Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA956352
`
`Filing date:
`
`02/25/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
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`91226322
`
`Defendant
`Ampel, LLC
`
`PATRICK C ASPLIN
`LENHART PETTIT
`530 E MAIN ST, PO BOX 2057
`CHARLOTTESVILLE, VA 22902
`UNITED STATES
`pca@lplaw.com, tlg@lplaw.com, asb@lplaw.com
`434-979-1400
`
`Brief on Merits for Defendant
`
`Patrick C. Asplin
`
`pca@lplaw.com, asb@lplaw.com, tlg@lplaw.com
`
`/patrick asplin/
`
`02/25/2019
`
`Attachments
`
`Ampel - Trial Brief.pdf(127131 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Opposer,
`
`
`
`
`
`
`
`LUPIN PHARMACEUTICALS, INC.,
`
`
`
`v.
`
`AMPEL, LLC,
`
`
`
`
`
`Applicant.
`
`
`
`
`
`
`
`Opposition No. 91226322
`
`TRIAL BRIEF OF APPLICANT AMPEL, LLC
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ......................................................................................................... iii
`
`
`I. PRELIMINARY STATEMENT .......................................................................................... 1
`
`II. PROCEDURAL HISTORY ................................................................................................. 2
`
`III. DESCRIPTION OF THE RECORD .................................................................................... 3
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`
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`IV. STATEMENT OF THE ISSUES ......................................................................................... 4
`
`V. STATEMENT OF THE FACTS .......................................................................................... 5
`
`A. Opposer’s “Lupin” marks specifically relate to the manufacture and
`distribution of generic pharmaceuticals ..................................................................... 5
`
`B. The commercial impression of Opposer’s marks almost always includes the
`flower design and never features the word “Lupin” .................................................. 6
`
`C. Opposer’s trade channels are targeted to highly sophisticated buyers ....................... 8
`
`D. Opposer is completely absent from the “Lupus” space .............................................. 9
`
`E. Applicant’s “LuPPiN” mark is specifically for education and patient support
`groups and specifically targeted to Lupus patients and caregivers .......................... 11
`
`F. Applicant’s marketing of “LuPPiN” and its consumer base is specifically
`targeted to Lupus patients ........................................................................................ 13
`
`G. Opposer’s inadmissible speculation concerning Applicant’s activities ................... 14
`
`VI. ARGUMENT ..................................................................................................................... 16
`
`
`A. Opposer cannot prove that registration of Applicant’s mark would
`create a likelihood of confusion, particularly when Opposer’s use and
`its buyer class are markedly distinct from Applicant ............................................... 17
`
`
`
`1. The Board must look to Opposer’s actual use of its mark, specifically,
`its own “approved” logos that prominently feature the flower design
`and its secondary impression to the actual brand or generic name
`featured in the marketplace for Opposer’s products ..................................... 17
`
`
`
`
`
`i
`
`

`

`2. Opposer’s relevant buyer class consists of highly sophisticated
`parties, including some of the world’s largest wholesalers and retailers ...... 19
`
`3. Opposer may have priority via its registration, but that priority is limited ... 21
`
`4. The parties’ marks are sufficiently distinct and dissimilar ............................ 22
`
`5. The parties offer different services, target different consumers,
`and use different channels of trade ................................................................ 25
`
`a. The parties’ services are different .................................................... 25
`
`b. The parties’ customers are different ................................................. 27
`
`c. The parties’ trade channels are different .......................................... 28
`
`d. Opposer’s sales and advertising figures, without context,
`do not demonstrate strength of its mark ........................................... 29
`
`e. Opposer’s speculative arguments of “harm” should be ignored ...... 30
`
`
`VII. CONCLUSION .................................................................................................................. 31
`
`VIII. APPENDIX OF EVIDENTIARY ISSUES .................................................................... 32
`
`
`ii
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`

`

`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Braun Inc. v. Dynamics Corp. of Am.,
`975 F.2d 815 (Fed. Cir. 1992) .................................................................................................... 24
`
`Bridgestone Americas Tire Ops., LLC v. Fed. Corp.,
`673 F.3d 1330, 102 U.S.P.Q.2d 1061 (Fed. Cir. 2012) ................................................................ 7
`
`CareFirst of Md., Inc. v. First Care P.C.,
`434 F.3d 263 (4th Cir. 2006) ...................................................................................................... 20
`
`Cont’l Plastic Containers v. Owens Brockway Plastic Prod., Inc.,
`141 F.3d 1073, 46 U.S.P.Q.2d 1277 (Fed. Cir. 1998) .......................................................... 21, 22
`
`Cunningham v. Laser Golf Corp.,
`222 F.3d 943, 55 U.S.P.Q.2d 1842 (Fed. Cir. 2000) .............................................................. 7, 27
`
`Dynamics Research Corp. v. Langenau Mfg. Co.,
`704 F.2d 1575, 217 U.S.P.Q. 649 (Fed. Cir. 1983) .................................................................... 22
`
`E.I. DuPont DeNemours & Co.,
`476 F.2d 1357 (C.C.P.A. 1976)...................................................................................... 19, 29, 30
`
`Ferrotec (USA) Corp. & Ferrotec Corp.,
`2009 WL 273256 (TTAB Jan. 29, 2009) ................................................................................... 24
`
`George & Co. LLC v. Imagination Entertainment Ltd.,
`575 F.3d 383 (4th Cir. 2009) ................................................................................................ 20, 26
`
`Heartsprings, Inv. v. Heartspring, Inc.,
`143 F.3d 550 (10th Cir. 1998) .................................................................................................... 31
`
`Hewlett-Packard Co. v. Human Performance Measurement Inc.,
`23 U.S.P.Q.2d 1390, 1991 WL 350751 (T.T.A.B. 1991) .......................................................... 22
`
`Hornady Mfg. Co., Inc. v. Doubletap, Inc.,
`746 F.3d 995 (10th Cir. 2014) .................................................................................................... 26
`
`In re Cook Med. Techs., LLC,
`105 U.S.P.Q. 2d 1377 (TTAB 2012).......................................................................................... 32
`
`In re Coors Brewing Co.,
`343 F.3d 1340 (Fed. Cir. 2003) ............................................................................................ 26, 28
`
`
`
`iii
`
`

`

`
`In re Hartz Hotel Services, Inc.,
`2012 WL 1193704 (P.T.O. March 19, 2012) ............................................................................. 26
`
`In re N.A.D. Inc.,
`754 F.2d 996 (Fed. Cir. 1985) .................................................................................................... 29
`
`In re Owens-Corning Fiberglas Corp.,
`774 F.2d 1116, 227 U.S.P.Q. 417 (Fed. Cir. 1985) ...................................................................... 4
`
`Juice Generation, Inc. v. GS Enterprises LLC,
`794 F.3d 1334 (Fed. Cir. 2015) .................................................................................................. 24
`
`King of the Mountain Sports, Inc. v. Chrysler Corp.,
`185 F.3d 1084 (10th Cir. 1999) .................................................................................................. 25
`
`Levi Strauss & Co. v. R. Josephs Sportswear Inc.,
`28 USPQ2d 1464 (TTAB 1993) ................................................................................................. 34
`
`Mattel Inc. v. FunLine Merchandise Co.,
`81 U.S.P.Q. 2d 1372 (TTAB 2006) ............................................................................................ 27
`
`Nat’l Distillers Products Co., LLC v. Refreshment Brands, Inc.,
`198 F. Supp. 2d 474 (S.D.N.Y. 2002) ........................................................................................ 29
`
`Omega SA v. Compucorp,
`229 USPQ 191 (TTAB 1985)..................................................................................................... 34
`
`Progressive Distribution Servs., Inc. v. United Parcel Serv., Inc.,
`856 F.3d 416 (6th Cir. 2017) ...................................................................................................... 25
`
`Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc.,
`906 F.3d 965, 128 U.S.P.Q.2d 1370 (Fed. Cir. 2018) .................................................................. 6
`
`Starbucks Corp. v. Wolfe’s Borough Coffee, Inc.,
`588 F.3d 97 (2d Cir. 2009) ......................................................................................................... 25
`
`
`T.A.B. Sys. v. Pactel Teletrac,
`77 F.3d 1372, 37 U.S.P.Q.2d 1879 (Fed. Cir. 1996) .................................................................. 32
`
`The N. Face Apparel Corp. v. Sanyan Industry Co., Ltd.,
`116 U.S.P.Q. 2d 1217 (T.T.A.B. Sept. 18, 2015) .......................................................... 23, 28, 31
`
`U.S. v. E.I. duPont de Nemours & Co.,
`351 U.S. 377 (1956) ................................................................................................................... 31
`
`
`
`
`iv
`
`

`

`United Drug Co. v. Theodore Rectanus Co.,
`248 U.S. 90 (1918) ....................................................................................................................... 4
`
`Univ. of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc.,
`703 F.2d 1372, 217 U.S.P.Q. 505 (1983) ....................................................................... 23, 29, 30
`
`Wag’N Enterprises, LLC v. United Animal Nations,
`2012 WL 1633410 (E.D. Va. May 9, 2012) ............................................................................... 24
`
`Worthington Foods, Inc. v. Kellogg Co.,
`732 F. Supp. 1417 (S.D. Ohio 1990) .......................................................................................... 28
`
`Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd.,
`840 F.2d 1572, 6 U.S.P.Q.2d 1001 (Fed. Cir. 1988) .......................................................... 7, 9, 11
`
`
`Statutes
`
`15 U.S.C. § 1052(d) .................................................................................................................... 6, 7
`
`Rules
`
`Fed. R. Civ. P. 30(b)(6)................................................................................................................... 6
`
`Regulations
`
`37 C.F.R. § 2.120(k) ....................................................................................................................... 5
`37 C.F.R. § 2.122(b) ....................................................................................................................... 5
`37 C.F.R. § 2.122(e)........................................................................................................................ 6
`
`Other Authorities
`
`McCarthy on Trademarks and Unfair Competition § 2:11 .......................................................... 23
`McCarthy on Trademarks and Unfair Competition § 23:52 .................................................. 25, 26
`
`
`
`v
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`

`

`I.
`
`PRELIMINARY STATEMENT
`
`
`
`
`The first sentence of Opposer’s brief should end the inquiry in this matter. As Opposer
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`states, it provides pharmaceutical products, while Applicant provides educational and support
`
`group services. (47 TTABVUE at 1). A likelihood of confusion does not exist between the
`
`parties’ uses of their respective marks. The actual marks are different, the products are different,
`
`the consumers are different, and the channels of trade are different, as Opposer must concede
`
`based on the record it has submitted.
`
`
`
`Indeed, as Opposer admits, it is a large “generic company” (47 TTABVUE at 15) which
`
`sells generic pharmaceuticals to “wholesale pharmaceutical distributors…and federal agencies
`
`and programs” (Opposer’s Response to Interrogatory No. 18, 41 TTABVUE at 17). These
`
`sophisticated purchasers are always confronted with Opposer’s mark in conjunction with a
`
`prominent flower design, as Opposer’s own business records demonstrate over-and-over.
`
`(Applicant’s Notice of Reliance Exh. 5, 41 TTABVUE at 49-190). Opposer also does not sell
`
`any drug called “Lupin,” but instead sells its generic pharmaceuticals featuring the generic name
`
`prominently as the true label for its goods. (Id.).
`
`
`
`In contrast, Applicant provides education, training, and support services relating to the
`
`disease Lupus directly to patients. Opposer claims Applicant offers these services “to the same or
`
`similar consumer groups,” (47 TTABVUE at 1), but Applicant does not offer education, training,
`
`or support groups to wholesale pharmaceutical distributors, federal agencies and programs,
`
`which are the consumers of Opposer’s goods as described by Opposer. (47 TTABVUE at 11-
`
`12). What Opposer really seeks is a monopoly on the use of the word “Lupin” anywhere in the
`
`healthcare field, despite the fact that Opposer does not use the mark “Lupin” alone, does not sell
`
`any product called “Lupin,” does not offer the same or even similar services as Applicant, and
`
`
`
`1
`
`

`

`does not sell products to unsophisticated purchasers but instead to some of the largest companies
`
`in the world.
`
`
`
`It is fundamental that a trademark is not a monopoly. United Drug Co. v. Theodore
`
`Rectanus Co., 248 U.S. 90, 97-98 (1918); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116,
`
`1123, 227 U.S.P.Q. 417 (Fed. Cir. 1985). Opposer does not have a right to prohibit Applicant’s
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`registration and use of its mark “LuPPiN” when such use is not likely to cause any confusion,
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`mistake, or deception between or about the parties; goods and services.
`
`II.
`
`PROCEDURAL HISTORY
`
`
`
`
`Applicant does not disagree with Opposer’s recitation of the procedural history of this
`
`matter. (47 TTABVUE at 2-3). Opposer failed to note, however, that it also provided a
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`“supplemental document production” on August 9, 2018, roughly nine months after discovery
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`closed on November 17, 2017 and just before its trial period was to end.
`
`
`
`Opposer now states that it is relying on the Trial Affidavit of Dave Berthold, (TTABVUE
`
`47 at 5), which was filed on August 13, 2018 (32 TTABVUE). The Berthold Affidavit attempts
`
`to introduce documents and testimony based upon the untimely “supplemental document
`
`production.” (32 TTABVUE at ¶¶ 3-7, LUP003367-3924).
`
`
`
`As set forth in Applicant’s Motion to Strike or Exclude and the Reply Brief in Support of
`
`said Motion (36 & 43 TTABVUE), which Applicant renews, the testimony set forth in
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`Paragraphs 3-7 of the Berthold Affidavit, which relies on documents contained within the
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`untimely production, and the documents numbered LUP003367-3924, which were produced
`
`after the close of discovery, should be struck or excluded from consideration. The Board deferred
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`ruling on this motion until final hearing. (37 TTABVUE). It should now sustain Applicant’s
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`motion for the reasons previously set forth in support.
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`
`
`2
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`

`

`III. DESCRIPTION OF THE RECORD
`
`
`
`
`Applicant relies upon the materials submitted in its Notice of Reliance filed October 12,
`
`2018. The Notice of Reliance includes:
`
`
`
` Application file for the mark “LuPPiN” (No. 86509184), including Respondent’s
`application for registration and submitted specimens and drawing for the mark
`“LuPPiN.” 37 C.F.R. § 2.122(b); TBMP § 704.03(a).
`
` Registration for Opposer’s “Lupin” mark. 37 C.F.R. § 2.122(b); TBMP § 704.03(a).
`
` Opposer’s First Amended Responses to Applicant’s First Set of Interrogatories Nos.
`8, 9, 18, 31, and 33, together with the verification of Nicholas Bolash (41 TTABVUE
`Exh. 1). 37 C.F.R. § 2.120(k); TBMP § 704.10.
`
` Opposer’s Responses to Applicant’s First Requests for Admissions Nos. 1-16 (41
`TTABVUE Exh. 2). 37 C.F.R. § 2.120(k); TBMP § 704.10.
`
` Opposer’s Responses to Applicant’s First Requests for Production of Documents
`Nos. 8 and 10 (41 TTABVUE Exh. 3). TBMP § 704.11.
`
` The affidavit of Dr. Peter Lipsky in support of Ampel’s Opposition to Opposer’s
`Motion for Summary Judgment, together with all exhibits thereto (41 TTABVUE
`Exh. 4). The admission into the trial record of Dr. Lipsky’s affidavit and its exhibits
`was been stipulated by the parties pursuant to their Joint Stipulation dated August 7,
`2018. (26 TTABVUE).
`
` The affidavit of Dave Berthold in support of Opposer’s Motion for Summary
`Judgment, which Opposer filed on August 9, 2018 (20 TTABVUE at 26-31),
`pursuant to the parties’ Joint Stipulation dated August 7, 2018 (26 TTABVUE).
`
` The affidavit of Jay Liska in support of Opposer’s Motion for Summary Judgment,
`together with its exhibits A, B and C, which Opposer filed on August 9, 2018 (20
`TTABVUE at 434-514), pursuant to the parties’ Joint Stipulation dated August 7,
`2018 (26 TTABVUE).
`
` Opposer’s business records showing the approved use of its mark (LUP-000958); its
`website materials (LUP-000968–69; LUP-000970; LUP-000972–73; LUP-000975–
`1026; LUP-001939–43; LUP-001043); its description of its “Compliance Program”
`(LUP-001039–42); photos of its mark as applied to its goods (LUP-001832–39; LUP-
`001875); and its marketing materials showing use of its mark (LUP-000967; LUP-
`002329–91). (41 TTABVUE Exh. 5). The parties stipulated to the admission of these
`records into the trial record pursuant to their Joint Stipulation dated October 5, 2018.
`(40 TTABVUE).
`
`
`
`
`3
`
`

`

` Opposer’s business records regarding a list of its goods [CONFIDENTIAL] (LUP-
`002115–25). (41 TTABVUE Exh. 6). The parties stipulated to the admission of these
`records into the trial record pursuant to their Joint Stipulation dated October 5, 2018.
`(40 TTABVUE).
`
` Copies of third-party registrations for “Lupin” related marks. 37 C.F.R. § 2.122(e);
`TBMP § 704.03(b)(1)(B). (41 TTABVUE Exh. 7).
`
`
`Applicant also relies on certain materials submitted in Opposer’s Notice of Reliance.
`
`
`
`Those materials include:
`
` Relevant excepts from the discovery deposition of Peter Lipsky, M.D., and exhibits
`thereto (29 TTABVUE Exh. K);
`
` Relevant excerpts from the discovery deposition of Amrie Grammer, Ph.D., and
`exhibits thereto (29 TTABVUE Exh. L); and
`
` Relevant excerpts from the discovery deposition of Applicant’s Fed. R. Civ. P.
`30(b)(6) designee Peter Lipsky, M.D., and exhibits thereto (29 TTABVUE Exh. M).
`
`
`
`Applicant reserves the right to rely upon any materials or documents in Opposer’s Notice
`
`of Reliance, as well as any other relevant information and/or materials admissible under the
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`Federal Rules of Evidence.
`
`IV.
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`STATEMENT OF THE ISSUES
`
`
`
`
`Opposer claims Applicant’s mark “LuPPiN” is “likely to cause consumers to believe
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`mistakenly that Applicant’s services are affiliated or associated with, connected to, or sponsored,
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`approved or authorized by Opposer…and would be likely to cause confusion, deception, or
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`mistake among consumers.” (1 TTABVUE at ¶ 11). Opposer claims it will be damaged by
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`registration of Applicant’s mark and that Applicant’s mark is not entitled to registration under 15
`
`U.S.C. § 1052(d). (Id. at ¶¶ 10-14).
`
`
`
`On these issues, Opposer has the burden of proving by a preponderance of the evidence
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`that there is a likelihood of confusion of the two marks and that Applicant is not entitled to
`
`register its mark. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 973, 128
`
`
`
`4
`
`

`

`U.S.P.Q.2d 1370 (Fed. Cir. 2018); Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55
`
`U.S.P.Q.2d 1842 (Fed. Cir. 2000). To carry this burden, Opposer “must establish facts sufficient
`
`to support the conclusion that confusion, mistake or deception is likely.” Bridgestone Americas
`
`Tire Ops., LLC v. Fed. Corp., 673 F.3d 1330, 1333, 102 U.S.P.Q.2d 1061 (Fed. Cir. 2012).
`
`Pursuant to 15 U.S.C. § 1052(d), “no trademark shall be refused unless it is shown that there is a
`
`likelihood of confusion with another mark.” Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 840
`
`F.2d 1572, 1580, 6 U.S.P.Q.2d 1001 (Fed. Cir. 1988) (emphasis in original).
`
`V.
`
`STATEMENT OF THE FACTS
`
`
`
`
`
`A. Opposer’s “Lupin” marks specifically relate to the manufacture and distribution
`of generic pharmaceuticals
`
`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. Opposer also holds United States Trademark Registration No.
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`4874579 for the “word ‘Lupin’ and a flower shaped design.” Like the word mark “LUPIN,” this
`
`mark also is limited to pharmaceuticals (including antibiotics and antidepressants) and covers:
`
`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
`
`
`
`5
`
`

`

`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.
`
`
`
`
`
`Consistent with
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`these
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`registrations, Opposer manufactures
`
`and distributes
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`pharmaceuticals. (See 20 TTABVUE, Affidavit of Dave Berthold at ¶¶ 5-12).1
`
`B. The commercial impression of Opposer’s marks almost always includes the
`flower design and never features the word “Lupin”
`
`Opposer’s mark appears in commerce with its flower design, as follows:
`
`
`
`
`The term “Lupin” is the name of a plant. (20 TTABVUE at 20). Opposer’s consistent and
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`routine use of its mark in conjunction with flower, or Lupin plant, design can be seen on the
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`labelling of its pharmaceutical bottles, advertisements, website, and approved logos. (See 41
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`TTABVUE at Exh. 5). As these hundreds of pages repeatedly demonstrate, when the public
`
`encounters Opposer’s marks, it encounters the flower design. Indeed, the mark featuring the
`
`flower design forms the only mark Opposer has actually approved for use. (See TTABVUE at
`
`Exh. 5, LUP-000958).
`
`Additionally, Opposer’s use of its marks is secondary on its products to the
`
`pharmaceuticals’ actual brand or generic name. (See 20 TTABVUE, Affidavit of Jay Liska at
`
`Exhs. A & C2; see also 41 TTABVUE at Exh. 5). The inclusion of the “Lupin” mark on these
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`products is for identification, not marketing purposes. The marks that receive the primary
`
`emphasis of
`
`these advertisements are “Alinia,” “InspiraChamber,” “InspiraMask,”
`
`
`1 Hereinafter “Berthold Aff. at __.”
`2 Hereinafter “Liska Aff. at __.”
`
`
`
`6
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`

`

`“SootherMask,” “Methylphenidate HCI Chewable Tablets,” “Allernaze,” and “Antara 90.” (Id.).
`
`These third-party marks are the “public-facing front” of these materials. In contrast, the “Lupin”
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`mark can be found in the “fine print” of these advertisements, which emphasize the primary
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`brand name familiar to the public and not “Lupin,” the generic manufacturer. (Id.).
`
`Indeed, Opposer’s examples of its advertising demonstrate that its “Lupin” mark is not
`
`the primary commercial impression that is received in the marketplace. (See 30 TTABVUE at
`
`Exh. R). As examples of its advertising through a “variety of media,” (47 TTABVUE at 13),
`
`Opposer presents advertisements prominently featuring brands like “Antara,” “InspiraChamber,”
`
`and “Suprax,” or generic drug names like “Methlyphenidate HCI,” and not the “Lupin” mark.
`
`(30 TTABVUE at Exh. R). Outside of these advertisements, Opposer markets its products to
`
`industry insiders through medical journals, pharmaceutical trade journals, pharmaceutical
`
`bulletins, and specialty consumer medical publications. (47 TTABVUE at 13). These industry-
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`specific publications are targeted to physicians and similar sophisticated parties and there is no
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`evidence that patients taking Opposer’s drugs read “Infectious Disease in Children,” “Pharmacy
`
`Times,” or the other publications Opposer references.
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`Despite the actual materials Opposer has produced, Opposer claims that consumers
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`associate its “Lupin” mark with branded or generic drugs. This claim is based on self-serving
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`hearsay and speculation and should be disregarded. Opposer also claims that “[s]ome of these
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`publications are available to consumers in doctors’ offices,” (47 TTABVUE at 13), but Opposer
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`offers no consumer studies or surveys, or any other evidence beyond its own speculation that
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`patients who receive, for instance, “Methlyphenidate HCI” or “Antara” recognize that Opposer
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`manufactured the drug or would be confused by Applicant’s provision of non-pharmaceutical
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`related services.
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`7
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`Opposer also claims that the “Lupin” mark is printed without the flower logo and at times
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`directly on the capsule or tablet of its drugs, but the record of drugs it produces indicates an
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`infinitesimal number of drugs are actually printed in this manner. (41 TTABVUE at Exh. 6
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`[CONFIDENTIAL]). The overwhelming majority of Opposer’s pharmaceuticals do not have
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`“Lupin” printed on the capsule, and even the few packages that contain a “Lupin” label without
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`the flower logo prominently feature other names as the name of the actual product inside the
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`package. (See, e.g., 47 TTABVUE at 11).3 In any event, there is no evidence that anyone who
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`actually purchased or took one of the minute number of pharmaceuticals imprinted with “Lupin”
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`paid more significant attention to the writing on the package or tablet as opposed to the primary
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`branding of the container it came in or the instructions of the physician who provided it. To think
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`otherwise is wholesale speculation.
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`For example, a doctor writes a prescription for “Methlyphenidate HCI.” In having the
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`prescription filled, the patient does not come across “Lupin” except perhaps on the box (with the
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`flower logo) or (in a very small number of cases) on the capsule itself. Opposer speculates that
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`the patient will study that box or capsule and somehow make a connection between the drug and
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`Opposer. If the patient thinks about it at all, it is just as likely he or she concludes Opposer
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`manufactured the box or the capsule instead of the drug itself, which the doctor and the
`
`packaging both described by another name. Opposer offers no admissible evidence to the
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`contrary.
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`C. Opposer’s trade channels are targeted to highly sophisticated buyers
`
`
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`Opposer states that it is “the fourth largest generic company in the United States.” (47
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`TTABVUE at 15). The purchasers of Opposer’s generic products and services “are wholesale
`
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`3 Applicant again objects to Opposer’s reliance on the Berthold Trial Affidavit ¶¶ 3-7 and the documents referenced
`therein that were first produced during Opposer’s trial period, including those referenced on pages 10-11 of its brief.
`
`
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`8
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`pharmaceutical distributors…and federal agencies and programs.” (See 41 TTABVUE at Exh. 1,
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`Opposer’s Response to Interrogatory No. 18). Indeed, “Opposer sells its products through
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`wholesalers including AmeriSource Bergen, Cardinal, and McKesson, which are the three
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`largest pharmaceutical wholesalers in the United States.” (47 TTABVUE at 11) (emphasis
`
`added). These wholesalers in turn distribute Opposer’s products to “major retail chains” and
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`grocery chains, including Walmart, CVS, Walgreens, Giant, Harris Teeter, Publix, and Kroger.
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`(Id. at 11-12).
`
`Opposer’s pharmaceuticals are also “offered and sold to various federal government
`
`agencies and programs,” including VA hospitals, prisons, and Medicare and Medicaid programs.
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`(Id. at 12). Opposer also has agreements with “pharmaceutical and biopharmaceutical
`
`companies,” specifically major companies. (Id.). Although Opposer claims “ordinary consumers
`
`of pharmaceuticals may purchase” its drugs, (47 TTABVUE at 12), this statement is again
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`speculation, and Opposer’s own evidence and admissions prove that its buyers are large,
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`sophisticated industry insiders.
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`D. Opposer is completely absent from the “Lupus” space
`
`
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`Opposer does not manufacture any drug for the treatment of Lupus and does not offer
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`patient education and support groups. Opposer offers and sells non-steroidal anti-inflammatory
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`drugs, commonly referred to as “NSAIDs.” (47 TTABVUE at 27). 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. (47 TTABVUE at 47; Berthold Aff. at ¶ 16).
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`Like nearly every other disease or illness, symptoms of Lupus may include these run-of-the-mill
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`symptoms. Opposer has no specific connection to the Lupus disease aside from the extremely
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`attenuated relationship between these common symptoms and Opposer’s manufacture and
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`9
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`distribution of NSAIDs, which are used for general pain relief. Regardless of Opposer’s
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`arguments, its admissions confirm that it has no specific connection to the Lupus disease.
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`Indeed, Opposer has admitted 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.”
`(41 TTABVUE at Exh. 1, 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.” (Id.,
`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. (41
`TTABVUE at Exh. 2, 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