Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA221983
`ESTTA Tracking number:
`07/02/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91180212
`Plaintiff
`Schering Corporation
`David J. Kera
`Oblon, Spivak, McClelland, Maier, & Neustadt, P.C.
`1940 Duke Street
`Alexandria, VA 22314
`UNITED STATES
`tmdocket@oblon.com, dkera@oblon.com, obarrett@oblon.com
`Other Motions/Papers
`David J. Kera
`tmdocket@oblon.com, dkera@oblon.com, obarrett@oblon.com
`/David J. Kera/ojb/
`07/02/2008
`1246-314399US-bri.pdf ( 45 pages )(1396361 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`Attorney Docket No.: 314399US21
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91/180,212
`Appln. Serial No. 77/070,074
`Mark:
`DIIUXCTIN
`
`)
`
`) )
`
`) )
`
`)
`)
`)
`)
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`) )
`
`SCHERING CORPORATION,
`
`v.
`
`IDEA AG,
`
`Opposer,
`
`Applicant.
`
`The Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`OPPOSER’S BRIEF IN OPPOSITION TO APPLICANT’S MOTION
`TO RE—OPEN DISCOVERY PERIOD
`
`Opposer, Schering Corporation, opposes Applicant’s Motion To Re—open Discovery
`
`Periodl in accordance with Trademark Rule 2.l27(a).
`
`Applicant, Idea AG, essentially contends that a reopening of discovery is warranted
`
`because Applicant did not serve discovery requests before the close of discovery and because
`
`Applicant and its first counsel are located in Germany. These circumstances do not constitute
`
`“excusable neglect” as fully discussed below.
`
`Pursuant to the Trademark Trial and Appeal Board’s October 23, 2007 institution order,
`
`discovery opened in this opposition proceeding on November 12, 2007 and closed on May 10,
`
`1 Applicant’s reference to Trademark Rule 2.120(3) is incorrect as there is no such rule number. Opposer presumes
`that Applicant intends Trademark Rule 2. 1 20(a).
`Because Schering Corporation’s Notice of Opposition was filed on October 22, 2007, the Trademark Rules in
`effect on that date are the operative Rules for this opposition.
`
`

`
`2008.2 In accordance with Trademark Rules 2.116, 2.120, and 2.196, and Fed.R.Civ.P. Rules 33,
`
`34 and 36, Schering served its First Set of Interrogatories, First Request for Production of
`
`Documents and Things, and First Requests for Admissions on Monday, May 12, 2008. TBMP
`
`§403.02 (Second Edition rev. 2004) clearly explains that interrogatories, document requests and
`
`requests for admissions “may be served ...through the last day of the discovery period.”
`
`Opposer did so.
`
`In order to reopen discovery, Applicant must show excusable neglect. Fed.R.Civ.P. 6(b).
`
`The analysis for determining excusable neglect
`
`is found in Pioneer Investment Services
`
`Company v. Brunswick Associates Ltd. Partnership, 507 U.S. 380 (1993), adopted by the Board
`
`in Pumpkin Ltd. v. The Seed Corps, 43 USPQ2d 1582 (TTAB 1997). The factors articulated in
`
`the Pioneer case are:
`
`(1) the danger of prejudice to the non-moving party, (2) the length of the
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`delay and its potential impact on judicial proceedings, (3) the reason for the delay, including
`
`whether it was within the reasonable control of the movant, and (4) whether the movant acted in
`
`good faith.
`
`The Court of Appeals for the Federal Circuit found the Board’s adoption of the
`
`interpretation of excusable neglect articulated in the Pioneer case “was reasonable, and we defer
`
`to that interpretation.” FirstHealth of the Carolinas Inc. v. CareFirst ofMaryland Inc., 479 F.3d
`
`825, 81 USPQ2d 1919, 1922 (Fed. Cir. 2007).
`
`In applying the facts of the current opposition proceeding to the excusable neglect
`
`standard set forth in the Pioneer case, it is clear that Applicant has not established excusable
`
`neglect justifying a reopening of discovery.
`
`2 Because May 10, 2008 was a Saturday, the parties were allowed to serve interrogatories, document requests, and
`requests for admissions through Monday, May 12, 2008. Trademark Rule 2.196. Applicant acknowledges in its
`motion to Re-Open (footnote 6) that May 12, 2008 was the closing date for discovery under the Trademark Rules.
`
`-2-
`
`

`
`The Board has stated many times that the most important of the Pioneer factors is
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`whether a party’s delay or omission was caused by circumstances within its reasonable control.
`
`Applicant does not seriously contend that
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`its delay in starting discovery within the time
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`prescribed by the Board’s trial order was not within its control. Applicant at all times had full
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`control over whether and when to begin discovery and Applicant’s timing was not dependent or
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`conditioned on whether or when Opposer instituted discovery. Pumpkin Ltd. v. The Seed Corps,
`
`supra, 43 USPQ2d at footnote 7; Old Nutfield Brewing Co. v. Hudson Valley Brewing Co., 65
`
`USPQ2d 1701, 1702 (TTAB 2002). See also, FirstHealth of the Carolinas Inc. v. CareFirst of
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`Maryland Inc., supra, 81 USPQ2d at 1921.
`
`Applicant has been represented by U.S. counsel from the filing of its application on
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`December 22, 2006.
`
`In fact, the application includes a power of attorney appointing Stacey J.
`
`Farmer of Grund Intellectual Property Group located in Munich, Germany, and Ms. Farmer
`
`signed the Declaration supporting Applicant’s application. (Exhibit 1).
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`The Grund Intellectual Property Group website
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`(www.g;3ndipg.com) provides
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`biographical information on its professional staff members.
`
`(Exhibit 2 is a printout of the
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`biographical
`
`information on Ms. Farmer.)
`
`It clearly touts Ms. Farmer’s expertise in U.S.
`
`trademark matters. She is identified as a graduate of Santa Clara University Law School in
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`California, and as “presently on the faculty” there, “where she regularly lectures on topics
`
`relating to U.S. law and procedure.” The Grund website prominently states “U.S. Attorney at
`3
`Law,” noting her membership in the “District of Columbia Bar Association.’ Her areas of
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`practice include “U.S. trademark prosecution,” and the professional experience section of her
`
`biographical data states that she was “formerly associated with the Palo Alto, California office of
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`

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`a prominent New York—based law firm,” and she has “extensive experience in the drafting and
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`prosecution of U.S. ...trademark applications... .”
`
`Applicant’s attorney, Ms. Farmer, continued prosecuting the application, she submitted
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`Applicant’s May 30, 2007 response to the Office Action. (Exhibit 3).
`
`When Schering filed a Request for an Extension of Time to Oppose, the Board sent its
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`September 11, 2007 notice thereof to Stacey Farmer as Applicant’s attorney.
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`(Exhibit 4). After
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`Schering filed its Notice of Opposition,
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`the October 23, 2007 Board order instituting the
`
`proceeding was sent to Ms. Farmer.
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`(Exhibit 5.) Stacy Farmer signed and filed Applicant’s
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`Answer with Affirrnative Defenses at the Board. The cover letter accompanying Applicant’s
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`Answer again lists Ms. Farmer as “U.S. Attorney at Law” with an intellectual property law firm
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`in Germany. (Exhibit 6.)
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`In the June 6, 2008 electronic filing of Applicant’s “Appearance of Counsel/Power of
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`Attorney” with the Board, Applicant’s correspondence address remains Stacey Farmer with
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`Grund.
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`(Exhibit 7.) Ms. Farmer signed the document as “(Current attorney)” and Eric J.
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`Sidebotham signed as “(Additional attorney)” Ms. Farmer and the Grund firm are identified as
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`the attorney and correspondence address in Applicant’s current Motion to Re-Open Discovery.
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`(Exhibit 8.) Clearly, Ms. Farmer remains Applicant’s attorney herein, with an added lawyer who
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`is located in California. Thus, contrary to Applicant’s statement on page 7 of its Motion, there
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`has been no substitute attorney appointed, and Applicant’s power of attorney to Ms. Farmer and
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`her appearance on Applicant’s behalf in this opposition have not been revoked or negated.
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`The prejudice to Opposer in any reopening of discovery is substantial. Opposer
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`commenced this opposition and Opposer acknowledges it chose to wait to serve its discovery
`
`requests. This is entirely Opposer’s choice and is permissible under the Trademark Rules.
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`

`
`Applicant, represented at all times by a US attorney with expertise in trademark matters, had the
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`same opportunity to seek discovery at any time between November 12, 2007 and May 12, 2008.
`
`Applicant apparently chose not to serve any discovery on Opposer. Applicant’s argument that
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`this Motion is “somewhat favorable to Opposer
`
`in that Opposer would now have an
`
`opportunity to serve follow-up discovery” (Motion, page 4) appears generous, but it is specious
`
`and a ruse. Opposer was aware of the stage of discovery when it served its discovery requests on
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`Applicant. Prejudice to Opposer would not be alleviated or avoided simply because Opposer
`
`could seek further discovery from Applicant}
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`Applicant’s failure to act since the opening of discovery on November 12, 2007 is
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`significant both for the parties and the Board. Discovery was open for six-months in this
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`opposition which involves only the question of registrability of the mark. Applicant took no
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`action to obtain discovery from Opposer in all that time. Nor did Applicant move to extend the
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`closing date for discovery. Further, Applicant waited five weeks after the close of discovery to
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`file its Motion to reopen.
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`Following Opposer’s receipt of Applicant’s full and complete
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`discovery responses, this case would be ready to proceed to trial. This is a significant delay in an
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`administrative opposition proceeding and reopening discovery would have a negative impact on
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`the judicial process. See Pumpkin Ltd. v. Seed Corps, supra.
`
`Incredibly, Applicant argues (Motion, page 6) that “the reasons for Applicant’s delay are
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`in major part attributable to circumstances that were unilaterally created by Opposer-including
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`Opposer’s strategy of sandbagging Applicant by initiating onerous discovery after the cutoff
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`date...” This is inaccurate. Opposer’s decision to wait to serve its discovery requests on
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`Applicant is in no way responsible for Applicant’s complete inaction in seeking discovery from
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`3 Applicant references in footnote 4 of its Motion to Re-Open a “mutually acceptable settlement.” Opposer is not
`aware of any settlement proposal.
`
`

`
`Opposer. Hewlett-Packard v. Olympus Corp., 931 F.2d 1551, 18 USPQ2d 1710, 1712 (Fed. Cir.
`
`1991) (“it was incumbent on Hewlett, if it wished to postpone the deadline for taking testimony,
`
`to timely seek an enlargement of its testimony period”; “Olympus was under no affirrnative duty
`
`to remind Hewlett that it had failed to present its case or to properly seek an extension of
`
`Hewlett’s testimony period.”)4 Applicant’s inaction was its own decision independent of what
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`Opposer chose to do with regard to discovery. Further, Opposer was under no obligation to
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`remind Applicant of the closing date for discovery.
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`Applicant knows that Opposer’s discovery requests were served on the closing date not
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`“after the cutoff date.” Applicant knows that the discovery served by Opposer is not “onerous.”
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`If it were onerous, Applicant could have moved for a protective order; Applicant did not. The
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`failure by Applicant
`
`to serve discovery is an improper response to Opposer’s discovery.
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`Furthennore, it was a chronologically impossible response. The discovery period closed before
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`Applicant was aware of Opposer’s discovery.
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`The fact
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`that Opposer’s counsel conferred with his client before consenting to
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`Applicant’s earlier-filed motion to extend Applicant’s time to answer Opposer’s discovery was
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`reasonable.
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`In any event, this is not at all relevant to why Applicant failed to act for over six
`
`months if it intended to seek discovery in this case. Applicant was aware of the proceeding since
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`it was instituted on October 23, 2007.
`
`In DC Comics and Marvel Characters Inc. v. Margo, 68
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`USPQ2d 1319 (TTAB 2003) (decision not designated by the Board as a precedential decision,
`
`but it appears in the USPQ as cited), the Board denied a pro se party’s motion to reopen
`
`discovery, pointing out that the Board’s “institution order clearly informed [the] parties of
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`4 The Hewlett v. Olympus case involved an older definition and standard for “excusable neglect.” Nonetheless, the
`Court’s comments on a party’s duty to act independently remain valid.
`
`-6-
`
`

`
`pertinent rules and regulations governing [the] instant proceeding,...” and “strict compliance
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`with applicable rules is expected of all parties.”
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`Opposer does not know why Applicant, who has been continuously represented by U.S.
`
`trademark counsel since the filing of its application, chose not to serve discovery or move to
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`extend the closing date of discovery. Nonetheless, that was Applicant’s chosen path and strategy.
`
`Applicant was in complete control of the reasons for its delay in seeking discovery.
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`Applicant complains much about Opposer’s service of discovery, but provides no reasons
`
`for its own failure to timely seek discovery despite its continuous representation by US
`
`trademark counsel, albeit physically located in Germany. Gaylord Entertainment Co. v. Calvin
`
`Gilmore Productions Inc., 59 USPQ2d 1369 (TTAB 2000).
`
`Applicant’s assertion that it has had “difficulties and delays arising from its overseas
`
`location” (Motion, page 6) is not supported in this Motion. There is no specific information
`
`regarding any particular problems encountered by Applicant in this opposition proceeding in
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`which Applicant chose to have a US attorney based in Germany. There is nothing to indicate
`
`that Applicant’s U.S. attorney located in Germany encountered any difficulty or delay in
`
`receiving official USPTO correspondence. Inasmuch as Applicant filed its Answer to the Notice
`
`of Opposition several days before the due date, this indicates USPTO correspondence was timely
`
`received in Germany.
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`Further, in the modern era of virtually instant electronic communications, it stretches
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`credulity that Applicant, its US attorney in Germany, and its additional attorney based in the US,
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`could not consult and coordinate in a timely manner. More to the point, none of this explains
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`Applicant’s failure timely and independently to seek discovery before the closing date on May
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`12, 2008.
`
`

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`The reasons (whatever they were) for Applicant’s decision or simple failure to timely
`
`seek discovery were totally and solely within Applicant’s control.
`
`It is neither harsh nor
`
`inequitable to deny Applicant’s Motion to Re-Open in the circumstances of this case, where
`
`Applicant is unhappy that Opposer served discovery while Applicant did not. On the contrary,
`
`however, it would be highly inequitable to punish Opposer for timely serving discovery.
`
`Applicant has not met its burden to establish the excusable neglect necessary to reopen
`
`discovery, and discovery should remain closed.
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`Because of the delay occasioned in acting on Applicant’s Motion to Re-Open Discovery,
`
`and the consented extended time for Applicant’s Responses to Opposer’s first set of discovery
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`requests until August 18, 2008, Opposer requests that the Board reset
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`trial dates for this
`
`proceeding.
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`WHEREFORE, Opposer respectfully requests that “Applicant’s Motion to Re-open
`
`Discovery Period” be denied; and that the Board reset trial dates herein.
`
`Respectfully submitted,
`
`SCHERING CORPORATION
`
`
`
`David J. Kera
`
`
`Beth A. Chapman
`Oblon, Spivak, McC1elland,
`Maier & Neustadt, P.C.
`1940 Duke Street
`
`Alexandria, Virginia 22314
`(703) 413-3000
`fax (703) 413-2220
`
`e-mail: tmdocket@oblon.com Date:
`, 7
`
`{l:\atty\ K\l246-314399US—brief.doc}
`
`DJKfl3AC/
`
`i
`
`

`
`EXHIBIT 1
`
`

`
`
`
`Serial Number: 77070074
`
`Trademark/Service Mark Application, Principal Register
`
`Filing Date: 12/22/2006
`
`
`
`The table below presents the data as entered.
`
`
`
`
`
`
`
`707°"
`
`DIRACTIN
`YES
`YES
`DWHN
`
`MARK STATEMENT
`
`APPLICANT INFORMATION
`
`The mark consists of standard characters, without claim to any
`particular font, style, size, or color.
`
`mwkmxwe
`
`cm
`
`011-49-89-3246330
`
`EMAIL ADDRESS
`
`IDEA@IDEA—AG.DE
`
`NAME OF ALL GENERAL PARTNERS, ACTIVE MEMBERS, INDIVIDUAL,
`TRUSTEES, OR EXECUTORS, AND CITIZENSHIPI INCORPORATION
`
`GOODS AND/OR SERVICES SECTION
`
`AKTIENGESELLSCHAFT
`Germany
`DR’
`
`INTERNATIONAL CLASS
`
`005
`
`
`
`
`
`PHARMACEUTICAL PREPARATIONS INCLUDING
`ANALGESIC AND ANTI—INFL-AIMMATORY
`PREPARATIONS: PHARMACEUTICAL PREPARATIONS
`OR DERM AL ADMINISTRATION; PHARMACEUTICAL
`
`
`
`
`DESCRIPTION
`
`

`
`FILING BASIS
`
`SECTION 1(b)
`
`PREPARATIONS FOR MEDICAL OR THERAPEUTIC USE
`INCLUDING, WITI~IOUT LIMITATION, THE
`PREVENTION AND TREATMENT OF PAIN.
`
`ATTORNEY INFORMATION
`
`NAME
`
`ATTORNEY DocI<ET NUMBER
`
`FIRM NAME
`
`STREET
`
`CITY
`
`COUNTRY
`
`ZIP/POSTAL CODE
`
`PHONE
`
`STACEY J. FARMER
`
`I08-007TUS
`
`GRUND INTELLECTUAL PROPERTY GROUP
`
`NIKOLAISTRASSE 15
`
`MUNICH
`
`Germany
`
`80802
`
`O11-49-89—5480190
`
`011-49-89-54801910
`
`EMAIL ADDRESS
`
`FARMER@GRUNDIPG.COM
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`YES
`
`CORRESPONDENCE INFORMATION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`COUNTRY
`
`ZIP/POSTAL CODE
`
`PHONE
`
`STACEY J. FARMER
`
`GRUND INTELLECTUAL PROPERTY GROUP
`
`NIKOLAISTRASSE 15
`
`MUNICH
`
`Germany
`
`80802
`
`011-49-89—5480190
`
`01 1-49-89—54801910
`
`
`
`
`EMAIL ADDRESS
`
`FARMER@GRUNDIPG.COM
`
`AUTHORIZED TO COMMUNICATE VIA EMAIL
`
`YCS
`
`FEE INFORMATION
`NUMBER OF CLASSES
`
`FEE PER CLASS
`
`TOTAL FEE DUE
`
`SIGNATURE INFORMATION
`
`325
`
`325
`
`SIGNATURE
`
`/STACEY J. FARMER/
`
`
`
`
`
`

`
`SIGNATORY'S NAME
`
`A
`
`STACEY J. FARMER
`
`SIGNATORY'S POSITION
`
`DATE SIGNED
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`222045300884964
`
`ATTORNEY OF RECORD
`
`12/22/2006
`
`Fri Dec 22 04:57:41 EST 2006
`
`USPTO/BAS-82.135.89.20-20
`06122204574l644543-770700
`
`74-360f4666b2aa467af9bdaf
`7 8d1db8af33-CC-1 146-20061
`
`
`
`Trademark/Service Mark Application, Principal Register
`
`Serial Number: 77070074
`
`Filing Date: 12/22/2006
`
`To the Commissioner for Trademarks:
`
`MARK: DIRACTIN (Standard Characters, see mark)
`The literal element of the mark consists of DIRACTIN. The mark consists of standard characters, without claim to any particular font, style, size, or
`color.
`The applicant, IDEA AG, a AKTIENGESELLSCHAFT legally organized under the laws of Germany, comprising of PROF. DR. GREGOR CEVC
`(CEO), GERMAN, having an address of FRANKFURTER RING 193a, MUNICH, Germany, 80807, requests registration of the trademark/service
`mark identified above in the United States Patent and Trademark Office on the Principal Register established by the Act of July 5, 1946 (15 U.S.C.
`Section 1051 et seq.), as amended.
`lntemational Class 005: PHARMACEUTICAL PREPARATIONS INCLUDING ANALGESIC AND ANTI-INFLAMMATORY
`PREPARATIONS; PHARMACEUTICAL PREPARATIONS FOR DERMAL ADMINISTRATION; PHARMACEUTICAL PREPARATIONS
`FOR MEDICAL OR THERAPEUTIC USE INCLUDING, WITHOUT LIMITATION, THE PREVENTION AND TREATMENT OF PAIN.
`Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or
`in connection with the identified goods and/or services. (15 U.S.C. Section 105l(b)).
`The applicant hereby appoints STACEY J. FARMER of GRUND INTELLECTUAL PROPERTY GROUP, NIKOLAISTRASSE 15, MUNICH,
`Germany, 80802 to submit this application on behalf of the applicant. The attorney docket/reference number is 108-007TUS.
`Correspondence Information:
`STACEY J. FARMER
`NIKOLAISTRASSE 15
`
`MUNICH 80802, Germany
`011-49-89—5480190(phone)
`011-49-89-5480l910(fax)
`FARMER@GRUNDIPG.COM (authorized)
`A fee payment in the amount of $325 will be submitted with the application, representing payment for l class(es).
`Declaration
`
`The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18
`U.S.C. Section 1001, and that such willful false statements, and the like, may jeopardize the validity of the application or any resulting registration,
`declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the
`trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be
`entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to
`use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection
`with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own
`knowledge are true; and that all statements made on information and belief are believed to be true.
`
`

`
`Signature: /STACEY J. FARMER/ Date Signed: 12/22/2006
`Signatory's Name: STACEY J. FARMER
`Signatory's Position: ATTORNEY OF RECORD
`RAM Sale Number: 1146
`
`RAM Accounting Date: 12/22/2006
`Serial Number: 77070074
`Internet Transmission Date: Fri Dec 22 04:57:41 EST 2006
`
`TEAS Stamp: USPTO/BAS-82.135.89.20-20061222045741644
`543-77070074-360f4666b2aa467af9bdaf78d1d
`b8af33-CC-1146-2006l222045300884964
`
`

`
`

`
`EXHIBIT 2
`
`

`
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`
`EXHIBIT 3
`
`

`
`
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`SERIAL NUMBER
`
`»
`
`77070074
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 103
`
`MARK SECTION (no change)
`
`ARGUMENT(S)
`
`SEARCH RESULTS
`
`Section 2(d) Likelihood of Confusion Refusal
`
`The Examiner presently rejects the proposed mark “DIRACTIN” due to an alleged likelihood of confusion with the registered mark
`
`“VIRACTIN” (U.S. Reg. No. 0846590) in view of the two-part test set forth in In re E. I. du Pont de Nemours & C0,, 476 F.2d 1357, 476 F.2d
`1357, 177 USPQ 563 (C.C.P.A. 1973). Applicants respectfully disagree.
`
`PART 1:
`
`Similarigg in appearance sound connotation and commercial impression.
`
`The Examiner notes that the proposed mark “DIRACTIN” is similar in appearance to the registered mark “VIRACTIN”, differing by a
`
`single letter. Applicant submits that the registered description accompanying “VIRACTlN” makes clear that the mark is restricted to an
`association with goods having an anti-viral agent for preventing colds. The mark itself suggests such a use, being arguably descriptive of its
`
`association, i. e. the first four letters “VIRA” would reasonably lead an ordinary consumer to a rather immediate conclusion that the goods
`
`associated with this mark would relate to viral agents.
`
`By contrast, the mark “DIRACTIN” would relate to pharmaceutical preparations for medical and therapeutic use, i.e., for the prevention
`
`and treatment of pain — and would further encompass dermal preparations thereto. No viral-based applications are contemplated to be associated
`
`with this mark. We note a consumer seeking a therapeutic composition for a viral agent would not likely confuse a “VIRACTII” "'
`
`'
`
`product to be used against viruses with a “DIRACTIN-labeled” pharmaceutical preparation relating to a remedy against pain, ar
`
`based on any identified similarity in appearance or sound.
`
`We further note that there are numerous “like-sounded” and registered marks, belonging to different owners and in the
`
`field. For example, the International Class [005] marks “PAXGENE” and “PAMGENE” are arguably similar in sound and app
`
`ltical
`
`:0
`
`differing in a single letter — an internally situated letter that is arguably more difficult for a consumer to discern than when afirst letter is
`different. Also, the registered marks “BICILLIN” and “TICILLIN” or “OPTIGENE” and “ORIGENE” or “FLUSYD” and “FLUXJD” appear to
`
`exhibit a substantial similarity in sound and/or appearance— yet were evaluated and accepted under the same set of factors being applied to the
`present case.
`
`

`
`PART 2:
`
`Similarig or relatedness of goods and/or services.
`
`
`In evaluating whether two marks are sufficiently similar to generate a likelihood of confusion as to the source of the goods or services,
`the emphasis must be on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.
`Sealea'Air Corp. v. Scott Paper Co., 190 USPQ 106, 109 (TTAB 1975).
`
`
`
`
`
`
`As noted above, the points of comparison for a word mark are appearance, sound, and meaning or connotation. Similarity of the marks
`in one respect (sight, sound or meaning) should not automatically result in a finding of likelihood of confusion, even 1')’the goods are identical or
`closely related. Rather, the rule is that taking into account a_ll of the relevant facts of a particular case, similarity as to one factor alone may be
`sufficient to support a holding that the marks are confusingly similar — but this similarity alone is not conclusive. In re Lamson Oil Co., 6
`USPQ2d 1041, 1042 n.4 (TTAB 1987).
`
`
`
`
`
`
`
`
`
`
`Similarity in meaning or connotation is another consideration in determining whether there is a likelihood of confusion between marks.
`
`The meaning or connotation of a mark must be determined in relationship to the named goods or services. As we described above, using the
`illustrative similar yet registered marks, even those marks which are identical in sound and/or appearance may create sufficiently different
`commercial impressions when applied to the respective parties‘ goods or services so that there is no likelihood of confusion. Also see, e.g., In re
`Sears, Roebuck and C0,, 2 USPQ2d 1312 (TTAB 1987) (CROSS-OVER for bras held not likely to be confused with CROSSOVER for ladies‘
`
`
`
`
`
`
`
`
`sportswear); In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for men's underwear held not likely to be confused with
`PLAYERS for shoes); In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (BOTTOMS UP for ladies‘ and children's underwear held not
`
`likely to be confused with BOTTOMS UP for men's clothing).
`
`
`
`
`Conversely, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same
`persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical,
`CO[1fL1Sl0I1lS not likely. See, e.g., Local Trademarks, Inc. v. Hana)» Boys Inc., 16 USPQ2d 1156 (TTAB 1990).
`
`
`
`
` Accordingly, the mark “VIRACTIN” has been registered with an accompanying description that makes it abundantly clear that this mark
`is to be associated only with named goods involving an anti-viral agent for preventing colds. Applicant’s proposed mark “DIRACTIN” is
`
`contemplated to be associated with a product that lies in a different therapeutic context/market, i.e. a pharmaceutical preparation for the
`
`prevention and treatment of pain, thereby creating a different commercial impression and purpose in the mind of an ordinary consumer.
`
`Consequently, we submit that such ordinary consumer would not experience a likelihood of confusion between the origin of the products
`associated with the two marks in the instant case.
`
`
`
` GOODS AND/OR SERVICES SECTION (current)
`
`DESCRIPTION
`
`
`
`
`
`PHARMACEUTICAL PREPARATIONS INCLUDING ANALGESIC AND ANTI-INFLAMMATORY PREPARATIONS;
`PHARMACEUTICAL PREPARATIONS FOR DERMAL ADMINISTRATION; PHARMACEUTICAL PREPARATIONS FOR MEDICAL
`OR THERAPEUTIC USE INCLUDING, WITHOUT LIMITATION, THE PREVENTION AND TREATMENT OF PAIN
`
`
`
`
`
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`V
`
`Sm 1<b>
`
`DESCRIPTION
`
`
`
`
`
`
`
`
`

`
` "PHARMACEUTICAL PREPARATIONS FOR MEDICAL AND THERAPEUTIC USE NAMELY THE PREVENTION AND TREATMENT
`OF PAIN; PHARMACEUTICAL PREPARATIONS FOR DERMAL ADMINISTRATION, TO TREAT PAIN AND INFLAMMATION."
`FILING BASIS
`
`ADDITIONAL STATEMENTS SECTION
`
`MISCELLANEOUS STATEMENT
`
`SIGNATURE SECTION
`
`DECLARATION SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY‘S POSITION
`
`DATE SIGNED
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY‘S POSITION
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`ADVISORY — COMBINED APPLICATIONS A plicant submits that the present
`application is not be1ng_prosecuted_as a COII1l')lIlC or_ multiple-clas_s application.
`Accordingly, the Exam1ner#_s mentlon of those requirements pertaimn to oods
`and/or services based on an intent-to-use the mark in commerce under
`ra emark Act
`Section 1 b) are deemed not to be a phcable. SIGNIFICANCE OF MARK Apphcant
`h_ereb
`su m_1ts, to the best of their
`owledge, that #DIRACTIN# has _no known
`srgm _cance 1n the ap l1cant#s trade or industry, any geographical significance, or any
`meaning in a foreign anguage.
`
`/STACEYJFARMER/
`
`»
`
`STACEY J. FARMER
`
`ATTORNEY OF RECORD
`
`05/30/2007
`
`/STACEYJFARMER/
`
`STACEY J. FARMER
`
`ATTORNEY OF RECORD
`
`05/30/2007
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`
`
`Wed May 30 10:38:14 EDT 2007
`
`USPTO/ROA-82.135.76.43-20
`070530103814634230-770700
`74—370b95ccded98e2f346b17
`03 Zbl 13ad6c55-N/A-N/A-200
`70530102912332963
`
`.
`
`I
`
`
`
`
`
`Response to Office Action
`
`To the Commissioner for Trademarks:
`
`Application serial no. 77070074 has been amended as follows:
`Argument(s)
`In response to