Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA873662
`01/26/2018
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`91226322
`
`Defendant
`Ampel, LLC
`
`PATRICK C ASPLIN
`LENHART PETTIT
`530 E MAIN ST, PO BOX 2057
`CHARLOTTESVILLE, VA 22902-5336
`UNITED STATES
`Email: pca@lplaw.com, tlg@lplaw.com
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`Opposition/Response to Motion
`
`Patrick C. Asplin
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`pca@lplaw.com, tlg@lplaw.com
`
`/patrick asplin/
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`01/26/2018
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`Ampel Brief in Opposition to Motion for SJ.pdf(90378 bytes )
`Declaration of Patrick Asplin PART 1.pdf(5875553 bytes )
`Declaration of Patrick Asplin PART 2.pdf(1299206 bytes )
`Affidavit of Peter Lipsky.pdf(1537608 bytes )
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`
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`LUPIN PHARMACEUTICALS, INC.,
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`Opposer/Petitioner,
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`
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`v.
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`
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`AMPEL, LLC,
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`
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`Applicant/Respondent.
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`
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`Proceeding No. 91226322
`Application Serial No. 86/509184
`Mark: LuPPiN
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`APPLICANT’S BRIEF IN OPPOSITION TO
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
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`Applicant/Respondent Ampel, LLC (“Applicant” or “Ampel”), by counsel, respectfully
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`
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`submits
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`this Brief
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`in Opposition
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`to
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`the Motion for Summary Judgment filed by
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`Opposer/Petitioner Lupin Pharmaceuticals, Inc. (“Opposer” or “Lupin”).
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`Introduction
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`Opposer seeks a monopoly on the word “lupin,” covering any activity relating to the
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`
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`medical field, no matter how tangential to Opposer’s use of its mark for the manufacture of
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`generic pharmaceuticals. Opposer claims it can prohibit Applicant’s use of the mark “LuPPiN”
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`for patient education and support groups specific to the disease Lupus simply because Opposer
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`manufactures generic pharmaceuticals that may be used to treat common Lupus symptoms,
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`including headache, fatigue, and joint pain. If Opposer’s position is correct, then it has a
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`monopoly on the word “lupin” within the medical field because such common symptoms relate
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`to nearly every medical issue. This is not the law, and Opposer’s position does not reflect an
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`accurate representation of the facts underlying this matter.
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`1
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`

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`Statement of Facts
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`Contrary to Opposer’s argument, material facts remain in dispute, which precludes entry
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`
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`of summary judgment for Opposer. Moreover, Opposer expands the import of the undisputed
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`facts beyond their fair reading. The facts underlying this matter reveal that Opposer has no
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`connection to Lupus, to Lupus education or support groups, or any other activity that would
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`result in a likelihood of confusion between its marks and the Applicant’s mark.
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`I.
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`Opposer’s “Lupin” marks
`pharmaceuticals
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`
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`for
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`the manufacture and distribution of
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`Opposer holds United States Trademark Registration No. 4024405 for the word mark
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`“LUPIN,” which is a “house mark for full line of pharmaceuticals for medical purposes” in Class
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`5, Pharmaceutical Products. (See Declaration of Thomas H. Curtin at Exh. B).1 Opposer also
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`holds United States Trademark Registration No. 4874579 for the “word ‘Lupin’ and a flower
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`shaped design.” (See Curtin Decl. at Exh. C). Like the word mark “LUPIN,” this mark also is
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`limited to pharmaceuticals (including antibiotics and antidepressants), and covers:
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`Pharmaceutical preparations for the treatment of infectious and parasitic diseases;
`antibiotics; pharmaceutical preparations for the treatment of diseases and
`disorders of the endocrine and metabolic systems; pharmaceutical preparations for
`the treatment of mental and behavioral conditions and disorders; antidepressants;
`pharmaceutical preparations for the treatment of diseases and disorders of the
`nervous system; pharmaceutical preparations for the treatment of diseases and
`disorders of the eye and adnexa; pharmaceutical preparations for the treatment of
`diseases and disorders of
`the ear and mastoid process; pharmaceutical
`preparations for the treatment of diseases and disorders of the circulatory system;
`antihypertensives; pharmaceutical preparations for the treatment of diseases and
`disorders of the respiratory system; pharmaceutical preparations for the treatment
`of diseases and disorders of the digestive system; pharmaceutical preparations for
`the treatment of diseases and disorders of the skin and subcutaneous tissue;
`pharmaceutical preparations for the treatment of diseases and disorders of the
`musculoskeletal system and connective tissue; pharmaceutical preparations for the
`treatment of diseases and conditions of
`the genitourinary system; and
`pharmaceutical preparations for the treatment of diseases and disorders associated
`
`
`1 Hereinafter “Curtin Decl. at __.” The Declarations and Affidavits of Thomas H. Curtin, Dave Berthold, and Jay
`Liska were submitted as part of the record with Opposer’s Motion for Summary Judgment.
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`2
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`

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`with pregnancy, childbirth and the peurperium, namely, contraceptives; oral
`contraceptives; oral hormonal contraceptives; contraceptive preparations and
`substances; hormone replacement therapies; hormonal agents for treating
`disorders and conditions related to women’s health, namely, symptoms and
`conditions associated with menopause, pre-menstruation syndrome and other
`symptoms and conditions associated with menstruation, in Class 5.
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`
`(Id.).
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`
`
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`Consistent with
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`these
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`registrations, Opposer manufactures
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`and distributes
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`pharmaceuticals. (See Affidavit of Dave Berthold at ¶¶ 5-12).2
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`II.
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`The commercial impression of Opposer’s “Lupin” marks
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`Opposer’s mark appears in commerce with its flower design, as follows:
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`
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`Opposer’s consistent and routine use of its mark in conjunction with this flower design
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`can be seen on the labelling of its pharmaceutical bottles, advertisements, website, and approved
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`logos. (See Exh. B to Declaration of Patrick C. Asplin).3 When the public encounters Opposer’s
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`marks, it encounters the flower design.
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`Additionally, Opposer’s use of its marks is secondary on these products to the
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`pharmaceuticals actual brand name, as seen on the exhibits Opposer attaches to its motion. (See
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`documents forming Exh. A & C, attached to Affidavit of Jay Liska; see also Asplin Decl. Exh.
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`B).4 The inclusion of the “Lupin” mark on these products is for identification, not marketing
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`purposes. The marks that receive the primary emphasis of these advertisements are “Alinia,”
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`“InspiraChamber,” “InspiraMask,” “SootherMask,” “Methylphenidate HCI Chewable Tablets,”
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`“Allernaze,” and “Antara 90.” (Id.). These third-party marks are the “public-facing front” of
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`2 Hereinafter “Berthold Aff. at __.”
`3 Hereinafter “Asplin Decl. at __.”
`4 Hereinafter “Liska Aff. at __.”
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`3
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`

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`these materials. In contrast, the “Lupin” mark can be found in the “fine print” of these
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`advertisements, which emphasize the primary brand name familiar to the public and not “Lupin,”
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`the generic manufacturer. (Id.).
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`Outside of these materials, Opposer markets its products to industry insiders through
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`“medical journals, pharmaceutical trade journals, pharmaceutical bulletins, and specialty
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`consumer medical publications,” and sponsorship of seminars and meetings of medical groups.
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`(Mot. for Summary Judgment by Opposer at p. 5).5
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`III. Opposer’s trade channels
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`“[T]he purchasers of Opposer’s products and services are wholesale pharmaceutical
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`distributors…and federal agencies and programs.” (Opposer’s Response to Interrogatory No.
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`18).6 Indeed, “Opposer sells its products through wholesalers including AmeriSource Bergen,
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`Cardinal, and McKesson, which are the three largest pharmaceutical wholesalers in the United
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`States.” (Mot. for Summary Judgment by Opposer, at p. 4) (emphasis added). These wholesalers
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`in turn distribute Opposer’s products to “major retail chains” and grocery chains, including
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`Walmart, CVS, Walgreens, Harris Teeter, Publix, and Kroger. (Id.). “Opposer’s pharmaceuticals
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`are also widely prescribed at hospitals throughout the United States” and “offered and sold to
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`various federal government agencies and programs.” (Id.). Opposer also has agreements “with
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`pharmaceutical and biopharmaceutical companies,” specifically major companies. (Id.).
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`IV. Opposer’s absence from the “Lupus” space
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`
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`5 Opposer’s claim that “consumers are accustomed to seeing the LUPIN Mark” on packaging and advertising (See
`Mot. for Summary Judgment by Opposer at p. 20) is based on self-serving hearsay and speculation and should be
`disregarded. Likewise, Opposer’s claim that “[c]onsumers are used to seeing pharmaceuticals and related
`educational and support group services emanating from the same source” (See Mot. for Summary Judgment by
`Opposer at p. 21) should be disregarded for the same reason. Opposer offers no consumer studies or surveys, or any
`other evidence beyond the speculation of its own counsel and principals that would support these claims.
`6 Opposer’s Amended Responses to Applicant’s Interrogatories and Opposer’s Responses to Applicant’s Requests
`for Admission are attached as Exhibit A to the Declaration of Patrick C. Asplin.
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`4
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`

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`Opposer offers and sells non-steroidal anti-inflammatory drugs, commonly referred to as
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`“NSAIDs.” (Mot. for Summary Judgment by Opposer at p. 13). Well-known examples of
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`NSAIDs include Aspirin and Ibuprofen. These drugs are used to treat a variety of common
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`symptoms, like headache, fatigue, and joint pain. (Mot. for Summary Judgment by Opposer at p.
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`3; Berthold Aff. at ¶ 16). Like nearly every other disease or illness, symptoms of Lupus may
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`include these run-of-the-mill symptoms as well. Opposer has no specific connection to the Lupus
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`disease aside from the extremely attenuated relationship between these common symptoms and
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`Opposer’s manufacture and distribution of NSAIDs, which are used for general pain relief.
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`Indeed, Opposer admits the following:
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`
`
`
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` “Opposer has not and does not manufacture, sell or
`license a
`pharmaceutical product or any other ‘product or good’ that is intended
`solely for the treatment of Lupus or otherwise ‘related to’ Lupus only.”
`(Opposer’s Response to Interrogatory No. 8).
`
` “Opposer does not provide educational, counseling and support services
`intended for Lupus patients, or which directly or only relates to Lupus or
`the treatment of Lupus or clinical trials relating only to Lupus.”
`(Opposer’s Response to Interrogatory No. 9).
`
` Opposer has not used the “LUPIN” word or design marks in connection
`with a pharmaceutical product intended solely for the treatment of Lupus;
`educational seminars or mentoring, in the field of Lupus or Lupus
`treatment options; training Lupus patients to teach other Lupus patients
`about the nature of Lupus or available treatments for Lupus; organizing or
`conducting clinical trials for treatments for Lupus; or organizing or
`conducting support groups for Lupus patients or their caregivers.
`(Opposer’s Response to Request for Admission Nos. 1-16).
`
` With respect to both the “LUPIN” word and design marks, “Opposer does
`not: provide pharmaceutical products specifically intended for the
`treatment of Lupus; offer and/or conduct educational seminars specifically
`in the field of Lupus and/or for Lupus treatment options; conduct
`mentoring specifically in the field of Lupus and/or Lupus treatment
`options; train Lupus patients to teach other Lupus patients about the nature
`of Lupus; train Lupus patients to teach other Lupus patients about
`available treatments for Lupus; organize and/or conduct clinical trials
`specifically intended for treatments for Lupus; organize and/or conduct
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`5
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`

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`support groups specifically intended for Lupus patients and/or the
`caregivers of Lupus patients.” (Opposer’s Response to Interrogatory Nos.
`31 & 33).
`
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`Opposer’s admitted lack of any real connection to the Lupus disease or to patient
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`education and support groups, particularly when coupled with Opposer’s primary business of the
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`manufacture of generic pharmaceuticals and its sales to sophisticated industry wholesalers and
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`major retail chains, reveals an unmistakable distinction from Applicant’s services.
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`V.
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`Applicant’s “LuPPiN” mark for education and patient support groups
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`
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`Applicant has filed for registration of the service mark “LuPPiN.” (Affidavit of Peter
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`Lipsky, M.D., at ¶ 9)7. The word “LuPPiN” has capitalized letters “L,” “P,” “P,” and “N,” and is
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`rendered in stylized form as follows:
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`(Id.).
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`
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`Applicant seeks to register the mark in Class 41, for “[e]ducation services, namely,
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`providing seminars and one-on one mentoring in the fields of Lupus, Lupus treatment options
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`and the importance of clinical trials; training Lupus patients to teach other Lupus patients about
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`the nature of Lupus, available treatments and the importance of clinical trials.” (Id.). Applicant
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`also seeks to register the mark in Class 45, for “organizing and conducting support groups for
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`Lupus patients who are undergoing treatment and clinical trials, and for the caregivers of Lupus
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`patients who are undergoing treatment and clinical trials.” (Id.). The trademark examiner
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`approved the “LuPPiN” mark for publication, and the mark was published on August 18, 2015.
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`7 Hereinafter “Lipsky Aff. at __.”
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`6
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`

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`Applicant’s LuPPiN mark is part of a series of marks used by Applicant and containing a
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`“Lu” beginning, to indicate a specific relationship to Lupus-oriented services, such as “LuCIN,
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`LuCIT, LuPro and LuPPiN,” as well as “LuCIN-STAT” and “LuSEC.” (Lipsky Aff. at ¶4;
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`Lipsky Depo. 15:23-16:5; Grammer Depo. 42:1-13).8 “LuPPiN” is an acronym for “Lupus
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`Patient Partner Integrator Network.” (Lipsky 30(b)(6) Depo. 13:17-25). The capital “Ps” are
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`intended to emphasize Applicant’s services under the LuPPiN mark, specifically, patient/partner
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`services designed to provide education and support to Lupus patients. (Lipsky Aff. at ¶11;
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`Lipsky 30(b)(6) Depo. 16:1-8).
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`This patient-centric program is designed to provide (1) support groups for Lupus patients
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`who are undergoing treatment and clinical trials and for the caregivers of such patients; and (2)
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`seminars and mentoring to educate Lupus patients about treatment options and available clinical
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`trials, and to train Lupus patients so to educate other Lupus patients. (Lipsky Aff. at ¶9). Through
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`enlarging participation in clinical trials, Applicant hopes to find a cure for Lupus. (Lipsky Depo.
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`44:19-48:17, 50:11-51:13, 142:4-16). Applicant intends to have LuPPiN representatives on-site
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`at academic institutions where clinical trials may be conducted to educate Lupus patients about
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`its services. (Lipsky 30(b)(6) Depo. 87:7-90:1).
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`Applicant works with a network of 59 academic centers in the United States and Canada
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`through LuCIN, which refers to Ampel’s “Lupus Clinical Investigators Network.” (Lipsky Aff.
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`at ¶ 11; Lipsky 30(b)(6) Depo. 14:3-15:20). These academic centers host clinical trials in order to
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`find a more effective treatment for Lupus, primarily through the repurposing of existing drugs
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`for the treatment of Lupus. (Id.; Lipsky Depo. 38:18-39:12). Through the LuPPiN patient partner
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`
`8 Relevant portions of the deposition transcripts of Drs. Lipsky and Grammer are attached as Exh. C, D, & E to the
`Declaration of Patrick C. Asplin.
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`7
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`program, Lupus patients would receive education, information, and support concerning the
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`disease and the clinical trials. (Id.; Lipsky 30(b)(6) Depo. 80:6-19; Lipsky Depo. 44:19-48:17).
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`Unlike the Opposer, Applicant does not manufacture, distribute, sell or offer for sale
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`pharmaceuticals. (Lipsky Aff. at ¶ 16). Applicant also does not work directly with the
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`manufacturer of generic pharmaceuticals. (Id.; Lipsky Depo. 42:18-19). Applicant does work
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`with pharmaceutical companies as part of its clinical trial work. Typically, Applicant analyzes
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`potential drugs that could be useful in treating Lupus and approaches the manufacturer about
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`participating in further study through clinical trials conducted through “LuCIN.” (Lipsky Aff. at
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`¶ 7). That outreach is not performed through the “LuPPiN” program, which is patient focused
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`and clearly identified as a standalone “patient partner” network of patient education and support.
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`(Lipsky Aff. at ¶ 13; Lipsky 30(b)(6) Depo. 14:11-21, 70:16-71:17; Lipsky Depo. 44:19-48:17).
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`VI. Applicant’s marketing of “LuPPin” and its consumer base
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`
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`Applicant does not use traditional advertising channels. Instead, Applicant markets its
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`services primarily through presentations and the personal contacts of its principals. (Lipsky Aff.
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`at ¶ 6; Lipsky 30(b)(6) Depo. 61:9-14, 63:6-9). Applicant also maintains a website which bears
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`the LuPPiN mark and has brochures available. (Lipsky Aff. at ¶ 6; Lipsky 30(b)(6) Depo. 60:11-
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`22, 61:23-24). The primary marketing of the LuPPiN program is through personal, face-to-face
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`contact with actual patients and by word-of-mouth. (Lipsky Aff. at ¶ 6; Lipsky 30(b)(6) Depo.
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`89:12-90:1). Applicant intends to have LuPPiN representatives on-site at academic institutions to
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`educate prospective patients about its services and to enroll them in the LuPPiN program.
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`(Lipsky 30(b)(6) Depo. 87:7-90:1).
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`Applicant has also promoted the LuPPiN program at medical conferences and seminars,
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`including with parties highly sophisticated in the medical field generally and with Lupus,
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`8
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`

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`specifically, and has placed a particular emphasis on the patient partner aspect of the program
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`during these presentations. (Lipsky 30(b)(6) Depo. 46:14-18; Lipsky Depo. 135:7-136:9, 142:4-
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`16, 147:13-22, Grammer Depo. 49:16-50:2, 69:1-11, 73:8-17,78:18-79:12). As Opposer notes,
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`Applicant also meets with pharmaceutical companies to discuss the potential repositioning of
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`existing drugs for the treatment of Lupus, but this is done through the personal contacts of
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`Applicant’s principals in connection with the separate “LuCIN” initiative, which is responsible
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`for conducting the clinical trials. (Lipsky Aff. at ¶ 7). Applicant does not actively market or
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`promote the LuPPiN program to pharmaceutical companies when marketing its clinical trial
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`services to pharmaceutical companies. (Id. at ¶ 13).
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`There have been no instances of confusion or mistake arising between Applicant’s
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`“LuPPiN” mark for education and patient support services and Opposer’s “Lupin” marks for
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`pharmaceutical manufacturing. (Lipsky Aff. at ¶ 15; Lipsky 30(b)(6) Depo. 79:4-16). Indeed,
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`Applicant was not even familiar with Opposer prior to its opposition being filed in this
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`proceeding. (Lipsky Aff. at ¶ 15; Lipsky 30(b)(6) Depo. 31:4-14).9
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`Standard of Review
`
`Summary judgment may be granted only “if the movant shows that there is no genuine
`
`
`
`dispute as to any material fact.” TBMP § 528; Fed. R. Civ. P. 56(a). “A party moving for
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`summary judgment has the burden of demonstrating the absence of any genuine dispute of
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`material fact, and that it is entitled to judgment as a matter of law. This burden is greater than the
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`evidentiary burden at trial…. A factual dispute is genuine if sufficient evidence is presented such
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`that a reasonable fact finder could decide the question in favor of the nonmoving party.” TBMP
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`§ 528.01.
`
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`9 Opposer’s claim that the “consuming public is accustomed to encountering pharmaceutical companies providing or
`funding educational support groups” (Mot. for Summary Judgment by Opposer at p. 16) should be disregarded, as it
`is based on the speculative declaration of its own counsel and hearsay from third-parties.
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`9
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`

`

`“The nonmoving party must be given the benefit of all reasonable doubt as to whether
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`genuine disputes of material fact exist; and the evidentiary record on summary judgment, and all
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`inferences to be drawn from the undisputed facts, must be viewed in the light most favorable to
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`the nonmoving party.” Id.; see also Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d
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`847, 850 (Fed. Cir. 1992) (“The evidence submitted by the non-movant, in opposition to a
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`motion for summary judgment, is to be believed, and all justifiable inferences are to be drawn in
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`its favor.”).
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`Argument
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`Here, on summary judgment, the Board must review the facts in the light most favorable
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`
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`to Applicant, and resolve all reasonable doubts in its favor. Under this standard, it cannot be said
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`that Applicant’s mark will create a likelihood of confusion in the minds of relevant consumers
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`with respect to Opposer’s marks. Opposer’s claim that Applicant’s use of
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` for patient
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`support and education is likely to confuse the purchasers of its
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`branded
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`pharmaceuticals – the largest drug wholesalers and retail chains in the United States – is
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`unsupported by bedrock principles of trademark law and the facts of this proceeding. Opposer
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`does not own a monopoly on “Lupin” within the medical field. The parties’ marks are
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`sufficiently distinct, their goods and services occupy discrete submarkets, and their channels of
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`advertising and trade do not overlap. Opposer has failed to show that there is no genuine dispute
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`over these material facts, and therefore, its motion for summary judgment should be denied.
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`I.
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`Opposer’s insinuations of nonuse are a “red herring”
`
`
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`Opposer states several times that Applicant has not sufficiently used its mark. Opposer,
`
`however, did not raise nonuse in its opposition. The bases for the opposition were specifically
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`limited to whether Applicant’s use of the LuPPiN mark is likely to confuse consumers as to the
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`10
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`

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`source of its goods and services. (See Notice of Opposition at ¶¶ 10-14). Opposer cannot rely on
`
`a nonuse argument now, and Applicant objects to the portion of Opposer’s motion regarding
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`alleged nonuse. See TMBP § 314 (“A party may not obtain summary judgment on an unpleaded
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`claim.”); TMBP § 528.07(a) (“A party may not obtain summary judgment on an issue that has
`
`not been pleaded.”). “Indeed, the Board has long recognized that summary judgment is not
`
`appropriate on an unpleaded issue.” Am. Express Mktg. & Dev. Corp., 94 U.S.P.Q.2d 1294
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`(T.T.A.B. Mar. 15, 2010).
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`II.
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`Opposer has not shown that registration of Applicant’s mark would create a
`likelihood of confusion
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`
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`The true focus of Opposer’s motion is the “likelihood of confusion” analysis. There is at
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`least a disputed issue of fact that consumers are likely to be confused by registration of
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`Applicant’s “LuPPiN” mark.
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`Opposer claims that simply because it manufacturers generic drugs that can be used to
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`treat common symptoms of Lupus, as well as many other illnesses and diseases, participants in
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`the patient partner “LuPPiN” program may be confused as to the source of that program.
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`Opposer makes this argument despite always using its mark in connection with its flower logo,
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`dealing with the most sophisticated industry insiders in the pharmaceutical field, and not
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`providing the same services as Applicant.
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`Contrary to Opposer’s position, in applying the DuPont factors, the “relevant application
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`is made in the marketplace.” E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1360 (C.C.P.A.
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`1976) (emphasis added). This does “not refer to a mental exercise, but to all of the known
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`circumstances surrounding use of the mark.” Id. at 1360-61. The test is inherently factual, and
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`must be based “upon consideration of all the evidence.” Id. at 1361, 1362 (emphasis in original).
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`11
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`“The fact that the goods of one party ‘could be used’ in the field of the other is too conjectural
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`and too widely applicable to form the sole basis of decision….” Id. at 1363 (emphasis added).
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`Instead, a “likelihood of confusion exists if the defendant’s actual practice is likely to
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`produce confusion in the minds of consumers about the origin of the goods or services in
`
`question.” George & Co. LLC v. Imagination Entertainment Ltd., 575 F.3d 383, 393 (4th Cir.
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`2009) (emphasis added). Under this proper standard, the Board should “look to how the two
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`parties actually use their marks in the marketplace to determine whether the defendant’s use is
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`likely to cause confusion.” CareFirst of Md., Inc. v. First Care P.C., 434 F.3d 263, 267 (4th Cir.
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`2006) (emphasis added).
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`A. Opposer’s registrations do not give it a monopoly on the word “lupin”
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`Opposer’s registrations for its “Lupin” marks are expressly limited to the sale of
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`pharmaceuticals and pharmaceutical preparations in Class 5. Applicant does not sell or offer for
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`sale pharmaceuticals or any other good, but instead simply offers a service of education and
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`support specifically for Lupus patients. Opposer’s registrations and even use of its “Lupin”
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`marks for the sale of pharmaceuticals does not entitle it to prohibit Applicant’s use of the mark
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`“LuPPiN” for its services.
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`Moreover, the extent of a trademark is defined by customer perception. McCarthy on
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`Trademarks and Unfair Competition § 2:11 (5th ed.). Opposer’s use of “Lupin” is always in
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`conjunction with its flower design, including in its public-facing materials, i.e., the labelling of
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`its pharmaceutical bottles, advertisements, website, and approved logos. (See Asplin Decl. at
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`Exh. B; see also Liska Aff. Exh. A, B, & C). Opposer’s use of “Lupin” also is always and clearly
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`in connection with the sale of pharmaceuticals. (Liska Aff. at Exh. A & C). The materials
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`submitted by Opposer in support of summary judgment do not reflect the perspective of
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`Opposer’s consumers or Opposer’s trademark use as the use of “Lupin” alone or even broadly
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`within the medical field, because each identifies “Lupin” with the flower design and in
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`connection with the sale of pharmaceuticals. See The N. Face Apparel Corp. v. Sanyan Industry
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`Co., Ltd., 116 U.S.P.Q. 2d 1217, *5 (T.T.A.B. Sept. 18, 2015) (opposer’s consistent use of
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`design mark in connection with word mark indicated how consumers viewed the mark, due to
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`opposer’s “promotion of the design in conjunction with the words”).
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`Opposer claims the consuming public recognizes “Lupin” as a maker of generic
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`pharmaceuticals and other goods, but Opposer offers no consumer studies or surveys, or any
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`other evidence beyond the inadmissible speculation and hearsay statements of its own counsel
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`and principals to support this claim. As the exhibits attached to Opposer’s own motion indicate,
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`Opposer’s mark is buried in the fine print on its public-facing materials, while the primary
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`“brand” – “Alinia,” “InspiraChamber,” “SootherMask,” “Allernaze” – is pushed to the forefront
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`for purposes of public perception. (Liska Aff. at Exh. A & C). Opposer has provided no evidence
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`that consumers view “Lupin” as the brand for these products, and these exhibits actually
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`undermine Opposer’s arguments.
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`Indeed, Opposer has produced no evidence at all as to how its consumers view the word
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`“lupin,” which Opposer seeks to prohibit Applicant from using, particularly when Opposer’s
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`marks are ordinarily part of generic drug sales and distribution and their use is secondary to the
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`goods’ actual brand name. See, e.g., Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 826
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`(Fed. Cir. 1992) (limited evidence as to advertising, sales and media attention was not sufficient
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`to demonstrate that the consuming public identified the product with its maker); Wag’N
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`Enterprises, LLC v. United Animal Nations, 2012 WL 1633410, at *5 (E.D. Va. May 9, 2012)
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`(commercial strength of mark was considered weak when no studies were offered to show
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`consumers associated mark with source). Under these circumstances, whether Opposer may
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`prohibit Applicant from using its “LuPPiN” mark for Lupus patient education and support is at
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`least a question of material fact that cannot be decided on summary judgment.
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`B. The parties’ marks are sufficiently distinct and dissimilar
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`Opposer claims that, simply because “Lupin” and “LuPPiN” are word marks which are
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`pronounced the same, Opposer can prohibit Applicant’s registration. (Mot. for Summary
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`Judgment by Opposer at p. 18). This argument does not reflect a true view of the evidence or a
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`considered application of the law.
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`A mark must be considered as a whole. Juice Generation, Inc. v. GS Enterprises LLC,
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`794 F.3d 1334, 1341 (Fed. Cir. 2015) (Ordering TTAB to consider PEACE LOVE AND JUICE
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`in its entirety in likelihood of confusion analysis even though JUICE was generic and
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`disclaimed); Ferrotec (USA) Corp. & Ferrotec Corp., 2009 WL 273256, at *7-8 (TTAB Jan. 29,
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`2009) (marks both beginning with descriptive term “Ferro” dissimilar even though associated
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`with same goods and shared same consumers). “Both parties’ entire presentation of the word
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`mark as seen by buyers should be considered. If defendant has used plaintiff’s word mark in the
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`same lettering style, color, format or with a similar background design, then the likelihood of
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`confusion is increased, whereas if the lettering style is dissimilar, confusion is less likely.”
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`McCarthy on Trademarks and Unfair Competition § 23:52 (5th ed.). “We do not consider these
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`factors in isolation. Instead, we must examine them in the context of the marks as a whole as
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`they are encountered by consumers in the marketplace.” King of the Mountain Sports, Inc. v.
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`Chrysler Corp., 185 F.3d 1084, 1090 (10th Cir. 1999) (quotation omitted).
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`As Opposer must concede, the parties’ marks appear in different lettering, “Lupin” and
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`“LuPPiN,” and as actually used, Opposer’s marks always appear in connection with an
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`additional logo, its flower design, thus further differentiating the marks. Applicant’s LuPPiN
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`mark is further distinguished by being part of a series of marks used by Applicant and containing
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`a “Lu” beginning, to indicate a relationship to Lupus-oriented services, such as “LuCIN, LuCIT,
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`LuPro and LuPPiN,” as well as “LuCIN-STAT” and “LuSEC.” (Lipsky Depo. 15:23-16:5,
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`Grammer Depo. 42:1-13). These distinguishing characteristics make the marks sufficiently
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`dissimilar. See Progressive Distribution Servs., Inc. v. United Parcel Serv., Inc., 856 F.3d 416,
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`432-33 (6th Cir. 2017) (Defendant’s use of its well-known house mark “UPS” in its mark “UPS
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`ORDERLINK” in different colors contributed to a finding of no infringement of plaintiff’s mark
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`ORDERLINK. “The respective marks are displayed in different colors and fonts and depicted
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`with distinct design elements.”); Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97,
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`106 (2d Cir. 2009) (No likely confusion was created by defendant’s MISTER CHARBUCKS
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`coffee in comparison with plaintiff’s STARBUCKS coffee. The defendant’s word mark was
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`presented on packages that were different in imagery, color, and format from plaintiff's packages
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`and advertising.) In re Hartz Hotel Services, Inc., 2012 WL 1193704, *4-5 (P.T.O. March 19,
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`2012) (geographic term used with GRAND HOTEL sufficient to distinguish marks); see also
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`George & Co., 575 F.3d at 396 courts analyze “similarity in sight, sound, and meaning which
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`would result in confusion”); McCarthy on Trademarks and Unfair Competition § 23:52 (5th ed.)
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`(consideration should be given to “not only the similarity of the accused word marks, but also the
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`similarity of the lettering style, color and format and any accompanying background matter”).
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`Opposer’s registration of “Lupin” as a word mark “does not change this rule.” McCarthy
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`on Trademarks and Unfair Competition § 23:52 (5th ed.). “‘A standard character registration
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`does not override the requirement that likelihood of confusion be measured by the perceptions of
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`consumers in the marketplace, including the effect of packaging.’” Id. (quoting Hornady Mfg.
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`Co., Inc. v. Doubletap, Inc., 746 F.3d 995, 1002 n.2 (10th Cir. 2014) (“The court must consider
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`the effect of marketplace presentation, including lettering styles, logos and coloring schemes ….
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`[T]he packaging on which the parties display their marks differs greatly in color scheme and
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`layout.” Affirmed summary finding of no likelihood of confusion.)).
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`Here, the marks are sufficiently distinct, and the simple fact that they share a like
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`pronunciation