Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA430809
`ESTTA Tracking number:
`09/16/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91192046
`Plaintiff
`Aventis Pharmaceuticals Inc
`G MATHEW LOMBARD
`LOMBARD & GELIEBTER LLP
`1115 BROADWAY12 FL
`NEW YORK, NY 10010
`UNITED STATES
`mlombard@lgtrademark.com
`Rebuttal Brief
`G. Mathew Lombard
`mlombard@lgtrademark.com
`/g mathew lombard/
`09/16/2011
`OppReplyBrief_print.pdf ( 41 pages )(3541324 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91192046
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`Atty. Ref.: 101.0906
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`AVENTIS PHARMACEUTICALS INC.,
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`Opposer,
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`v.
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`HEAL THE WORLD INC.,
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`Applicant.
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`OPPOSER’S REPLY BRIEF
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`INTRODUCTION
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`Pursuant to 37 CFR § 2.128(a)(1) and TBMP § 801.02(c), Opposer submits herewith its
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`Reply Brief.1
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`Applicant raises several questions in its brief; however, it provides little in the way of
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`facts or argument. On page 12, Applicant asks, “If there is no per se rule about restaurant
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`services and food products, why does Opposer want to create one in International Class 5 when
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`there is a difference between supplements and drugs?;” on page 15: “This is a famous mark?;”
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`on page 15: “And why are more recent years, such as 2009 and 2010 not available?;” on page 15,
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`again: “Is it because Opposer knows that its market share continues to slip now that it is under
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`10% and in single digits, therefore becoming less and less famous?;” and on page 16: “What
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`would then be a significant period of time?” Regrettably, Applicant offers very little in the way
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`of evidence or affirmative argument. Asking questions is neither evidence nor argument. While
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`Applicant may question certain of Opposer’s arguments, its glaring failure to offer it own
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`arguments or counter facts does not amount to any counter-evidence or counter-argument.
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`1 At the time of filing of the instant Reply Brief, the TTABVue online system does not reflect a filing date for Applicant’s Trial
`Brief. However, Applicant’s Trial Brief was served on Opposer on September 2, 2011. Therefore, in order to not delay the
`instant proceeding and to ensure Opposer’s Reply Brief is deemed timely filed, Opposer submits herewith its Reply Brief
`pursuant to 37 CFR § 2.128(a)(1) and TBMP § 801.02(c).
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` OPPOSER’S REPLY BRIEF
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`

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`
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`INTRODUCTION…………………………………………………………………………1
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES……………………………………………………………...3
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`EVIDENTIARY OBJECTIONS………………………………………………………….4
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`I.
`II.
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`LIKELIHOOD OF CONFUSION ………………………………………………………..5
`a. The Respective Marks Are Identical or Substantially Similar …………...........................5
`b. The Parties’ Goods are Identical for Purposes of this Analysis …………………………..8
`c. The Channels of Trade are Identical……………………………………………………..15
`d. The Conditions Under Which & To Whom Sales Made………………………………...16
`e. The Fame of the NASACORT Mark……………………………………………………17
`f. The Extent of Potential Confusion – Doctrine of Greater Care………………………….19
`g. Any Doubt Should be Resolved in Opposer’s Favor…………………………………….20
`III.
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`CONCLUSION……………….………………………………………………………….21
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` OPPOSER’S REPLY BRIEF
`Page 2 of 21
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`TABLE OF AUTHORITIES
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`
`Cases
`Alfacell Corp. v. Anticancer Inc., 71 U.S.P.Q.2d 1301, 2004 WL 1631116 (T.T.A.B. 2004) .................................... 20
`Bose Corp. v. QSC Audio Products, 293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002) ....................................... 18
`Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) .................................... 6
`Chemical New York Corp. v. Conmar Form Systems Inc., 1 USPQ2d 1139 (TTAB 1986) ........................................ 13
`Citigroup Inc. v. Capital City Bank Group, 637 F.3d 1344 (Fed. Cir. 2011) is .......................................................... 15
`Clifton v. Plough, Inc., 52 C.C.P.A. 1045, 341 F.2d 934, 936, 144 U.S.P.Q. 599 (1965) ........................................... 20
`Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456, 56 U.S.P.Q.2d 1942 (7th Cir. 2000) .................................... 19
`Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1268 (T.T.A.B. 2003) ........................................................................... 15
`Glenwood Laboratories, Inc. v. American Home Products Corp., 59 C.C.P.A. 948, 455 F.2d 1384, 1387, 173
`U.S.P.Q. 19 (1972) .................................................................................................................................................. 20
`In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) ............................................................................. 6
`In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) ................................................................. 10
`In re Jeep Corp., 222 USPQ 333 (TTAB 1984) ............................................................................................................ 9
`In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984) ................................. 13
`In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174 (Fed. Cir. 2004) ......................................................................... 5
`Interlego AG v. Abrams / Gentile Entertainment, Inc., 63 U.S.P.Q. 2d 1862 (T.T.A.B. 2002) ..................................... 7
`Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 227 U.S.P.Q. 541, 542 (Fed. Cir. 1985) ....................................... 19
`L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) ................................................................................. 8
`Morgenstern Chemical Co. v. G. D. Searle & Co., 253 F.2d 390, 393, 116 U.S.P.Q. 480 (3d Cir. 1958) .................. 20
`Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 12 U.S.P.Q.2d 1901, 1902 (Fed. Cir. 1989)............................................ 18
`On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000) .............................. 8
`Palm Bay Imports, Inc. v Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689,
`1695 (Fed; Cir. 2005) .............................................................................................................................................. 18
`Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000) ....................................... 17
`Syntex Laboratories, Inc. v. Norwich Pharmacal Co., 437 F.2d 566, 169 U.S.P.Q. 1 (2d Cir. 1971)......................... 20
`TBC Corp. v. Holsa, 44 U.S.P.Q.2d 1315, 1318 ......................................................................................................... 20
`Tempur World, LLC, et al. v. Imperial Bedding, 2009 WL 1017289 at * 6 (TTAB 2009) ......................................... 18
`University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703
`F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983) ............................................................................................................ 10
`Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) ............................. 7
`
`Rules
`TBMP § 704.05(b) ..................................................................................................................................................... 4, 5
`TBMP § 801.02(c) ......................................................................................................................................................... 1
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`Regulations
`37 CFR § 2.128(a)(1) ..................................................................................................................................................... 1
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` OPPOSER’S REPLY BRIEF
`Page 3 of 21
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`I. EVIDENTIARY OBJECTIONS
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`In Opposer’s Trial Brief, Opposer objected to the admission and consideration of
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`Applicant’s expert opinion of Ms. Dawn Johnson on the grounds that Ms. Johnson’s experience
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`does not qualify her as an expert regarding any issue before the Board and because the content of
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`her report does not in fact contain any expert opinion; rather, it contains a recitation of facts that
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`should be admitted via other methods, and is titled a “Brand Comparison” report. See OPP. TR.
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`BR. at 8 – 10.
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`In Applicant’s Trial Brief, it suggests that Opposer has objected to Ms. Johnson’s report
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`“as being untimely”. APP. TR. BR. at 5. This is not true. Opposer objected to the admission and
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`consideration of Ms. Johnson’s report on the grounds that Ms. Johnson’s experience does not
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`qualify her as an expert on any subject in this proceeding and, even assuming she is qualified as
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`an expert in some relevant matter, her report simply contains no opinion. OPP. TR. BR. at 8 - 10.
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`It merely recites facts, which do not offer any “scientific, technical, or other specialized
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`knowledge [that] will assist the trier of fact to understand the evidence or to determine a fact in
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`issue”. For those reasons, the Board should give no consideration to Ms. Johnson’s report.
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`Opposer further objects to Applicant’s reliance on, and arguments based on, the
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`following: the price of Opposer’s product, APP. TR. BR. at 12 – 13, and the Wall Street Journal
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`article. APP. TR. BR. at 15, n. 3. Applicant introduced no evidence concerning the price of
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`Opposer’s product. “A brief may not be used as a vehicle for the introduction of evidence.”
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`TBMP § 704.05(b). Likewise, Applicant did not introduce the Wall Street Journal article as
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`evidence. Opposer objects to this material because it was not introduced as evidence by
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`Applicant during its trial or testimony period. Moreover, while Applicant has provided a link to
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`the article, the online link requires a paid subscription to access the same. In light of the fact that
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`this article was not properly introduced by Applicant, Applicant did not submit a copy of the full
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`article as an attachment to its brief, and Opposer is unable to access the article without a paid
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` OPPOSER’S REPLY BRIEF
`Page 4 of 21
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`subscription, the Board should not consider this material or any arguments based thereon. “A
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`brief may not be used as a vehicle for the introduction of evidence.” Id.
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`II. LIKELIHOOD OF CONFUSION
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`a. The Respective Marks are Identical or Substantially Similar
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`While it is true that “courts may analyze all components of the mark in determining
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`whether those parts, taken together, merely describe the goods or services offered,” In re
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`Oppedahl & Larson LLP, 373 F.3d 1171, 1174 (Fed. Cir. 2004), the marks must, in the end, be
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`considered in their entireties.
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`Applicant appears to argue that Opposer’s NASACORT mark is merely descriptive.
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`First, Applicant never asserted any affirmative defense or otherwise pleaded that Opposer’s
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`NASACORT mark is merely descriptive.
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`Moreover, the U.S. Patent & Trademark Office issued a certificate of registration to
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`Opposer for its NASACORT mark. The Examining Attorney never raised descriptiveness as an
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`issue. No third party opposed Opposer’s NASACORT application on the ground that it is
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`merely descriptive.
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`Even assuming arguendo that Opposer’s mark was suggestive at the time of filing or at
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`the time the certificate of registration issued, Opposer’s mark was in use in commerce since 1991
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`– for nearly 20 years before Applicant’s filing date and before Applicant’s date of first use – and,
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`therefore, Opposer’s mark had become uniquely and exclusively with Opposer and had acquired
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`secondary meaning. Moreover, Opposer has expended significant sums promoting and
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`advertising its NASACORT product. OPP. TR. BR. at 15 – 16. For these reasons, Applicant’s
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`arguments are without merit.
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` OPPOSER’S REPLY BRIEF
`Page 5 of 21
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`Contrary to Applicant’s contention, a significant thought process is required to make the
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`leap from NASACORT to “nasal corticosteroid”. Of course, one need not engage in a
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`significant thought process. One need in the most basic of thought processes. If the mental leap
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`between the word and the product’s attributes is not almost instantaneous, this strongly indicates
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`suggestiveness, not direct descriptiveness. Self-Realization Fellowship Church v. Ananda
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`Church of Self-Realization, 59 F.3d 902, 911, 35 U.S.P.Q.2d 1342 (9th Cir. 1995) ( “Self-
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`Realization” was held descriptive of books, tapes and classes related to spiritual improvement
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`through yoga, in part because no mental leap was required to conclude that such items were
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`“designed to help readers achieve higher consciousness.”) Here, the leap is not almost
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`instantaneous. This is true given Applicant’s explanation of its own reasoning in explaining
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`Opposer’s mark. Applicant’s mark is not merely descriptive.
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`To the extent that Applicant argues that “Applicant’s marks are pronounced differently
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`than Opposer’s Mark,” this argument is irrelevant and without merit. “[T]here is no correct
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`pronunciation of a trademark,” In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA
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`1969), because it is impossible to predict how the public will pronounce a particular mark.
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`Therefore, “correct” pronunciation cannot be relied on to avoid a likelihood of confusion.
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`Centraz Industries Inc. v. Spartan Chemical Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006).
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`
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`Since there is no correct pronunciation of a mark, Applicant’s claim that Opposer’s
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`argument that the letter “t” and the plus sign (“+”) are visually (and perhaps phonetically) similar
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`cannot survive any scrutiny. If there is no correct pronunciation of a mark, Applicant cannot call
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`Opposer’s argument ridiculous “because the pronunciation is different and ordinary speakers of
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`the English language can tell the difference between + and “t” (emphasis added). Applicant’s
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`argument in this regard is predicated on the assumption that consumers will recognize the
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`difference between “+” and “t”. In light of the placement of these elements in the respective
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`marks, Applicant’s assumption is unfounded. Further, Applicant has offered no evidence that
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` OPPOSER’S REPLY BRIEF
`Page 6 of 21
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`consumers – whose recall is imperfect – would readily perceive the difference between “t” and
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`“+”. The premise of Opposer’s argument is that consumers would first have to recognize the
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`visual difference between “t” and “+,” of which there is no guarantee. Opposer does not argue
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`that consumers do not understand the difference between the letter “t” and the plus (+) symbol.
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`Opposer argues that consumers will not necessarily immediately perceive the difference upon
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`viewing the parties’ marks. Since Applicant’s mark is a word mark without any design or
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`limitation on its presentation, Applicant is free to use its mark in any style, font or typeface. See
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`below:
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`/D]DFRU 1DVDFRUW
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`Marks may be confusingly similar in appearance despite the addition, deletion, or substitution of
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`letters or words. Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840
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`(Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for systems software).
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`Opposer takes this opportunity to remind the Board that in Interlego AG v. Abrams /
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`Gentile Entertainment, Inc., 63 U.S.P.Q. 2d 1862 (T.T.A.B. 2002), comparing the marks LEGO
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`and MEGO and finding a likelihood of confusion existed, this Board concluded that “the
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`feminine name ‘Meg’ and the word ‘leg’ are extremely similar in sound. Indeed, they rhyme.”
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`In the instant case, the phonetic similarities are analogous to those present in the Interlego case.
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`Indeed, as in Interlego, LAZA– and NASA– rhyme. Moreover, –ASACORT and –AZACOR
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`also rhyme. Opposer’s mark begins with the letter “N” and Applicant’s mark begins with the
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`letter “L” (compare to Interlego where opposer’s mark began with “L” and applicant’s mark
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`began with “M” (phonetically and visually very similar to “N”)). Leaving the first letters aside,
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`the remainders of the marks are nearly identical: –AZACOR and –ASACORT. Opposer
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`submits that Lazacor (and Lazacor+) and NASACORT, like MEGO and LEGO, rhyme.
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` OPPOSER’S REPLY BRIEF
`Page 7 of 21
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`Thus, inasmuch as the Board found a likelihood of confusion between MEGO and
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`LEGO because they rhyme, it follows that a likelihood of confusion should be found between
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`NASACORT and Lazacor/Lazacor+ because they, too, rhyme.
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`b. The Parties’ Goods are Identical for Purposes of this Analysis
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`Applicant argues that the identification of goods themselves establish that the goods are
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`different. Specifically, Applicant argues that because its goods are identified as “homeopathic
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`supplements,” they are different. Likewise, it concludes that, on the same basis, the channels of
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`trade are different.
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`Applicant argues that federal law or U.S. Food & Drug Administration (“FDA”)
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`regulations distinguish between “drug” and “supplements”. However, the average consumer is
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`unlikely to appreciate – let alone be aware of – the statutory or regulatory differences between
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`drugs and supplements. This is particularly true given that prescription pharmaceuticals, over-
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`the-counter pharmaceuticals, dietary supplements and homeopathic supplements are (or may be)
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`sold and offered for sale through the same channels, namely, in drugstores, in department stores,
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`in pharmacies, in print media, television media and via the internet.
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`Further, the fact that the same agency – the FDA – regulates both “drugs” and
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`supplements enhances – rather than distinguishes – the similarity between the products. Since
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`both are regulated by the same body, consumers are likely to believe the respective goods are
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`related. Therefore, despite Applicant’s argument that “different areas of law” control the parties’
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`products, both parties’ products are regulated by the same agency – the FDA.
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`The respective goods need not be identical in order to conclude that they are similar or
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`would likely to result in a likelihood of confusion. On-line Careline Inc. v. America Online Inc.,
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`229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc.,
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`748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); L.C. Licensing, Inc. v. Berman, 86 USPQ2d
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`1883 (TTAB 2008); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Jeep Corp.,
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` OPPOSER’S REPLY BRIEF
`Page 8 of 21
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`222 USPQ 333 (TTAB 1984). Therefore, whether supplements are identical to (or the same as)
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`“drugs” is immaterial. They need only be sufficiently similar so that a likelihood of confusion
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`exists.
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`For that reason, whether the parties’ products are corticosteroids, other classes of
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`prescription products, over-the-counter products, or supplements, they are identical, similar or
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`related. Further, while Applicant emphasizes that dietary supplements may be vitamins,
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`minerals, herbs, other botanicals, amino acids, enzymes, organ tissues, glandulars, metabolites,
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`etc., so, too can pharmaceuticals be derived from such sources. Many cancer treatments are
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`derived from the bark of the Yew tree. Likewise, potassium, or Vitamin K, is a both a vitamin
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`supplement and a prescription pharmaceutical product that is used to treat blood disorders. Thus,
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`this distinction is immaterial.
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`While Opposer continues to maintain that the relevant goods are those contained in
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`Applicant’s application, Applicant has sought to use its product label to support its argument that
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`its products are supplements and are, therefore, distinguishable. Opposer directs the Board’s
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`attention to the same document, APP. RESP. DOC. REQ., EX. A.
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`Applicant argues that “Lazacor is not intended for the use in the diagnosis, cure,
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`mitigation, treatment, or prevention of disease in man or other animals.” APP. TR. BR. at 11.
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`Insofar as Applicant has referenced its own discovery responses, Opposer points to Exhibits A
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`and B of Applicant’s responses to OPPOSER’S FIRST SET OF REQUESTS FOR THE PRODUCTION OF
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`DOCUMENTS AND OTHER THINGS. Applicant believes this document supports two propositions:
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`1) that its products are supplements and, therefore, 2) its products are distinguishable. However,
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`rather than indicating that its product is a “homeopathic supplement,” it in fact reads that
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`Applicant’s product is a “homeopathic remedy”. A “remedy” is defined as “[a] medicine or
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`treatment for a disease or injury.” See EXHIBIT A. remedy. Dictionary.com. Dictionary.com
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`Unabridged. Random House, Inc. http://dictionary.reference.com/browse/remedy (accessed:
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` OPPOSER’S REPLY BRIEF
`Page 9 of 21
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`September 14, 2011); remedy. Dictionary.com. Collins English Dictionary - Complete &
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`Unabridged 10th Edition. HarperCollins Publishers.
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`http://dictionary.reference.com/browse/remedy (accessed: September 14, 2011). The Board is
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`permitted to take judicial notice of dictionary definitions of words. University of Notre Dame du
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`Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
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`1372, 217 USPQ 505 (Fed. Cir. 1983) (Board may take judicial notice of dictionary definitions);
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`In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002) (judicial notice taken
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`of online dictionary definition where resource was also available in book form). Opposer
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`requests that the Board take judicial notice of the dictionary definition(s) of the word “remedy”.
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`In the very first sentence of Applicant’s Trial Brief, Applicant writes: “Applicant…is a
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`small start-up selling a product that is a homeopathic, nutraceutical solution to sexual
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`dysfunction.” APP. TR. BR. at 4. A nutraceutical is defined as “a foodstuff (as a fortified food
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`or a dietary supplement) that is held to provide health or medical benefits in addition to its basic
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`nutritional value”. nutraceutical. Dictionary.com. Merriam-Webster’s Medical Dictionary.
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`Merriam-Webster, Inc. http://dictionary.reference.com/browse/nutraceutical (accessed:
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`September 15, 2011); EXHIBIT C. Opposer requests that the Board take judicial notice of the
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`dictionary definition(s) of the word “nutraceutical”. Id. Thus, Applicant calls its product a
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`nutraceutical (with a health or medical benefit) and asserts it treats sexual dysfunction. Thus,
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`Applicant has called its product a product that is “held to provide health or medical benefits” to
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`“sexual dysfunction”. Based on Applicant’s own description of its product, its effort to
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`distinguish the parties’ products must fail. Applicant variously refers to its product as a
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`“solution,” “remedy,” “supplement” and “nutraceutical”. Insofar as Applicant has difficulty
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`explaining the nature of its product during this proceeding, it follows that consumers will not
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`fully understand the nature of Applicant’s product since consumers will likely receive the same
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` OPPOSER’S REPLY BRIEF
`Page 10 of 21
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`contradictory information that Applicant has furnished in its discovery responses and its trial
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`brief.
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`Given this reality, Applicant must be barred from arguing that its product is not a remedy
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`or a “medicine”. Applicant markets its products as a “remedy” (i.e., a medicine or treatment) or
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`describes it as a nutraceutical. Despite Applicant’s argument that the DSHEA “requires that
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`every supplement be labeled as a dietary supplement,” APP. TR. BR. at 10, Applicant flouts this
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`requirement by labeling its product a “homeopathic remedy.” Applicant seeks the protection of
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`the DSHEA while actively violating its requirements. Since Applicant markets its supplements
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`as a remedy, consumers will view the product as a “medicine or treatment” or as a nutraceutical.
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`Therefore, confusion is likely.
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`Opposer submits herewith relevant dictionary definitions of the word “supplement”. See
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`EXHIBIT B. supplement. Dictionary.com. Dictionary.com Unabridged. Random House, Inc.
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`http://dictionary.reference.com/browse/supplement (accessed: September 14, 2011) (“something
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`added to complete a thing, supply a deficiency, or reinforce or extend a whole); supplement.
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`Dictionary.com. Collins English Dictionary - Complete & Unabridged 10th Edition.
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`HarperCollins Publishers. http://dictionary.reference.com/browse/supplement (accessed:
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`September 14, 2011). Opposer submits that these definitions are the definitions that the public
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`would consider rather than the highly specialized meaning that the FDA ascribes to supplements
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`and of which the public is unlikely aware. Again, Opposer requests that the Board take judicial
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`notice of the dictionary definition(s) of the word “supplement”.
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`With regard to Opposer’s evidence regarding ZICAM products that are on the market,
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`Applicant misconstrues Opposer’s argument. Contrary to Applicant’s position, Opposer does
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`not “compare Applicant’s product to ZICAM brand homeopathic allergy treatments”. APP. TR.
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`BR. at 10. Similarly, Opposer does not assert that Applicant claims “that its homeopathic
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`supplements are allergy treatments”. Id.
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` OPPOSER’S REPLY BRIEF
`Page 11 of 21
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`Rather, Opposer introduced evidence of ZICAM brand products to establish that
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`homeopathic products may be – and in fact are – marketed and used to treat allergies. In other
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`words, Applicant’s “homeopathic supplements” could include allergy treatments because
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`Applicant’s goods, as defined in its applications as “homeopathic supplements,” may include any
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`type of homeopathic supplements including allergy treatments. Moreover, as previously argued,
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`it does not matter whether Applicant claims its products are allergy treatments or not. All that
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`matters is that Opposer has established that Applicant’s goods “homeopathic supplements” are
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`sufficiently broad so as to include homeopathic allergy treatments. Accordingly, if the U.S.
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`Patent & Trademark Office were to issue certificates of registration to Applicant for Lazacor
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`and Lazacor+, there is nothing that would prevent Applicant from using those marks for
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`homeopathic allergy treatments. Any allergy treatment – whether prescription, over-the-counter
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`or a supplement – is, for trademark purposes, identical to Opposer’s allergy treatments.
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`The ZICAM product is a homeopathic supplement that purports to treat allergies.
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`Opposer’s prescription product also treats allergies. St. John’s Wort purports to be a mood
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`elevator. There exist prescription pharmaceutical products to treat depression (i.e., elevate
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`mood). There are dietary supplements that purport to maintain healthy cholesterol levels,
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`maintain cardiovascular health or maintain eye health. There are corresponding prescription
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`products that treat those very same conditions. Therefore, the line between supplements and
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`pharmaceutical products is not a bright as Applicant contends.
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`Opposer maintains that the relevant inquiry is whether the goods as identified in the
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`application are likely to cause confusion with Opposer’s mark. However, to the extent that
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`Applicant argues that its marks are distinguishable and that Applicant cites to its own label to
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`support that argument, Opposer believes that Applicant’s own treatment of the word
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`“supplement” is relevant to determine the meaning of “supplement” in Applicant’s identification
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`of goods. Based on Applicant’s marketing of its supplement as a remedy, Applicant has lost its
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`Page 12 of 21
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`ability to argue that consumers would not be confused on that basis and to rely on any federal
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`definition of “supplement”.
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`Additionally, Applicant’s marketing materials unequivocally read as follows:
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`EXTREME SEXUAL PERFORMANCE ENHANCER
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`¾ Bigger & Harder Erections
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`¾ Last Longer During Sex
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`¾ Increase Sexual Stamina
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`¾ All Natural Ingredients
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`¾ Give Intense Orgasms
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`Given Applicant’s own marketing materials, it cannot seriously argue to the Board that “Lazacor
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`is not intended for the use in the diagnosis, cure, mitigation, treatment, or prevention of disease
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`in man or other animals.” Its own labels and marketing material make claims that 1) the product
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`is a “remedy” and 2) its product creates “bigger & harder erections,” 3) “increase[s] sexual
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`stamina” and 4) “give[s] intense orgasms,” it markets its product as a treatment for certain
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`physical conditions.
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`Of course, the parties’ goods need not be identical in order for a likelihood of confusion
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`to exist. It is well settled that goods need not be identical or even competitive to support a
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`finding of likelihood of confusion, it being sufficient instead that the goods are related in some
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`manner or that the circumstances surrounding their marketing are such that they would likely be
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`encountered by the same persons under circumstances that could give rise to the mistaken belief
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`that they emanate from or are associated with the same source. See In re Martin’s Famous
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`Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Opus One Inc., 60
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`USPQ2d 1812 (TTAB 2001); and Chemical New York Corp. v. Conmar Form Systems Inc., 1
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`USPQ2d 1139 (TTAB 1986). Therefore, the parties’ goods in Class 5 are sufficiently similar or
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`Page 13 of 21
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`related such that confusion is likely. Accepting Applicant’s distinctions between the goods,
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`arguendo, those distinctions are insufficient to avoid consumer confusion.
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`Finally, despite Applicant’s assertion that Opposer’s arguments are “ridiculous,”
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`Applicant’s argument that “Lazacor is not intended for use in the diagnosis, cure, mitigation,
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`treatment, or prevention of disease in man or other animals,” APP. TR. BR. at 11, is in fact
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`ridiculous. It is not reasonable that any consumer would purchase or use Applicant’s product if
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`its product is intended to do, in a word, nothing. Indeed, while Applicant urges the Board to
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`define “supplement” as the FDA defines “supplement,” the fact is that Applicant does not treat
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`the term “supplement” as the FDA does. In fact, Applicant invites consumers to view its
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`products as those that treat some disease or condition.