Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA959543
`
`Filing date:
`
`03/11/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91226322
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Lupin Pharmaceuticals, Inc.
`
`DIANE B MELNICK
`POWLEY & GIBSON PC
`304 HUDSON ST 2ND FLOOR
`NEW YORK, NY 10013
`UNITED STATES
`trademarks@powleygibson.com, dbmelnick@powleygibson.com,
`thcurtin@powleygibson.com, smmorales@powleygibson.com
`212-226-5054
`
`Rebuttal Brief
`
`Suzanna M. M. Morales
`
`thcurtin@powleygibson.com, smmorales@powleygibson.com
`
`/suzanna m m morales/
`
`03/11/2019
`
`rebuttal public.pdf(1912723 bytes )
`Lupin - Ampel - rebuttal appendix of evidentiary issues FINAL.pdf(39526 bytes )
`Lupin - Ampel - rebuttal brief cert of service.pdf(20764 bytes )
`
`

`

`IN THE US. PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`_____________________________________________________X
`
`LUPH\I PHARMACEUTICALS, INC,
`
`V.
`
`Opposer,
`
`,
`
`Opposition No. 91226322
`
`AMPEL, LLC,
`
`Applicant.
`______________________________________________________X
`
`REBUTTAL BRIEF OF OPPOSER
`
`LUPIN PHARMACEUTICALS, INC.
`
`

`

`TABLE OF CONTENTS
`
`Introduction ......................................................................................................................... 1
`
`Applicant’ 5 Arguments Cannot Detract from the Near Identity of the Marks .................... 5
`
`Applicant’s Assertions About How Opposer “Always” Presents the LUPIN Mark Are
`
`False and Irrelevant ............................................................................................................. 5
`
`LUPlN Is the Dominant Portion of Opposer’s Composite Mark and Opposer’s Composite,
`
`LUPIN Mark Adds to the Strength of Its Rights to LUPIN ................................................ 8
`
`Applicant’s Argument That Opposer Does Not Use Its House Mark As the Actual Name
`
`of Its Products Is Not Based on the Record and Irrelevant ................................................. 9
`
`Opposer’s LUPIN Mark Is Strong and Entitled to a Broad Scope of Protection .............. 1 I
`
`There Is No Basis to Distinguish the Parties’ Marks ........................................................ 12
`
`The Parties’ Respective Channels of Trade and Classes of Consumers Overlap .............. 15
`
`Both Parties’ Goods and Services Are Provided to Ordinary Patients .............................. 15
`
`Applicant’s Arguments That Its Channels of Trade Are Limited Only Demonstrate That
`
`Applicant Sells Its Suite of Services Directly to Opposer’s Competitors ......................... l8
`
`Applicant’s Misstatement of the Law Does Not Detract from the Relatedness of the
`
`Parties’ Goods and Services .............................................................................................. 20
`
`Conclusion......................................................................................................................... 21
`
`ii.
`
`iii.
`
`iv.
`
`ii.
`
`iii.
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`
`B&B Hardware, Inc. V. Hargis Indus.,_~Inc.,
`
`135 S. Ct. 1293, 113 U.S.P.Q.2d 2045 (2015) .......................................................................................... 1
`B.V.D. Licensing Corp. V. Rodriguez,
`
`83 U.S.P.Q.2d 1500 (T.T.A.B. 2007) ........................................................................................................ 8
`
`Baroid Drilling Fluids, Inc. V. Sun Drilling Products,
`
`24 U.S.P.Q.2D 1048 (T.T.A.B. 1992) ..................................................................................................... 13
`
`Bose Corp. V. QSC Audio Prods,
`
`293 F.3d 1367 (Fed. Cir. 2002) ......................................................................................................... 11, 12
`
`Braun Inc. v. Dynamics Corp. of Am.,
`
`975 F.2d 815 (Fed. Cir. 1992) ................................................................................................................. 12
`
`CareFirst of Md. Inc. V. First Care P.C.,
`
`434 F.3d 263 (4th Cir. 2006) ..................................................................................................................... 5
`
`CBS Inc. V. Morrow,
`
`708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) ................................................................................. 8, 19
`
`Cont’l Plastic Containers V. Owens Brockan Plastic Prod, Inc.,
`
`141 F.3d 1071, 46 U.S.P.Q.2d 1277 (Fed. Cir. 1998) ....................................................................... 15, 16
`
`Cunningham V. Laser Golf Corp,
`
`222 F.3d 943 (Fed. Cir. 2000) ................................................................................................................... 5
`
`George & Co. LLC V. Imagination Ent’mt Ltd,
`
`575 F.3d 383 (4th Cir. 2009) ..................................................................................................................... 5
`
`Giant Food Inc. V. Nation’s Foodservice Inc,
`
`710 F.2d 1565, 218 U.S.P.Q. 390, 395 (Fed. Cir. 1983) ........................................................................... 8
`
`Homady Mfg. Co. V. Doubletap,_Inc.,
`
`746 F .3d 995 (10th Cir. 2014) ................................................................................................................... 5
`
`In re Ametito Provisions C0.,
`
`3 U.S.P.Q.2d1553, 1553 (T.T.A.B. 1987) .............................................................................‘................... 8
`In re Bay State Brewing Co.,
`
`117 U.S.P.Q.2d 1958 (TTAB 2016) ........................................................................................................ 13
`
`In re Big Pig, Inc.,
`
`81 U.S.P.Q.2d 1436 (T.T.A.B. 2006) ........................................................................................................ 5
`
`In re Concordia Int’l Forwarding Com,
`
`222 U.S.P.Q. 355 (T.T.A.B. 1983) .......................................................................................................... 15
`
`In re Coors Brewing Co.,
`
`68 U.S.P.Q.2d 1059, 343 F.3d 1340 (Fed. Cir. 2003) ............................................................................. 12
`
`In re Max Capital Group Ltd,
`
`93 U.S.P.Q.2d 1243 (T.T.A.B. 2010) ................................................................................................ 5, 8, 9
`
`In re Morinaga Nvugyo Kabusihki Kaisha,
`
`‘
`
`120 U.S.P.Q. 1738 (T.T.A.B. 2016) .................................................................................................... 6, 15
`
`In re Mucky Duck Mustard Co., Inc,
`
`.
`
`6 U.S.P.Q.2d 1467 (T.T.A.B. 1988) ........................................................................................................ 17
`
`ii
`
`

`

`Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA V. New Millennium Sports, S.L.U.,
`
`797 F.3d1363, 116 U.S.P.Q.2d 1129 (Fed. Cir. 2015) ............................................................................. 8
`
`Kellogg Co. V. General Foods Corp,
`
`166 U.S.P.Q. 281 (T.T.A.B. 1970) .......................................................................................................... 10
`
`King of the Mountain Sports, Inc. V. Chflsler Cogp,
`
`185 F.3d 1084 (10th Cir. 1999) ................................................................................................................. 5
`
`Kohler Co. V. Baldwin Hardware Corp,
`
`82 U.S.P.Q.2d 1100 (T.T.A.B. 2007) .......................................... 3, 11, 2]
`
`K03 Pharms., Inc. V. Andrx Copp,
`
`369 F.3d 700 (3d Cir. 2004) .................................................................................................................... 16 _
`
`Mattel. Inc. V. Funline Merchandise Co.. Inc.,
`i
`
`81 U.S.P.Q.2d 1372 (T.T.A.B. 2006) ........................................................................................................ 1
`
`Miss Universe LP. LLLP V. Cmty. Mktg., Inc,
`
`82 U.S.P.Q.2d 1562 (T.T.A.B. 2007) ...................................................................................................... 15
`
`Octocom Sys. V. Houston Computer Servs.,
`
`918 F.2d 937 (Fed. Cir. 1990) ................................................................................................................... 1
`
`Pandora Jewelry, LLC V. Pandora’s Makeup Box Inc.,
`
`2015 TTAB LEXIS 556 (T.T.A.B. Apr. 1, 2015) ...................................................................................11
`
`RE/MAX of Am., Inc. V. Realm Mart, Inc,
`
`207 U.S.P.Q. 960 (T.T.A.B. 1980) .......................................................................................................... 13
`
`T.A.B. Sys. V. Pactel Teletrac,
`
`77 F.3d 1372, 37 U.S.P.Q. 1879 (Fed. Cir. 1996) ................................................................................... 11
`
`The N. Face Apparel Copp. V. Samyan Indus. Co., Ltd.,
`
`116 U.S.P.Q.2d 1217 (T.T.A.B. 2015) .............................................................................................. 12, 17
`
`Two Pesos Inc. V. Taco Cabana,
`
`120 L. Ed. 2d 615, 505 US. 763 (1992) ................................................................................................. 12
`
`Viacom Int'l. Inc. V. IJR Cap. Investments, LLC,
`
`127 U.S.P.Q.2d 1112 (5th Cir. 2018) ...................................................................................................... 17
`
`Wag’n Enters, LLC V. United Animal Nations,
`
`2012 WL 1633410 (E.D. Va. 2012) ........................................................................................................ 12
`
`Weider Pubs. LLC V. D & D Beapfl Care Co. LLC,
`
`109 U.S.P.Q.2d 1347 (T.T.A.B. 2014) ........................................................................................ 12, 20, 21
`
`Worthington Foods, Inc. V. Kellogg Co.,
`
`732 F. Supp. 1417 (SD. Oh. 1990) ......................................................................................................... 21
`
`Statutes
`
`TBMP § 704.03(a) ....................................................................................................................................... 14
`
`TMEP § 1212.06(e)(v) ................................................................................................................................ 13
`
`TMEP § 1402.03(b) ................................................................................................................................. 9, 10
`
`TMEP § 1402.03(c) .................................................................. . ................................... 4
`
`Other Authorities
`
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11.13 (5th Ed. 2019) ........................... 11
`
`iii
`
`

`

`Applicant is attempting to register a mark (LuPPiN) (hereinafter referred to as “LUPPlN”) that is
`
`nearly identical to Opposer’s mark (LUPIN) for use with services that are closely related and would be
`
`offered to a consumer group that overlaps with the consumers of Opposer’s full line of pharmaceutical
`
`preparations. Applicant seeks to distract the Board from the irrefutable facts by floating misstatements of
`
`law and fact. Opposer urges the Board to see past Applicant’s unsupported allegations and simply
`
`consider the established, undisputed facts of this case, which demonstrate a likelihood of confusion and
`
`great potential damage to Opposer’s well-lmown LUPlN brand.
`
`A.
`
`Introduction
`
`The purpose of this and all other opposition proceedings is to determine Whether the applied—for
`
`
`mark is entitled to the benefits of federal trademark registration. See B&B Hardware, Inc. V. Hargis
`
`
`Indus. Inc, 135 S. Ct. 1293, 1300—01, 113 U.S.P.Q.2d 2045 (2015). It is black letter law that the question
`
`of registrability of an applicant’s mark must be decided on the basis of the identification of the goods and
`
`services set forth in the application regardless of what the record may reveal as to the particular nature of
`
`an applicant’s goods and services, the particular channels of trade or the class of purchasers to which sales
`
`of the goods and services are directed. Octocom Sys. v. Houston Computer Servs., 918 F.2d 937, 942
`
`(Fed. Cir. 1990). Similarly, the goods covered by Opposer’s cited federal registrations must be considered
`
`without limitation, with full consideration as to the nature of all goods, classes of consumers, and
`
`channels of trade. Mattel. Inc. v. Funline Merchandise Co., Inc., 81 U.S.P.Q.2d 1372, 1374 (T.T.A.B.
`
`2006). Finally, a registration in standard characters “is not limited to a particular manner of display.” I_d.
`
`at 1375. Such a registration covers the use of the mark “in any reasonable style of lettering.” LL.
`
`Applicant seeks to register the mark LUPPlN for:
`
`Education services, namely, providing seminars and one-on one (sic) mentoring in the
`fields of Lupus, Lupus treatment options and the importance of clinical trials; training
`Lupus patients to teach other Lupus patients about the nature of Lupus, available treatments
`and the importance of clinical trials, in Class 41, and
`
`Organizing and conducting support groups for Lupus patients who are undergoing
`treatment and clinical trials, and for the caregivers of Lupus patients who are undergoing
`treatment and clinical trials, in Class 45.
`
`

`

`The actual and potential consumers of Applicant’s services include individual Lupus patients,
`
`(who may not only utilize Applicant’s LUPPIN services but also may take LUPIN pharmaceutical
`
`products); Lupus caregivers; pharmaceutical companies to which Applicant offers to provide its education
`
`and support group services to induce participants to take part in clinical trials to test the drugs of
`
`pharmaceutical companies; and anyone interested in Lupus, Lupus treatment, or “the importance of
`
`clinical trials.” Lipsky Depo. at 14214-16; 38:18—39:12; 30(b)(6) Depo. at 87:7—14.
`
`Opposer’s registrations for the LUPIN mark cover:
`
`house mark for full line of pharmaceuticals for medical purposes, but excluding dietary
`supplements and edible flour (Reg. No. 4024405); and
`
`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 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 (Reg. No. 4874579).
`
`The actual and potential consumers of Opposer’s goods include drug wholesalers, retail
`
`pharmacies, federal agencies, other pharmaceutical and biopharmaceutical companies with which
`
`Opposer has licenses, hospitals,1 as well as ordinary consumers of pharmaceuticals any part of a “full line
`
`1 Applicant claims that Opposer, by drawing the Board’s attention to specific hospitals where Applicant
`intends to offer its LUPPIN program and where Opposer’s goods are provided to patients, has “chang[ed
`its] View of this case.” Trial Brief of Applicant Ampel, LLC, 49 TTABVUE at 16—17. That
`characterization is not accurate. A year ago, Opposer argued that Applicant’s services and Opposer’s
`
`

`

`of pharmaceuticals for medical purposes,” including for those symptoms and conditions listed in Reg. No.
`
`4874579. Berthold SJ. Aff. at W 20—23, 29; Berthold Trial Aff. at fl 7.
`
`Applicant does not dispute that Opposer provides educational information through its websites
`
`and in consumer-facing materials. Lupin’s Trial Brief2 at p. 33; Liska Aff. at 1] 12. Applicant does not
`
`dispute that Opposer sponsors and underwrites educational initiatives. Lupin’s Trial Brief at pp. 13-14;
`
`Liska Aff. at 1111 7-10. Unrebutted evidence demonstrates that various third parties offer both
`
`pharmaceutical products as well as related educational and support services under the same marks, as a
`
`common industry practice. Moreover, and pharmaceutical companies are often involved in patient partner
`
`initiatives and sponsor the same. Lupin’s Trial Brief at pp. 30—33, 41-42.3 See Kohler Co. v. Baldwin
`
`Hardware Corp, 82 U.S.P.Q.2d 1100 (T.T.A.B. 2007). This is bolstered by the testimony of Applicant’s
`
`own principal Dr. Lipsky about his own prior patient partner program that was sponsored by a
`
`pharmaceutical company. Lupin’s Trial Brief at p. 18; Lipsky Depo. at 69:23-70:4.
`
`The near identity of the marks, combined with the irrefutable evidence of the parties’ overlapping
`
`channels and classes of consumers leads to the conclusion that a likelihood of confusion would result
`
`from the registration of Applicant’s LUPPIN mark.
`
`There is no known cure for Lupus, and only one drug has been approved in the past fifty years
`
`specifically for the treatment of Lupus, which, according to Applicant, has limited effectiveness. Lupin’s
`
`Trial Brief at p. 27; 30(b)(6) Depo. at 10922—5; 29 TTABVUE at Exh. E, pp. APB-00446 ~ APB—00448.
`
`Instead, Lupus patients take a variety of drugs to treat the numerous symptoms of the disease. The
`
`symptoms include, inter alia, fatigue, headache, arthritis, nervous system involvement, and many others.
`
`goods may both be provided through hospitals. See. e.g., Reply in Further Support of Motion for
`Summary Judgment by Opposer Lupin Pharmaceuticals, Inc, 23, 24 TTABVUE 7.
`2 Trial Brief of Opposer Lupin Pharmaceuticals, Inc, 47, 48 TTABVUE, is hereinafter referenced as
`“Lupin’s Trial Brief.” Trial Brief of Applicant Ampel, LLC, 49 TTABVUE, is hereinafter referenced as
`“Applicant’s Brief.” All other references to the record take the same format as used in Lupin’s Trial Brief.
`3 Opposer addresses Applicant’s arguments regarding the admissibility of this evidence in Opposer’s
`Appendix of Evidentiary Issues at 1] 4.iii.
`
`

`

`Lupin’s Trial Brief at p. 26. In order to treat such symptoms, Lupus patients take drugs such as non-
`
`steroidal anti-inflammatory drugs (“NSAIDS”), corticosteroids, anti—malarial drugs, Angiotensin-
`
`converting enzyme (ACE) inhibitors, statins, and other drugs. Li. at 27. Opposer manufactures and sells
`
`NSAIDS“, corticosteroids, anti—malarial drugs, ACE inhibitors, statins, and numerous other drugs, all
`
`under the LUPIN brand and Opposer’s LUPIN registration.5 Moreover, as Applicant admits, the Board
`
`should look to the goods covered by the Opposer’s Registrations, i.e., a “full line” of pharmaceutical
`
`preparations. Applicant’s Brief at p. 25; TMEP § l402.03(c) (5th Ed. Oct. 2007)6 (“applicant is
`
`committing to virtually all the goods described by the broad language”). Indeed, with symptoms effecting
`
`the musculoskeletal, cardiovascular, circulatory, pulmonary, renal, and nervous systems, as well as eyes
`
`and skin, a single Lupus patient could require nearly a full line of pharmaceutical preparations. 31
`
`TTABVUE at Exh. K—lO, pp. APB-00436 ~ 445.7
`
`4 lnexplicably, Applicant singles out NSAIDs alone among the several different drugs that Opposer
`provides that can be used to treat symptoms of Lupus. Applicant’s Brief at p. 9.
`5 Applicant has emphasized that Opposer does not provide goods or services “solely,” “only,” or
`“specifically intended” for use in relation to Lupus. Applicant’s Brief at p. 10. As noted, only. one drug
`has been approved in the past fifty years specifically for the treatment of Lupus, and, in that regard,
`Opposer is in the company of nearly every other pharmaceutical company. A major part of Applicant’s
`business model is soliciting these pharmaceutical companies whose products are not “solely,” “only,” or
`“specifically intended” for treatment of Lupus to conduct clinical trials for repurposing the products for
`treatment of Lupus. In this context, Applicant’s claim that Opposer “lack[s] any real connection to the
`Lupus disease” is disingenuous. Further, Applicant has cherry-picked Opposer’s responses to Applicant’s
`lnterrogatory Nos. 8 and 9 for language that suits Applicant. Opposer draws the Board’s attention to its
`response and amended response to lnterrogatory No. 7, which is incorporated by reference into its
`responses to Nos. 8 and 9 and lists a number of drugs provided by Opposer that are approved and
`marketed for treatment of a range of diseases and conditions, including common symptoms of Lupus. 44
`TTABVUE at Exh. DD, No. 7; Exh. FF, No. 7. Further, as discussed in Lupin’s Trial Brief, the
`repurposing research conducted by Applicant narrowed approximately 1,100 FDA—approved drugs to 157
`potential treatments for Lupus. The narrowed list of 157 potential treatments included four preparations
`manufactured, either alone or in combination with other pharmaceutical preparations, by Opposer.
`Lupin’s Trial Brief at p. 29.
`6 This was the edition of the Trademark Manual of Examining Procedure in effect at the time of
`Opposer’s application.
`7 As noted in Lupin’s Trial Brief, Opposer’s Reg. No. 4874579 includes pharmaceutical preparations
`specifically for treatment of the musculoskeletal, circulatory, and nervous systems, skin, and eyes, among
`others. Lupin’s Trial Brief at p. 8 n.2.
`
`

`

`B.
`
`Applicant’s Arguments Cannot Detract from the Near Identity of the Marks
`
`Opposer’s mark is LUPIN. Opposer owns registrations for its LUPIN mark in standard characters
`
`and in conjunction with a design, and uses its LUPIN mark with and without a design. Lupin’s Trial Brief
`
`at pp. 9—1 1. Applicant’s mark is LUPPIN. Applicant admits that the marks “share alike pronunciation.”
`
`Applicant’s Brief at p. 24. Applicant attempts to distinguish the commercial impressions created by
`
`Opposer’s LUPIN mark and Applicant’s LUPPTN mark are unavailing as the only character separating the
`
`parties’ respective marks is an additional, silent “P,” as well as the capitalization of certain letters of its
`
`mark, which are both immaterial particularly since consumers will recall and order by the brand name. I_n
`
`re Max Capital Group Ltd, 93 U.S.P.Q.2d 1243, 1247 (T.T.A.B. 2010). Moreover, the claimed
`
`“stylization” of Applicant’s mark is so minimal it should not be given any weight. Lupin’s Trial Brief at
`
`pp. 34—35.
`
`i.
`
`Applicant’s Assertions About How Opposer “Always” Presents the LUPIN Mark
`Are False and Irrelevant
`
`Applicant’s Brief includes arguments about the number of times the LUPIN mark may or may not
`
`have appeared with or without the flower design, or on tablets or capsules, claiming to support these
`
`arguments with documents produced by Opposer. m, Applicant’s Brief at pp. 6, 8. However, such
`
`arguments carry no weight in view of Board precedent. The relevant marks are the mark covered by the
`
`application and the mark covered by Opposer’s registrations.8 Cunningham V. Laser Golf Corp. ,222 F.3d
`
`943, 949 (Fed. Cir. 2000); In re Big Pig, Inc., 81 U.S.P.Q.2d 1436, 1438 (T.T.A.B. 2006). Opposer owns
`
`8 Various federal trademark infringement cases cited by Applicant for the proposition that the Board
`should consider only the parties’ presentation of their marks in stylized form or as accompanied by a
`design are inapposite, as they do not address the issue of registration, and these cases also involved
`different facts not at issue here. See, e.g_., George & Co. LLC v. Imagination Ent’mt Ltd.,5 75 F.3d 3 83
`(4th Cir. 2009) (comparing plaintiff s mark LCR with the mark LEFT CENTER RIGHT); CareFirst of
`
`Md. Inc. v. First Care PC, 434 F.3d 263 (4th Cir. 2006) (marks were always displayed with other
`words); King of the Mountain Sports, Inc. v. Chrysler Conn, 185 F.3d 1084 (10th Cir. 1999) (plaintiff
`and defendant both had stylized marks, and defendant’s mark incorporated other wording); Hornady Mfg.
`Co. v. Doubletap. Inc, 746 F.3d 995 (10th Cir. 2014) (considering a specific meaning of the common
`term TAP in the relevant industry, along with other wording in both parties’ marks). Applicant also fails
`to cite to any cases involving identically-pronounced marks that differ by only a single, silent letter.
`
`

`

`and has pled its registration of the mark LUPlN in standard characters for a “full line” of pharmaceutical
`
`products. 29 TTABVUE at EXh. A; In re Morinaga Nyugyo Kabusihki Kaisha, 120 U.S.P.Q. 1738, 1741
`
`(T.T.A.B. 2016) (declining to consider the registrant’s word-and-design mark against the applicant’s
`
`word-and-design mark and refusing registration on the sole basis of registrant’s standard-character
`
`registration covering the same words as the word-and—design registration). There is no dispute that
`
`nothing prevents Opposer from presenting its mark in a similar “stylization” as Applicant’s claimed mark,
`
`i.e., LuPiN and LuPPiN. Moreover, Applicant’s “stylization” is insufficient to distinguish it from
`
`Opposer’s LUPIN mark, particularly as the marks are pronounced identically.
`
`Nonetheless, in an attempt to overcome the near identity of the parties’ respective marks,
`
`Applicant repeatedly claims that Opposer “always” uses its LUPIN mark in connection with its design.
`
`Applicant’s Brief at pp. 1, 17, 21, 23. Applicant’s statement, however, is not true and ignores Opposer’s
`
`registered mark (Reg. No. 4024405), which is for the mark LUPlN in standard characters without any
`
`design element. As amply demonstrated by the record, Opposer owns a US. trademark registration for the
`
`mark LUPIN in standard characters and this is the relevant point of consideration as required by this
`
`Board’s own precedent. Opposer also owns a registration for the LUPIN mark with flower design.
`
`Applicant compounds this falsehood through entirely unsupported assertions it claims are based
`
`upon documents produced by Opposer. Applicant incorrectly represents that “the mark featuring the
`
`flower design forms the only mark Opposer has actually approved for use,” citing to a document Opposer
`
`produced during discovery. Applicant’s Brief at p. 6 (emphasis in original); 41 TTABVUE at Exh. 5,
`
`
`LUP—000958; see also Applicant’s Brief at 18, 23. On its face, this document simply states that the
`
`stylized word/design marks displayed on the page were “Approved Lupin Pharmaceuticals, Inc. Logos”
`
`as of 2006. Any interpretation beyond this should not be given any weight by the Board. The applicability
`
`of this document is limited not only because it is more than thirteen years old, but also because it does not
`
`show how Opposer’s LUPIN mark is “always” displayed and Applicant’s attempt to create additional
`
`meaning out of this document ignores Opposer’s pleaded registrations. Over the past thirteen years, the
`
`

`

`number of different pharmaceuticals manufactured and sold by Opposer has greatly increased, and
`
`Opposer’s sales have grown exponentially. Berthold S.J. Aff. at W 12, 28. Opposer launched its LUPIN
`
`brand in 2005 with one drug. It now markets over 150.1; at W 8, 12. Applicant’s arguments concerning
`
`a single document showing “Approved Lupin Pharmaceuticals, Inc. Logos” dated 2006 should be given
`
`little weight, particularly since Applicant fails to provide any corroborative evidence to lend context to the
`
`1T:‘
`
`document and any support to Applicant’s conjecture. Nowhere does this document state that these are the
`
`“only” manners in which the LUPIN mark could be displayed in 2006 (or any other time in the
`
`intervening thirteen years), nor does it state that the word mark LUPIN cannot be displayed alone.
`
`Further, Applicant took no depositions either during discovery or during the trial period. Applicant sought
`
`no testimony about the meaning of this document. Applicant expediently posits baseless speculation and
`
`arguments, without a shred of credible, corroborating evidence.9
`
`Similarly, Applicant states that “Opposer also claims that the ‘Lupin’ mark is printed without the
`
`flower logo and at times directly on the capsule or tablet of its drugs, but the record of drugs it produces
`
`indicates an infinitesimal number of drugs are actually printed in this manner.” Applicant’s Brief at p. 8
`
`(emphasis in original). Applicant supports this broad assertion by citing only to Exhibit 6 of its Notice of
`
`Reliance, which is a series of spreadsheets produced by Opposer.10 Again, Applicant fails to provide any
`
`context whatsoever for this spreadsheet or to adduce any other proof to support its unfounded conclusion.
`
`In contrast, the unchallenged testimony by Dave Berthold, Opposer’s Vice President of Sales and
`
`Operations, U.S. Generics states that the LUPIN mark, which has been used in the United States for
`
`nearly fourteen years, appears on packaging for all of Opposer’s branded and generic pharmaceuticals as
`
`9 Opposer discusses its evidentiary objections to Applicant’s introduction of this document in the attached
`Appendix of Evidentiary Issues at 1] 9.
`1° Opposer stipulated to the admissibility of Applicant’s Exhibit 6 as well as LUP—00095 8, but otherwise
`reserved all other objections to these documents. 40 TTABVUE 2. In light of the lack of context via
`testimony or other supporting documentation and Applicant’s failure to prop up its unfounded
`conclusions regarding these documents, these documents have no probative value for the arguments
`advanced by Applicant and should be given little weight, if any. See also Appendix of Evidentiary Issues,
`appended hereto, at 11 9.
`
`

`

`well as on some drugs. Berthold S.J. Aff. at W 10, 13-15. Mr. Berthold also testified as to the sales
`
`growth and extensive sales of LUPJN products, over $1 billion in 2017 alone. Berthold SJ. Aff. at 11 28.
`
`Opposer also has provided various examples of the mark appearing both with and without the floral
`
`design. Berthold SJ. Aff. at 1M 13-15; Berthold Trial Aff. at w 3—4; Lupin’s Trial Brief at pp. 9—1 1.
`
`Finally, this is a further attempt by Applicant to draw the Board’s attention away from what mark is
`
`actually covered by Opposer’s registrations.
`
`ii.
`
`LUPIN Is the Dominant Portion of Opposer’s Composite Mark and Opposer’s
`Composite LUPIN Mark Adds to the Strength of Its Rights to LUPIN
`
`Opposer’s use and registration of its mark with a floral design also does not alter the calculus
`
`because the word portion of Opposer’s LUPIN mark is the dominant, origin—indicating portion of
`
`Opposer’s mark. B.V.D. Licensing Corp. V. Rodriguez, 83 U.S.P.Q.2d 1500, 1508—1509 (T.T.A.B. 2007).
`
`The flower design is not spoken and does not lend any inflection to Opposer’s LUPlN mark. The Board
`
`may consider one element of a mark as more dominant than another, particularly where the mark consists
`
`
`of word and design portions. Max Capital, 93 U.S.P.Q.2d at 1247; Giant Food Inc. v. Nation’s
`
`
`Foodservice Inc., 710 F.2d 1565, 218 U.S.P.Q. 390, 395 (Fed. Cir. 1983). Consumers are more likely to
`
`recall, and will order by, the word portion of a mark, without regard to capitalization or accompanying
`
`design. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U.,
`
`797 F.3d 1363, 116 U.S.P.Q.2d 1129, 1134 (Fed. Cir. 2015) (citing CBS Inc. v. Morrow, 708 F.2d 1579,
`
`218 USPQ 198, 200 (Fed. Cir. 1983)). “[I]f one of the marks comprises both a word and a design, then
`
`the word is normally accorded greater weight because it would be used by purchasers to request the goods
`
`or services.” In re Appetito Provisions Co., 3 U.S.P.Q.2d 1553, 1553 (T.T.A.B. 1987). Applicant has
`
`provided no justification for the Board to depart from this principle.
`
`Opposer’s flower design is arbitrary as applied to Opposer’s pharmaceutical products, and
`
`consumers may not even recognize the highly stylized design as a flower, let alone a lupin flower.
`
`Consumers are not likely to recall or request a particular brand of pharmaceutical products as “the flower
`
`

`

`design brand.” S