandum and the attached exhibits.
`
`Respectfully submitted,
`
`Mark B. Harrison
`
`Venable LLP
`575 7"‘ St. NW
`
`Washington, D.C. 20004
`Telephone: (202) 344-4000
`Fax: (202)344-8300
`Attorneys for Applicant
`
`Date: November 12, 2008
`
`IIlllllIlllllllllIIIIIllllllllll|||ll|||||||ll||||
`11-12-2008
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`1_~ 5 Patent
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`4. TMQF:/TM Merl Rcpt Dr.
`
`8321
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ASTRAZENECA AB,
`
`PARADIGM, INC.,
`
`OPPOSER,
`
`APPLICANT.
`
`\}$/\J\/\/\)&/
`
`OPPOSITION NO.
`
`91 1 78696
`
`MEMORANDUM IN SUPPORT OF APPLICANT’S RESPONSE TO OPPOSER’S
`
`MOTION FOR SUMMARY JUDGMENT
`
`Applicant, Paradigm, Inc, respectfully submits its Memorandum in Support of its
`
`Response to Opposer’s Motion for Summary Judgment, pursuant to Rule 2.116 of the
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`Trademark Rules of Practice, 37 C.F.R. § 2.127(e) and Rule 56 of the Federal Rules of
`
`Procedure.
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`

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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION
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`II. STATEMENT OF DISPUTED FACTS
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`III. ARGUMENT
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`A. There Is No Likelihood of Confusion Between AstraZeneca and Paradigm's
`Marks
`
`1. The Degree of Similarity in Sight, Sound, and Connotation Between
`AstraZeneca and Paradigm's Marks Is Small
`
`2. Other Marks Coexist with AstraZeneca's Mark That Are As Similar As
`
`Paradigm's Mark Or More So
`
`3. The Fame of AstraZeneca's Mark Eliminates the Likelihood of Confusion
`i.
`The Extent of Possible Confusion Is Small
`
`ii.
`
`The Condition Under Which Sales Are Made Is One Of Awareness
`
`iii.
`
`The Relatedness of the Goods and Charmels of Trade Is Minimal
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`IV. CONCLUSION
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`

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`I.
`
`INTRODUCTION
`
`Summary judgment is a “salutory method of disposition ‘designed to secure [the]
`
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`just, speedy and inexpensive detennination of every action.’” Sweats Fashions Inc. v.
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`Pannill Knitting Co., Inc., 4 USPQ 2d 1793, 1795 (Fed. Cir. 1987) (quoting Qe_lc)§:§
`
`Corp. v. Catrett, 477 U.S. 317, 327 (1986)). Summary judgment is appropriate where the
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`moving party establishes that there are no genuine issues of material fact which require
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`resolution at trial and that it is entitled to judgment as a matter of law. FED. R. CIV. PRO.
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`56 (c). A fact is genuinely in dispute if the evidence is such that a reasonable factfinder
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`could find in favor of the non-moving party. Salacuse v. Ginger Spirits, Inc., 44
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`U.S.P.Q.2d 1415, 1418 (TTAB 1997) (citing Anderson v. Liberty Lobby, Inc., 477 U.S.
`
`242, 248 (1986)). “The non-moving party must be given the benefit of all reasonable
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`doubt as to whether genuine issues of material fact exist, and the evidentiary record on
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`summary judgment, and all inferences to be drawn from the undisputed facts, must be
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`viewed in the light most favorable to the nonmoving party.” Salacuse, 44 U.S.P.Q.2d at
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`1418.
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`In this case, there is a genuine issue of material fact with respect to the degree of
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`similarity between AstraZeneca and Paradigm's marks. There is also a genuine issue of
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`material fact regarding whether the fame of AstraZeneca's mark will serve to increase or
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`decrease the likelihood of confusion. Paradigm asserts that these facts present sufficient
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`evidence to raise genuine issues of material fact such that summary judgment in favor of
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`the AstraZeneca is not warranted.
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`

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`II. STATEMENT OF DISPUTED FACTS
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`1.
`
`AstraZeneca's mark is not similar in sight, sound, and connotation to
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`Paradigm's mark.
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`2.
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`3.
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`The parties’ goods and channels of trade are not identical.
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`The fame of AstraZeneca's mark serves to eliminate any likelihood of
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`confusion.
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`III. ARGUMENT
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`Summary judgment is appropriate where the moving party establishes that there
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`are no genuine issues of material fact which require resolution at trial and that it is
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`entitled to judgment as a matter of law. FED. R. CIV. PRO. 56 (c). A fact is genuinely in
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`dispute if the evidence is such that a reasonable factfinder could find in favor of the non-
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`moving party. fl Salacuse v. Ginger Spirits, Inc., 44 U.S.P.Q.2d 1415, 1418 (TTAB
`
`1997) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).
`
`The moving party bears the burden of showing that no material fact exists. E
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`Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986). The burden then shifts to the non-
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`moving party to show that a triable issue of facts still exists. See id. “The non-moving
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`party must be given the benefit of all reasonable doubt as to whether genuine issues of
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`material fact exist, and the evidentiary record on summary judgment, and all inferences to
`
`be drawn from the undisputed facts, must be viewed in the light most favorable to the
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`nonmoving party.” Salacuse, 44 U.S.P.Q.2d at 1418.
`
`A.
`
`Mar
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`Therlfsls No Likelihood of Confusion Between AstraZeneca and Paradigm's
`When determining if there is a likelihood of confusion between marks, the
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`Trademark Trial and Appeal Board (hereafter "the Board") considers the factors
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`

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`enumerated in In re E.I DuPont DeNemours & C0., 476 F.2d 1357, 177 USPQ 536, 567
`
`(CCPA 1973). The Board's examinations are case-specific. Han Beauty, Inc. v. Alberto-
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`Culver Co., 236 F.3d 1333, 1336, 57 USPQ3d 1557, 1559 (Fed. Cir. 2001). Though the
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`Board must consider all factors for which there are evidence, it may focus on dispositive
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`factors such as similarity of the marks and relatedness of the goods. Han Beauty Inc.,
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`236 F.3d 1336.
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`An examination of the DuPont factors exposes a genuine issue of material fact as
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`to the likelihood of confusion with use of AstraZeneca and Paradigm's marks. First, the
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`degree of similarity among the marks is questionable given that the most predominant
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`part of both marks, the beginning, is different. Second, the AstraZeneca mark coexists
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`with marks that are as similar to AstraZeneca's mark as Paradigm's or more so. Third, the
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`fame of AstraZeneca's mark pushes several of the DuPont factors in favor of Paradigm
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`and mitigates other factors, namely: (1) the extent of possible confusion arising from the
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`simultaneous use of the marks; (2) the relatedness of the goods and the channels of trade;
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`and (3) the conditions under which and buyers to whom sales are made. These factors
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`either weigh in favor of Paradigm or because of NEXIUM's fame are will not affect
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`consumer perception. There is a genuine issue of material fact with regard to the
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`likelihood of confusion, and thus, AstraZeneca's motion for summary judgment should be
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`dismissed.
`
`1. The Degree of Similarity in Sight, Sound, and Connotation Between
`Astraleneca and Paradigm's Marks Is Small
`
`The degree of similarity between two marks is a predominant factor in the
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`likelihood of confusion inquiry. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
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`1261, 1265, 62 USPQ 2d 1001 (Fed. Cir. 2002). The Board determines this degree by
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`

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`examining the “relevant features of the mark, including sight, sound, connotation and
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`commercial impression.” Hewlett—Packard Co., 281 F.3d. 1265. It gives greater force
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`and effect to the dominate feature of a mark. Giant Food, Inc. v. Nation ’s Foodservice,
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`Inc., 710 F.2d 1565, 1570, 218 USPQ 390, 395 (Fed. Cir. 1983). Greater force and effect
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`should be applied to the first part of a mark as “it is often the first part of a mark which is
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`most likely to be impressed upon the mind of a purchaser and remembered.” Presto
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`Products v. Nice-Pak Products, Inc., 9 USPQ 2d 1895, 1897 (TTAB 1998). The first
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`term in the mark further requires greater weight when assessing similarity because it
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`“dominates the commercial impression of each markj’ Mattel, Inc. v. Funline Merch.
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`C0,, 81 USPQ 2d 1372, 1375 (TTAB 2006) (finding the word “rad” in RAD RODS and
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`RAD RIGS dominated the commercial impression of each mark and required greater
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`weight in comparing the similarity of the marks by virtue of being the first word of the
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`marks).
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`The first part of the Paradigm and AstraZeneca marks, LEX- and NEX-
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`respectively, are not similar, and this dissimilarity should be given the predominate
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`weight of the examination. The first letter of each syllable creates a different appearance
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`and sound in the part of the mark most likely to be impressed upon the minds of a
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`purchaser. These differences dominate the commercial impression of each mark because
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`they are found not just in the first part of the mark, but in the very first letter.
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`AstraZeneca has cited a case where the first letter of two marks was different yet
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`the Board still found the marks were similar, Apple Computer v. TVNET. net Inc.,
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`Opposition No. 91168875 (TTAB 2007). However, this case is not similar to the
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`circumstances in this opposition. Though the marks — VTUNES and ITUNES — had
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`

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`different first letters, these letters were both followed by “tunes,” an English word with
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`meaning; whereas, “-exium” has no meaning. Both the Paradigm and AstraZeneca marks
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`are fanciful; they are invented words for use solely as a trademark. 2 J. Thomas
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`McCarthy, McCarthy on Trademarks and Unfair Competition §l1.5 (4th ed. 2008). The
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`difference in any letter, especially the highly impressionable first letter, creates a new
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`word.
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`2. Other Marks Coexist with AstraZeneca's Mark That Are As Similar
`
`As Paradigm's Mark Or More So
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`There are at least two marks with different first letters ending in "-exium" that
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`currently coexist with AstraZeneca's mark: LEXIUM, for automation products for axis
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`control in international class 7 (Registration Number. 2790041), and DEXIUM an anti-
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`inflammatory analgesic for veterinary use in international class 5 (Registration Number.
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`3069670). Also coexisting with AstraZeneca's NEXIUM, is NEXIUM.COM, for online
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`ordering services featuring computers, owned by Nexium, Inc. NEXIUM and
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`NEXIUM.COM are virtually identical, as the Board has found that suffixes such as
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`".com“ and ".net" are merely "the generic top level domain identifier" for the trademark
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`owner's URL and do not create a distinction between similar marks. See, Apple
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`Computer, Opposition No. 91168875 (TTAB 2007). Last, there are three current
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`registrations with three different owners for NEXIA and one registration for NEXIA
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`SOLUTIONS that coexist with AstraZeneca's NEXIUM. Unlike Paradigm's mark, the
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`first letter and syllable, the portion to which the most weight should be given in these
`
`marks, is the same as AstraZeneca's mark. NEXIA sounds and appears more similar to
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`NEXIUM than LEXIUM.
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`

`
`3. The Fame of AstraZeneca's Mark Eliminates the Likelihood of
`
`Confusion
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`AstraZeneca describes the fame of NEXIUM as a mark with consumer
`
`recognition "among the highest for any pharmaceutical product." However, the fame of
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`the mark is but one of the thirteen DuPont factors, and no one of these factors is
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`determinative. Hans Beauty, Inc., 236 F.3d 136. Furthermore, this fame eliminates the
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`likelihood of confusion with other marks because consumers are well aware of
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`AstraZeneca's mark and product. The fame of AstraZeneca's mark (1) lessens the extent
`
`of possible confusion, (2) adds an element of awareness to the condition under which and
`
`the buyers to whom sales are made, and (3) mitigates, if not eliminates, any likelihood of
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`confusion arising from the limited degree of relatedness of the goods and their channels
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`of trade.
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`i.
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`The Extent of Possible Confusion Is Small
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`The fame of the mark actually lessens the extent of possible confusion that would
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`arise from simultaneous use of AstraZeneca and Paradigm's marks because consumers
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`are very much aware of the source of NEXIUM as well as the drug's purpose.
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`AstraZeneca reports that in a study 97% of the target group, people experiencing
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`symptoms of gastroesophageal reflux disease, and 96% of those in the non-target group,
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`people who were not suffering from gastroesophageal reflux disease, had total brand
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`awareness of the NEXIUM mark.‘ The extensive advertising of NEXIUM in television
`
`and radio commercials, in print advertising, in-store displays, brochures, online
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`advertising, the www.purplepill.com website and other forms of media, ensures a public
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`' See Opposer's Motion for Summary Judgment p. 3
`
`

`
`awareness of not only the NEXIUM brand but also the purpose of the drug, thereby
`
`making confusion very unlikely.
`
`To further lessen the extent of possible confusion, AstraZeneca has made
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`NEXIUM synonymous with the purple color of the drug's pill. The Second Circuit has
`
`found that commercials containing a visual reference to the mark and product play a role
`
`in reducing the similarity between marks. Mead Data Cent, Inc. v. Toyota Motor Sales,
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`U.S.A., Inc., 875 F.2d 1026, 1030, 10 USPQ 2d 1961 (2d Cir. 1989), (holding that
`
`LEXIS, a mark used for computerized legal research services, and LEXUS, a mark for a
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`luxury automobile, could coexist without dilution of the LEXIS trade name.) The
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`NEXIUM website is www.purplepill.com, and as AstraZeneca points out, it is so popular
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`it was recognized by the Webby Awards.2 AstraZeneca has a registered trademark for
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`PURPLE PILL. (Registration Number 2941554). Like the LEXUS automobile
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`commercials, which the Second Circuit found allowed the finding of "no substantial
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`similarity" to the LEXIS mark, AstraZeneca's use of the PURPLE PILL in its advertising
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`gives consumers a visual reference that eliminates any similarity and significantly
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`reduces the extent of confusion between AstraZeneca and Paradigm's products.
`
`ii.
`
`The Condition Under Which Sales Are Made Is One Of
`Awareness
`
`In the same way NEXIUM's fame lessens the extent of possible confusion, it
`
`affects buyers and the conditions under which the drug is bought by adding the element
`
`of awareness. AstraZeneca directly advertizes NEXIUM to consumers. This direct to
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`consumer advertising "rebuts the notion... that prescription drugs are too complex to be
`
`2 See Opposer's Motion for Summary Judgment p.4
`
`

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`effectively communicated to lay consumers." Perez c. Wyeth Laboratories, Inc., 161 N.J.
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`1,19, 734 A.2d 1245, 1256 (1999).
`
`Consumers are well aware of NEXIUM, as AstraZeneca argues. They are
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`educated and knowledgeable about the NEXIUM brand and the purpose and effect of the
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`drug as advertised by AstraZeneca. Thus, the conditions under which they are buying is
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`one of in-depth awareness to the NEXIUM mark. Further, NEXIUM is a prescription
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`drug and is only accessible through the counsel of a medical professional, a point
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`recognized in AstraZeneca's slogan "Talk to your doctor about the healing purple pi1l."3
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`If the buyer has any questions as to the drug, its effects, and the company that produces it,
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`he can and is encouraged by AstraZeneca to present them to his doctor.
`
`iii.
`
`The Relatedness of the Goods and Channels of Trade Is
`Minimal
`
`The goods are not closely related, and NEXIUM's fame eliminates the concern of
`
`confusion from the limited degree of relatedness between the goods. AstraZeneca relies
`
`on case law stating that the Board relies on the "identification of the goods as set forth in
`
`the application." Octocom Sys., Inc. v. Houston Computer Services, 918 F.2d 937, 942,
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`16 USPQ 2d 1783 (Fed. Cir. 1990). NEXIUM is registered for "Pharmaceutical
`
`preparations for the treatment of gastrointestinal diseases (Registration Number.
`
`2483060), whereas, Paradigm has applied for LEXIUM describing it as a "sleep aid
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`preparation." (Serial Number 77/006,953). In an attempt to show a close degree of
`
`relatedness, AstraZeneca stretches beyond NEXIUM's registration identification to very
`
`broadly describe both products as "an ingestible preparation for the treatment or
`
`mitigation of conditions which have an adverse effect on the human body and which may
`
`3 Opposer's Exhibit 1, ASTRA 00003 (as attached to the Opposer's Motion for Summary Judgment)
`
`

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`be taken at home without medical supervision.” This generalization diverges so far from
`
`the registered identification of NEXIUM that it includes all orally administered drugs.
`
`The Second Circuit found that while lip balm and deodorant both used the mark SPORT
`
`STICK and could both be broadly defined as "personal care products," they did not
`
`compete or serve the same purpose. W. W. W. Pharm. Co., Inc. v. The Gillette Co., 984
`
`F.2d 567, 573 (2d Cir. 1993). Here, despite AstraZeneca's broad generalization of the
`
`two products, they do not compete or serve the same purpose and confusion is not likely.
`
`AstraZeneca also overextends the purpose of NEXIUM by contending that like
`
`LEXIUM, its product improves sleep quality. AstraZeneca bases this contention on a
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`study performed only on patients experiencing symptoms of gastroesophageal reflux
`
`diseases Thus, AstraZeneca cannot claim NEXIUM improves sleep for all or that it is
`
`taken as a "sleep aid", but rather that NEXIUM alleviates symptoms of gastroesophageal
`
`reflux disease, allowing its users to sleep. This is true of any drug that alleviates a
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`symptom severe enough to affect one's sleep, and yet these drugs are not considered sleep
`
`aids. Paradigm's product, on the other hand, is formulated to relieve insomnia and
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`symptoms of anxiety, conditions directly related to sleep.6 It is a true sleep aid.
`
`AstraZeneca and Paradigm's products do not share the same channels of trade.
`
`NEXIUM is a prescription drug and LEXIUM is a sleep aid sold over the counter.
`
`AstraZeneca argues that NEXIUM could one day become over the counter. However, at
`
`present it is not. It must be obtained with the permission of a doctor. Furthermore, in
`
`4 See Opposer's Motion for Summary Judgment p.11
`5 Effect of Esomeprazole on Nighttime Heartburn and Sleep Quality in Patients with GERD: A
`Randomized, Placebo-Controlled Trial, Opposer's Exhibit 10-D ASTRA 000190 (as attached to Opposer's
`Motion for Summary Judgment).
`6 See Applicant's Exhibit 1: Product Sheet produced in Applicant's Responses to Opposer's First
`Interrogatories and Requests for Production of Documents and Things
`
`

`
`W W. W Pharmaceutical Co., Inc. , the court found that though the products "share[d]
`
`some of the same channels of trade, this factor alone [did] not make them proximate."
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`984 F.2d 573. Even if NEXIUM eventually becomes available over the counter, this
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`factor alone does not affect the likelihood of confusion, and any confusion that would
`
`have arisen from the sale of the products in the same channel of trade is mitigated if not
`
`eradicated by the fame and public recognition of NEXIUM.
`
`IV. CONCLUSION
`
`The nomnoving party “need only present evidence from which a jury could return
`
`a verdict in its favor.” Copeland, 945 F.2d at 1566 (quoting Anderson v. Liberty Lobby,
`
`I_r£, 477 U.S. 242, 257 (1986)). “The non-moving party must be given the benefit of all
`
`reasonable doubt as to whether genuine issues of material fact exist, and the evidentiary
`
`record on summary judgment, and all inferences to be drawn from the undisputed facts,
`
`must be viewed in the light most favorable to the nonmoving party.” Salacuse, 44
`
`U.S.P.Q.2d at 1418.
`
`AstraZeneca claims that its mark is similar to Paradigm's in sight sound and
`
`connotation; however, the most significant portions of the marks, their beginnings differ.
`
`Furthermore, marks as similar and more similar to AstraZeneca's than Paradigm's coexist
`
`with AstraZeneca's mark. Last, the fame of AstraZeneca's mark serves to eliminate any
`
`likelihood of confusion because consumers are well aware of and familiar with
`
`AstraZeneca, its marks and its goods.
`
`Based on the evidence of record, AstraZeneca cannot as a matter of law, establish
`
`that a likelihood of confusion will result from Paradigm's intended use of the mark
`
`LEXIUM in connection with the goods identified in Serial Number 77/006,953.
`
`

`
`Respectfully submitted,
`
`By:
`
`Mm
`
`Mark B. Harrison
`
`Venable LLP
`575 7”‘ St. NW
`
`Washington, D.C. 20004
`Telephone: (202) 344-4000
`Fax: (202)344-8300
`
`Attorney for Applicant
`
`Date:
`
`November 12, 2008
`
`

`
`EXHIBIT 1
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`ASTRAZENECA AB,
`
`PARADIGM, INC.,
`
`OPPOSER,
`
`APPLICANT.
`
`€&/§/§/Q/\./\J
`
`OPPOSITION NO.
`91 1 78696
`
`DECLARATION OF EXHIBIT 1
`
`The undersigned, Counsel for Applicant, declares and states that Exhibit 1, attached
`
`to Applicant's Response to Opposer's Motion for Summary Judgment, is a copy of a product
`
`sheet that was produced to Opposer in response to Opposer's First Interrogatories and
`
`Requests for Production of Documents and Things.
`
`The undersigned further declares that all statements made herein of his own knowledge
`
`are true, and that all statements made on information and belief are believed to be true; and
`
`further that these statements were made with the knowledge that willful false statements and
`
`the like so made are punishable by fine or imprisonment, or both, under Section 1001 of
`
`Title 18 of the United States Code, and that such willful false statements may jeopardize the
`
`validity of this document or the application referred to therein.
`
`Done, this 12th day of November, 2008.
`
`Respectfully submitted,
`
`Mark B. Harrison
`
`Venable, LLP
`575 7"‘ St. NW
`
`Washington, D.C. 20004
`(202) 344-4000
`
`Counsel for Applicant
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned, attorney for Applicant, hereby certifies that he served, by first
`class mail, postage prepaid, a copy of the foregoing Applicant’s Response to Opposer’s
`Motion for Summary Judgment upon
`
`Darren W. Saunders
`
`Hiscock &Barclay, LLP
`Seven Times Square
`New York, NY 10036
`
`this 12"‘ day ofNovember, 2008.
`
`V
`
`-
`
`Mark B. Harrison