Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA427590
`ESTTA Tracking number:
`08/29/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91184978
`Defendant
`Walgreen Co.
`MARK J LISS
`LEYDIG VOIT & MAYER LTD
`TWO PRUDENTIAL PLAZA, SUITE 4900
`CHICAGO, IL 60601
`UNITED STATES
`cstevens@leydig.com
`Brief on Merits for Defendant
`Michelle L. Calkins
`mcalkins@leydig.com
`/Michelle L. Calkins/
`08/29/2011
`2011.08.29 Walgreens' Trial Brief (REDACTED).pdf ( 105 pages )(2630997
`bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No. 91 184978
`Serial No. 76/682,070
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`
`McNEIL—PPC, INC,
`
`Opposer,
`
`V.
`
`WALGREEN CO.,
`
`Applicant.
`
`TRIAL BRIEF
`
`OF APPLICANT WALGREEN CO.
`
`Mark J. Liss
`Caroline L. Stevens
`Michelle L. Calkins
`
`LEYDIG, VOIT & MAYER, LTD.
`Two Prudential Plaza, 180 North Stetson Ave.
`Suite 4900
`
`Chicago, Illinois 60601
`(312) 616-5600
`
`Attorneys for Applicant
`WALGREEN CO.
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................................... .. 6
`
`II. DESCRIPTION OF EVIDENCE OF RECORD ............................................................. .. 7
`
`III. STATEMENT OF FACTS ................................................................................................. .. 9
`
`A. Walgreen Company and Its Efforts to Assist Consumers ................................................. .. 9
`B. The WAL—ZYR Name and Product ................................................................................ .. 11
`
`C. Advertising and Selling WAL—ZYR ............................................................................... .. 13
`D.
`Sales of WAL—ZYR Products ......................................................................................... .. 15
`E.
`The ZYRTEC Mark ........................................................................................................ .. 15
`
`ZYRTEC at Walgreens ................................................................................................... .. 17
`F.
`G. A Lack of Consumer Confusion Despite the Coexistence of the Marks ........................ .. 18
`1. Walgreens’ Records .................................................................................................... .. 18
`2. McNeil’s Records ....................................................................................................... .. 19
`
`Simonson Survey ........................................................................................................ .. 20
`3.
`H. Consumer Care................................................................................................................ .. 21
`
`IV. ARGUMENT ..................................................................................................................... .. 22
`
`A. McNeil Does Not Have Priority in This Matter.............................................................. .. 22
`B. Even if McNeil Could Establish Priority, There is No Likelihood of Confusion........... .. 25
`1.
`There are Significant Differences between Applicant’s WAL—ZYR mark and
`Opposer’s ZYRTEC .................................................................................................... .. 26
`2. Opposer’s Mark is Not Strong .................................................................................... .. 29
`3.
`The Goods at Issue Are Purchased With Care and Consideration, and With a
`Knowledge of Private Label or House Brands ........................................................... .. 33
`i.
`Consumer Care in Purchasing ............................................................................. .. 33
`ii. Careful Consumers Know the Private Label / Store Brand Marketplace ........... .. 34
`4. Despite the Opportunity in the Marketplace, the Absence of Actual Confusion Belies
`Any Notion of Likelihood of Confusion ..................................................................... .. 36
`i.
`There is No Direct Evidence of Confusion ......................................................... .. 37
`
`The Simonson Survey Shows Confusion is Not Likely ...................................... .. 38
`ii.
`5. Applicant Did Not Act In Bad Faith ........................................................................... .. 41
`C. McNeil Cannot Succeed On Its Dilution Claim ............................................................. .. 43
`
`ZYRTEC Was Not Famous Prior to Walgreens’ Priority Date .................................. .. 43
`1.
`2. WAL—ZYR Is Not Likely to Dilute the ZYRTEC Mark ............................................. .. 45
`
`V. CONCLUSION ................................................................................................................. .. 48
`
`

`
`TABLE OF AUTHORITIES
`
`Cases
`
`Aloe Cream Labs, Inc. v. Milsan, 165 U.S.P.Q. 37 (Sm Cir. 1979) ............................................ .. 32
`
`American Express Co. v. Payless Cashways, Inc., 222 U.S.P.Q. 907 (T.T.A.B. 1984) ............. .. 28
`
`Anheuser-Busch, Inc. v. Mambo Seafood #1, Inc., No. 91160250, 2008 WL 4674603
`(T.T.A.B. Sept. 22, 2008) ................................................................................................. .. 39, 40
`
`Blue Man Products Inc. v. Tarmann, 75 U.S.P.Q.2d 1811 (T.T.A.B. 2005) .............................. .. 32
`
`Carefirst ofMaryland Inc. v. FirstI-Iealtlz ofCarolinas Inc., 77 U.S.P.Q.2d 1492
`(T.T.A.B. 2005) ................................................................................................................ .. 30, 44
`
`ClzemicalN.Y. Corp. v. Conmar Form Sys., Inc., 1 U.S.P.Q.2d 1139 (T.T.A.B. 1986) ............. .. 22
`
`Citigroup Inc. v. Capital City Bank Group, Inc., 94 U.S.P.Q.2d 1645 (T.T.A.B. 2010) ........... .. 26
`
`Conopco, Inc. v. May Department Stores Co., 32 U.S.P.Q.2d 1225 (Fed. Cir. 1994) ......... .. 34, 35
`
`Eli Lilly & Co. v. Natural Answers Inc., 56 U.S.P.Q.2d 1942 (7th Cir. 2000) ........................... .. 45
`
`Eli Lilly & Co. v. Natural Answers, Inc., 86 F. Supp. 2d 834 (S.D. Ind. 2000) ................... .. 34, 45
`
`General Motors v. Aristide, 87 U.S.P.Q.2d 1179 (T.T.A.B. 2008) ................................ .. 22, 24, 44
`
`Hunt Control Sys. Inc. v. Koninklijke Philips Electronics. N. V., 98 U.S.P.Q.2d 1558
`(T.T.A.B. 2011) ...................................................................................................................... .. 23
`
`In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973)
`
`25, 26
`
`Jacobs v. International Multifoods Corp., 212 U.S.P.Q. 641 (C.C.P.A. 1982) .......................... .. 27
`
`King—Size, Inc. v. Frank ’s King Size Clothes, Inc., 547 F. Supp. 1138, 216 U.S.P.Q. 426
`(S.D. Tex. 1982) ..................................................................................................................... .. 31
`
`Klein—Becker USA, LLC v. Product. Quest Manufacturing, Inc., 429 F. Supp. 2d 1248
`(D. Utah 2005) ............................................................................................................ .. 27, 36, 41
`
`Leading Jewelers Guild Inc. v. LJOWHoldings LLC, 82 U.S.P.Q.2d 1901 (T.T.A.B. 2007)
`
`26
`
`Life Zone Inc. v. Middleman Group Inc., 87 U.S.P.Q.2d 1953 (T.T.A.B. 2008) ................. .. 22, 25
`
`Magnaflux Corp. v. Sonoflux Corp., 109 U.S.P.Q. 313 (C.C.P.A. 1956) ................................... .. 33
`
`Master Builders, Inc. v. Polymerica, Inc., No. 92030392, 2004 WL 407353
`(T.T.A.B. Feb. 24, 2004) ........................................................................................................ .. 37
`
`

`
`McNeil Consumer Brands, Inc. v. US. Dentek Corp., 56 U.S.P.Q.2d 1758 (E.D. Pa. 2000) .... .. 45
`
`McNeil Nutritionals, LLC v. Heartland Sweeteners LLC, NO. 06-5336, 2007 WL 1520101
`(E.D. Pa. 2007) ....................................................................................................................... .. 35
`
`National Pork Board v. Supreme Lobster & Seafood Co., 96 U.S.P.Q.2d 1479
`(T.T.A.B. 2010) ................................................................................................................ .. 43, 44
`
`Nike, Inc. v. Maker, No. 91188789 (T.T.A.B. Aug. 9, 2011) ..................................................... .. 44
`
`Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En I 772,
`73 U.S.P.Q.2d 1689 (Fed. Cir. 2005) ..................................................................................... .. 27
`
`Pfizer, Inc. v. Perrigo Co., 988 F. Supp. 686 (S.D.N.Y. 1997) .................................................. .. 35
`
`Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 212 U.S.P.Q. 246 (1st Cir. 1981) . 37
`
`Precision Foods, Inc. v. Major Products Co., 2001 WL 1131865 (T.T.A.B. Sept. 20, 2001)..... 33
`
`Re/MAXInternati0nal Inc. v. Singh, No. 91175272, 2008 WL 5256414 (T.T.A.B. 2008) ........ .. 26
`
`Smitlzkline Beckman Corp. v. Proctor & Gamble C0,, 223 U.S.P.Q. 1230 (N.D.N.Y. 1984) .... .. 34
`
`Tea Board oflndia v. Republic ofTea Inc., 80 U.S.P.Q.2d 1881 (T.T.A.B. 2006) ................... .. 43
`
`Threshold. TI/Inc. v. Metronome Enterprises. Inc., 96 U.S.P.Q.2d 1031 (T.T.A.B. 2010)
`
`22, 25
`
`Toro Co. v. Grassmasters, Inc., 66 U.S.P.Q.2d 1032 (T.T.A.B. 2003) ...................................... .. 37
`
`Union Carbide Corp. v. Ever—Ready Inc., 531 F.2d 366 (7th Cir. 1976) ............................. .. 39, 40
`
`Statutes
`
`15 U.S.C.§ 1125 ................................................................................................................... .. 15,46
`
`Rules
`
`Federal Rules of Civil Procedure 11 ........................................................................................... .. 29
`
`Trademark Board Manual of Procedure § 539 ........................................................................... .. 29
`
`Treatises
`
`6 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 32:189.. 41
`
`Regulations
`
`37 C.F.R. § 2.120 .......................................................................................................................... .. 7
`
`37 C.F.R. § 2.123 .......................................................................................................................... .. 7
`
`

`
`37 CFR§2.122 ....................................................................................................................... ..7,11
`
`

`
`I.
`
`INTRODUCTION
`
`Walgreen Company (“Walgreens”) is the number one drugstore business in the United
`
`States, whose 8,000 stores across the U.S. and Puerto Rico sell prescription medications and self-
`
`service goods, including food products, seasonal items, over-the—counter (“OTC”) medications,
`
`and beauty products. Each day, several million customers visit Walgreens stores across the
`
`country. Walgreens wants to help these millions of customers shop smarter, shop faster, and
`
`save money. To that end, Walgreens sells a variety of over-the—counter medications under its
`
`own private label. In the over-the—counter health area, Walgreens uses the prefix “WAL—” to
`
`assist consumers in recognizing that the “WAL-” product is Walgreens’ private label form of an
`
`over-the—counter national brand.
`
`In anticipation of the production and sale of a new over-the—counter antihistamine
`
`product, on September 19, 2007, Walgreens applied to register the mark WAL-ZYR on an
`
`intent-to—use basis for “pharmaceuticals, namely, allergy medications.” The WAL-ZYR product
`
`contains the same active ingredient as the ZYRTEC product — cetirizine HCl — and is a value-
`
`priced alternative that gives consumers a choice and allows consumers to buy the same active
`
`ingredient as the national brand.
`
`Well after the September 19, 2007, filing date of the WAL-ZYR application, McNeil-
`
`PPC began using the trademark ZYRTEC under an alleged license. McNeil—PPC (without
`
`joining the owner of the ZYRTEC mark or other licensees) has now opposed Walgreens’
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`application in an attempt to stretch its own rights and influence beyond that to which it is legally
`
`entitled. As will be shown below, McNeil does not have priority over Walgreens, there is no
`
`likelihood of confusion or likelihood of dilution between the ZYTREC mark and Walgreens’
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`WAL-ZYR mark, and ZYRTEC is not “famous” under the statute for purposes of a dilution
`
`claim. In fact, the ZYRTEC mark had very little market recognition on September l9, 2007, the
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`

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`filing date of the WAL-ZYR application. When Viewing the totality of the evidence, it is clear
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`that Walgreens is entitled to a registration of the WAL-ZYR mark and the present opposition
`
`must be dismissed.
`
`II.
`
`DESCRIPTION OF EVIDENCE OF RECORD
`
`By operation of Trademark Rule 2.122, 37 C.F.R. § 2.122, the record includes the
`
`pleadings in this proceeding and the file history of the opposed application. In addition,
`
`Walgreens offered the following evidence during its testimony periodzl
`
`Testimony Depositions
`
`0 Affidavit of Dr. Alex Simonson, presented as Trial Testimony for Walgreen Co.
`pursuant to 37 C.F.R. § 2.123(b) and stipulation by the parties, with Exhibit 1,
`filed with the Board February 23, 2011. Excerpts from Dr. Simonson’s discovery
`deposition were submitted to the Board by stipulation of the parties in place of
`cross— and re—examination of Dr. Simonson, by a filing submitted to the Board
`May 10, 2011.
`
`0 Testimony Deposition of Robert Tompkins, Divisional Vice President and
`General Merchandise Manager of Health & Wellness, Walgreen Company, with
`Exhibits 2-25, held March 28, 2011, and served on Opposer McNeil and filed
`with the Board April 27, 2011.
`
`Notices ofReliance
`
`0 Notice of Reliance on Discovery Deposition Transcripts, with excerpts from the
`March 27, 2009 deposition of Rohonish Hooda pursuant to a Rule 30(b)(6)
`deposition of McNeil—PPC; the August 10, 2009, deposition of Rohonish Hooda;
`and the April 16, 2009, deposition of Robert Tompkins pursuant to 37 C.F.R.
`2.120(f)(4).
`
`0 Notice of Reliance on Discovefl Responses, with excerpts from Opposer’s
`response to App1icant’s Interrogatories, and the general objections lodged to
`Opposer’s definitions and instructions pursuant to 37 C.F.R. § 2.120(j)(5).
`
`0 Applicant’s Notice of Reliance on Official Records, with copies of certified
`registration certificates for Reg. Nos. 2,754,305, 2,704,550, 2,704,551, 2,695,665,
`3,284,281, 3,281,366, 3,281,365, 3,232,266, 3,291,406, 3,087,133, 3,087,132,
`
`1 McNeil has objected to some of the evidence submitted by Walgreens. Walgreens responds to these objections,
`and submits its own objections to some of the evidence submitted by McNeil, in a separately filed Statement of
`Objections.
`
`

`
`3,216,181, 2,803,476, 2,807,947, 2,167,644, 2,167,644, 2,167,642, and 2,167,641;
`
`and copies of the certificates of registration for Reg. Nos. 2,978,561, 3,126,676,
`2,909,394, 3,191,090, 3,347,447, 3,329,286, 3,439,551, 3,474,084, 3,176,416,
`3,105,898, and 3,226,650.
`
`McNeil offered the following additional evidence during its direct and rebuttal testimony
`
`periods:
`
`Testimony Depositions
`
`Testimony Deposition of Rohonish Hooda, Vice~President of U.S. Sales and
`Marketing for Ethicon, Inc., a subsidiary of Johnson & Johnson, with Exhibits 1-
`101.
`
`Affidavit of Giselle Woo, presented as trial testimony by stipulation of the parties,
`with Exhibits 102-106 thereto.
`
`Transcript of the discovery deposition of James Donohue, submitted by
`stipulation of the parties, with Exhibits 1-7 thereto.
`
`Notices ofReliance
`
`Notice of Reliance on Printed Publications, dated January 24, 2011.
`
`Notice of Reliance on Deposition Testimony, dated January 24, 2011.
`
`Notice of Reliance on Official Records, dated January 24, 2011.
`
`Notice of Reliance on Discovery Responses, dated January 24, 2011.
`
`Rebuttal Notice of Reliance on Discovery Responses, dated May 13, 2011.
`
`Rebuttal Notice of Reliance on Internet Materials, dated May 13, 2011.
`
`Rebuttal Notice of Reliance on Deposition Testimony, dated May 13, 2011.
`
`Rebuttal Notice of Reliance on Discovery Responses, dated May 13, 2011.
`
`Rebuttal Notice of Reliance on Official Records, dated May 13, 2011.
`
`

`
`III.
`
`STATEMENT OF FACTS
`
`A.
`
`Walgreen Company and Its Efforts to Assist Consumers
`
`Walgreen Company (“Walgreens”) has approximately 8,000 drugstores across all 50
`
`states of the U.S. and in Puerto Rico. (Tompkins Test. Dep. 4:2-3, 7:5-11, Mar. 28, 2011.) Its
`
`stores sell prescription medications and self-service goods, including food products, seasonal
`
`items, over-the-counter (“OTC”) medications, and beauty products. (Tompkins Dep. 4:2-9.)
`
`Each day, several million customers visit Walgreens stores across the country. (Tompkins Dep.
`
`7:12-18.) The sales revenue for Walgreens in 2010 was approximately $70 billion. (Tompkins
`
`Dep. 7:23-82 1.) In fact, Walgreens is the number one drugstore business in the United States.
`
`(Tompkins Dep. 8:5-7.) Walgreens sells ZYRTEC branded products, as well as its own private
`
`label WAL-ZYR product. (Tompkins Dep. 10:20-11:12.)
`
`Walgreens sells many private label or store brand equivalents of name brand over-the-
`
`counter (“OTC”) medicines. Walgreens uses a “WAL-” naming program for these private label
`
`products, to indicate these products originate from Walgreens. These products are value—priced
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`alternatives for name brand products that offer the price—conscious consumer a less expensive
`
`option. Examples of “WAL-” marks are WAL-ZAN (equivalent to Zantac), WAL-DRAM
`
`(equivalent to Dramamine), WAL-FOUR (equivalent to 4-Way Nasal Spray), WAL-DRYL
`
`(equivalent to Benadryl), and WAL-ITIN (equivalent to Claritin). (Tompkins Dep. 63:7-9; Ex.
`
`18.) Walgreens has obtained several trademark registrations for its “WAL—” marks, which
`
`evidence Walgreens’ ownership of the marks. These marks include:
`
`
`
`
`
`
`
`Citation to the Record
`I
`1 Appl. Ex. 106
`Ap_pl. Ex. 107
`A 1. Ex. 108
`A 1. Ex. 109
`A991. Ex. 110
`
`
`
`Registration No.
`2,754,305
`2,704,550
`2,704,551
`2,695,665
`3,284,281
`
`
`WAL-FOUR
`
`
`WAL-FLU
`
`
`
`
`| WAL-PROFEN
`I WAL-MINIC
`1 WAL-DRAM
`
`
`
`

`
`I
`
`
`
`
`
`Citation to the Record
`A 1. Ex. 111
`
`I
`
`
`
`—l— Registration No.
`| 3,281,366
`3,281,365
`
`
`
`
`3,087,133
`
`
`A 1. Ex. 116
`3,087,132
`
`3,216,181
`117
`
`2,803,476
`
`2,807,947
`
`2,167,644
`
`2,167,644
`2,167,642
`
`2,167,641
`
`
`
`
`
`In choosing the names for its “WAL—” private label brands, Walgreens will “generally try to pick
`
`a name that’s the easiest sounding to the customer .
`
`.
`
`. [One that] communicates that it’s the
`
`national brand equivalent.” (Tompkins Dep. 69:24—70:3.)
`
`Walgreens has been using the “WAL-” naming program since at least as early as 1984.
`
`(See, e.g., Tompkins Dep. Ex. 19 (some Roto excerpts dating back to 1984, such as on page 19-
`
`160).) It advertises its numerous products under this program in a variety of ways, including a
`
`Sunday circular (called a “Roto”) inserted in Sunday newspapers nationwide, on the
`
`Walgreenscom website, MegaSavers, in—store radio, and coupons distributed through the
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`Catalina system. (Tompkins Dep. 72110-7924; Exs. 19-21.) In just eighteen months, from
`
`February 2009 through July 2010, Walgreens sold overunits of “WAL—” branded
`
`products, accounting for nearly in sales. (Tompkins Dep. 8325-11; Ex. 22.) The
`
`evidence is overwhelming that Walgreens has been using the “WAL—” naming program for its
`
`private label OTC medications consistently for many years, and that its “WAL—” named products
`
`enjoy a good level of success with consumers.
`
`10
`
`Mark
`WAL—ZAN
`WAL-SOM
`WAL-PHOSPHATE
`WAL-BORN
`WAL-PROXEN
`WAL-FINATE
`
`
`
`
`
`WAL-MUCIL
`WAL-ITIN
`
`WAL-TAP
`
`WAL—PHED
`
`WAL—H1ST
`WAL-DRYL
`
`WAL—TUSSIN
`
`
`
`
`
`

`
`B.
`
`The WAL—ZYR Name and Product
`
`In keeping with Walgreens’ tradition of offering value-priced alternatives to OTC
`
`medications, Walgreens entered the private label cetirizine HCl market. It chose the name
`
`WAL—ZYR because it “felt that it was a name that conveyed what the product was to the
`
`customer in offering a value proposition tied into the Walgreens heritage.” (Tompkins Dep.
`
`12:10-13.) The name WAL—ZYR, it was felt, conveyed that the product “is national brand
`
`equivalent. It offers really a value proposition to the customer. It really conveys the
`
`equivalency, but also conveys the unique availability of the product at Walgreens.” (Tompkins
`
`Dep. 12:24—13:4.)2 Reflecting its decision to enter the private label cetirizine HCI market once
`
`cetirizine HCl was no longer patented and the product would be made available over-the—counter,
`
`on September 19, 2007, Walgreens filed an intent—to—use trademark application for the WAL-
`
`ZYR mark in connection with “pharmaceuticals, namely, allergy medications.” (Serial No.
`
`76/682,070, made of record in this proceeding by 37 CFR § 2.122.)
`
`Walgreens takes efforts to ensure its products are of a good quality for consumers.
`
`(Tompkins Dep. l4:3—5.)
`
`Walgreens currently sells at least 14 different item codes, or “WICS,” for the WAL-
`
`ZYR product. (Tompkins Dep. 22: 1-4; Ex. 5.) The WAL—ZYR product is sold in a couple of
`
`different forms — some in a child-safe blister pack, other pill counts in a bottle — all for the
`
`convenience of the customer. (Tompkins Dep. 26:3-24; Exs. 4, 6, 7.) Walgreens’ product
`
`packaging for the WAL~ZYR product looks like this:
`
`2 McNeil attempts to twist Mr. Tompkins’ words in its brief on p. 17. There, McNeil uses the phrase “conveying a
`connection” to suggest what it thinks Walgreens intended to do. However, Mr. Tompkins actually said “I believe
`this is supposed to communicate the ability ofthe name to convey equivalence.” (Opp. Ex. 107 at 66:3-5.) Thus, as
`is evident from the discovery deposition testimony cited by McNeil and the testimony deposition offered by
`Walgreens in this matter, the name is intended to convey equivalence to the ZYRTEC product, not a connection.
`See also Opp. Ex. 107 at 140122-141 :10.
`
`11
`
`

`
`In designing the product packaging, Walgreens has included material and verbiage to provide the
`
`consumer information on the product. Walgreens includes such elements as:
`
`‚ “Compare to Zyrtec active ingredient”
`‚ “All Day Allergy”
`‚ “Indoor & Outdoor Allergies”
`‚ “24 Hour Relief of: runny nose, itchy, watery eyes, sneezing, itchy throat or nose”
`‚ A clock
`‚ The generic name of the active ingredient – cetirizine HCl
`‚ “Antihistamine”
`‚ Directions for taking the product
`‚ The WALGREENS mark
`‚ The Walgreens’ W Stylized trademark
`‚ www.walgreens.com
`
`(Tompkins Dep. 17:8-21:19; Exs. 4, 6, 7.) These elements are on the packaging to make it clear
`
`to the consumer what the product does, and what it is intended for. (Tompkins Dep. 18:18-19.)
`
`The packaging also uses the color green. This coloring is used to indicate an active
`
`ingredient equivalency to the ZYRTEC product, as well as to make the consumer shopping
`
`experience easier, as consumers tend to look for color blocks to find the products they are
`
`looking for—green is a common color used within the allergy category, so consumers looking
`
`for allergy medication will seek out green packaging. (Tompkins Dep. 21:1-14.)
`
`12
`
`

`
`The WAL-ZYR target consumer is a consumer looking for relief from their allergy
`
`symptoms for themselves or their families, and are often value-ended (or price conscious)
`
`shoppers. (Tompkins Dep. 61:18-23.)
`
`C.
`
`Advertising and Selling WAL-ZYR
`
`In-store, the WAL-ZYR product is located in the allergy section and on shelves above,
`
`below, or next to the ZYRTEC product. (Tompkins Dep. 47:21-50:23; Exs. 14-16.) This is
`
`similar to the placement of other “WAL-” brand products, which are placed next to or otherwise
`
`very close to their national brand equivalents. (Id.) In many cases, there is a “Compare and
`
`Save” sign placed next to the Walgreens brand product to show the savings for the Walgreens
`
`brand product as compared to the national brand. (Tompkins Dep. 51:19-52:3; Exs. 14-16; see,
`
`e.g., Ex. 14 p. 11 or W5424.) Consumers thus are presented with shelves in the respiratory
`
`health aisle showing the WAL-ZYR product adjacent to the ZYRTEC product, giving consumers
`
`a visual impression similar to the following images:
`
`
`
`
`
`
`
`13
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`
`
`
`
`

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`The WAL—ZYR product is advertised in a variety of ways, including a Sunday newspaper
`
`insert (called the “Roto” or “circular”), in-store closed circuit radio advertisements, and in-store
`
`discount programs. (Tompkins Dep. 2427-19.) The Sunday circulars, or “Rotos,” are inserted
`
`into Sunday newspapers across the country. (Tompkins Dep. 27:15-21; Ex. 8.) The weekly
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`Sunday distribution of the Roto is approximately 50-60 million. (Tompkins Dep. 28:13-17.)
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`The WAL—ZYR product is advertised approximately every other week in a Walgreens Roto.
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`(Tompkins Dep. 28:18-24.) Sometimes in these Rotos, the WAL—ZYR product is advertised next
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`to other “WAL—” branded products; other times, the WAL—ZYR product is advertised next to a
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`ZYRTEC product and/or with “Compare to ZYRTEC language.” (Tompkins Dep. 29: 1-31:15;
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`Ex. 8.)
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`The WAL—ZYR product is also advertised in-store in a number of ways, including, but
`
`not limited to, through the in-store radio, (Tompkins Dep. 32:9-33: 16; Ex. 9), through an in-store
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`coupon book distributed in Walgreens stores and offered to customers near the front of the store,
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`(Tompkins Dep. 34:1-17; Ex. 10), and through the Walgreens Mega-Saver. The Mega—Saver is a
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`promotional event held in stores, where the price of an item is reduced. The reduced price is
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`communicated to consumers through a shelf tag that is placed on the shelf directly in front of the
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`product on sale. (Tompkins Dep. 39:17-41:11; Ex. 12.) Walgreens also advertises the WAL-
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`ZYR product through an in-store Catalina ad, or a coupon that prints out at the register via a
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`special Catalina coupon machine. (Tompkins Dep. 41:18-42:6.)
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`The WAL—ZYR product is also advertised online, through the Walgreens.com website.
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`(Tompkins Dep. 37:20-39:11; Ex. 11.) Through its online advertisements, and other promotions
`
`such as Rotos, Mega—Savers, and other coupons, the WAL—ZYR product is advertised regularly
`
`across the country. (Tompkins Dep. 42:15-18; 46:1-3; Ex. 13.)
`
`14
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`

`
`D.
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`Sales of WAL-ZYR Products
`
`While the application at issue is still based on an intent-to—use, and thus has a priority
`
`date of September 19, 2007, the mark has since been used on products sold in the United States.
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`The WAL-ZYR product is sold only in Walgreens stores and online through the Walgreens.com
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`website. (Tompkins Dep. 56:2—6.) Walgreens has sold the WAL-ZYR product without
`
`interruption from the week ending January 15, 2008 to the present. (Tompkins Dep. 61: 10-12.)
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`From the week ending January 15, 2008, through October 16, 2010, alone, Walgreens sold-
`
`units of WAL-ZYR products, which account for
`
`Redacted
`
`in sales.
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`(Tompkins Dep. 59: 1—61:2; Ex. 17.) Walgreens has continued to sell the WAL-ZYR product
`
`since October 16, 2010. (Tompkins Dep. 61:10-12.)
`
`E.
`
`The ZYRTEC Mark
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`According to studies surveying only allergy sufferers and conducted at the time the
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`ZYRTEC product launched as an OTC product, January 2008, the unaided awareness of the
`
`ZYRTEC mark was“. (Hooda Test. Dep. 182: 18-22, Jan. 13, 2011.) The survey universe
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`for these studies was
`
`R9d3Ct€‘d
`
`unaided awareness of the ZYRTEC mark by the “general consuming public of the United States”
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`as of September 19, 2007. See, e.g., 15 U.S.C. § 1125(0) (definition ofa “famous” mark).
`
`Currently, the ZYRTEC product has a 22% market share. (Hooda Dep. 71 :7-9.) The
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`number one allergy medicine, Claritin, has a 27% market share. (Hooda Dep. 71:14-15.) The
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`number three allergy medication, Benadryl, has a 9% market share. (Hooda Dep. 71:10-13.)
`
`15
`
`

`
`The owner of the ZYRTEC word mark is UCB Pharma, S.A. (Opp. Ex. ll0.)3 At some
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`point in the past, Pfizer, Inc. began using the ZYRTEC mark in connection with a prescription
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`allergy product. In February 2006, UCB Inc. (not UCB Pharma, S.A.) entered into a license with
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`Wamer—Lambert to promote and distribute the ZYRTEC product as an over-the-counter
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`medicine. (Opp. Ex. 1.)
`
`
`
`Redacted
`
`. At all times, Pfizer (not a
`
`party to this opposition) appears to have maintained its rights in advertising and distributing the
`
`prescription ZYRTEC product given the wording of these agreements and as evidenced by
`
`Pfizer’s continued advertising and distributing of the prescription ZYRTEC product for more
`
`than a year after the signing of these agreements. (See, e.g., Opp. Ex. 77 (showing sales by
`
`Pfizer continuing into 2007).) The record does not indicate that Wamer—Lambert ever sold
`
`ZYRTEC product in either OTC or prescription form.4
`
`3 McNei1’s Notice of Reliance on Official Records, dated January 24, 2011, indicates the ZYRTEC mark is owned
`by UCB Inc. However, as is seen from the USPTO records (See Opp. Exs. I10-112), the true owner of record is
`UCB Pharma, S.A., an apparent separate entity whose relation to UCB Inc. is overlooked by McNeil and unknown
`in this matter.
`
`4 The record also includes Opp. Ex. 80, which is an amendment to the February 2006 license between UCB Inc. and
`McNeil—PPC. This license is not relevant to the present discussion of chain of rights, as the agreement was signed in
`2010 (well after this opposition began), is not retroactive, and essentially serves to show McNeil is a licensee of
`UCB Inc.
`
`16
`
`

`
`Walgreens includes below what it believes to be a graphical representation of the licenses
`
`and rights in the ZYRTEC mark as shown through the documents of record in this matter for the
`
`Board’s convenience:
`
`Redacted
`
`F.
`
`ZYRTEC at Walgreens
`
`Walgreens has continuously sold the OTC ZYRTEC product since its over~the—counter
`
`launch in January 2008 to the present. (Tompkins Dep. 61:13-15.) Currently Walgreens sells
`
`over 10 different WICS (“Walgreen Inventory Code” — an internal Walgreens code
`
`corresponding to an item) for the ZYRTEC product. (Tompkins Dep. 2319-21.) In the time
`
`period from the week ending January 15, 2008 through October 16, 2010, Walgreens has sold
`
`Redacted
`
`units of ZYRTEC products, which account for approximately Redadfed in
`
`sales. Walgreens has continued to sell the ZYRTEC product since October 16, 2010. (Tompkins
`
`17
`
`

`
`Dep. 61:13-15.) Walgreens also engages in advertising for the ZYRTEC product, as shown in its
`
`Rotos, for example.
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`(See, e.g., Ex. 8, p. 25 or W1429.)
`
`McNeil has continued to sell and advertise ZYRTEC in Walgreens stores since this
`
`proceeding began. (Appl. Ex. 101, p. 101-6, 63:15-21.) In most cases, the ZYRTEC product has
`
`been and continues to be sold side by side or otherwise very near the WAL—ZYR product in
`
`Walgreens stores. (Tompkins Dep. 47:21-50:23; Exs. 14-16.)
`
`G.
`
`A Lack of Consumer Confusion Despite the Coexistence of the Marks
`
`1.
`
`Walgreens’ Records
`
`Walgreens tracks consumer comments received through its customer hotline, email or
`
`through the mail.5 (Tompkins Dep. 84:6-9; 85:4-10.) These comments are “closely” tracked,
`
`and “accurately record[ed].” (Tompkins Dep. 84:8-9, 22-23.) After a review of all comments it
`
`is aware of which mention WAL—ZYR and/or ZYRTEC, Walgreens is not aware of any instance
`
`where a customer has been confused. (Tompkins Dep. 90:13-17; 91:20-23; 92:2-8.) In fact,
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`many comments evidence a recognition that the WAL—ZYR product is different from the
`
`ZYRTEC product, such as:
`
`Comment
`
`“Cmr purchased Walgreens version of Zyrtec last
`week
`Crnr prefers the Wal—Zyr to the Zyrtec as
`it is less expensive and just as effective.
`Unfortunately she purchased the Zyrtec
`
`___l
`
`yesterday. . .”
`
`“Walgreens now carries a generic form of LIQUID
`Zyrtec...”
`
`Citation to the Record
`
`Ex. 23, p. 3 or W1645
`also located at Ex. 24 p.
`13 or W1709
`
`Ex. 23, p. 16 or W1658
`also located at Ex. 24 p.
`139 or Wl983
`
`
`
`“Cmr was glad to see that Walgeens is selling Wal—
`Zyr/Zyrtec equivalent at prices substantially less
`than brand name...”
`
`
`
`Ex. 23, p. 17 or Wl659
`also located at Ex. 24 p.
`
`146 or W1741
`
`5 It is true that Walgreens does not necessarily track every comment overheard in a Walgreens store. With 8,000
`stores nationally and several million customers daily, to have such a system would simply be too burdensome on
`store employees. However, every comment coming into Walgreens through the hotline, email, or mail, including
`some phone calls from store employees, is carefully tracked and recorded. (Tompkins Dep. 84:6-9; 8514-10.)
`
`18
`
`

`
`I
`Citation to the Record
`
`Ex. 25, p. 15 or W5758
`
`
`
`
`
`l Comment
`“recently purchased Wal-ZYR D because its [sic]
`better priced that [sic] Zyrtec-D. . .” Also, this
`customer recognized the WAL—ZYR product as a
`“Walgreens product[].”
`
`In light of the