IN RE PHYTOCHROME PHARMACEUTICALS, INC., 77709896 (TTAB 3-8-2011)
Serial No. 77709896United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: March 8, 2011Page 1
THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.
Louis C. Paul of Louis C. Paul Associates, PLLC for Phytochrome Pharmaceuticals, Inc.
Kaelie E. Kung, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney)[fn1] [fn1] Responsibility for this application was assigned to Ms. Kung after the filing of the Examiner’s Statement. Prior to that, Emily K. Carlsen examined the application and wrote the Examiner’s Statement.
Before Seeherman, Wellington and Lykos, Administrative Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Phytochrome Pharmaceuticals, Inc. has appealed the final refusal of the trademark examining attorney to register PHYTOCHROME PHARMACEUTICALS, in standard characters, and with PHARMACEUTICALS disclaimed, for “pharmaceutical research and development; cosmeceuticalPage 2
research and development.”[fn2] Registration has been refused pursuant to Section 2(d) of the Trademark Act,15 U.S.C. ? 1052(d), on the ground that applicant’s mark so resembles the mark PHYTOCHROME, registered in typed drawing format for “nutritional supplements,”[fn3] that, if used in connection with applicant’s identified services, it is likely to cause confusion or mistake or to deceive.
Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc.,315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).Page 3
Turning first to the marks, applicant has essentially taken the registered mark, PHYTOCHROME, and added to it the word PHARMACEUTICALS. Although in comparing the marks we must, as applicant has pointed out, consider the marks in their entireties, it is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, because PHARMACEUTICALS is descriptive[fn4]
of the identified “pharmaceutical research and development” services, consumers will look to the first word of the mark, PHYTOCHROME, as the portion with source-identifying significance. Accordingly, although the additional word PHARMACEUTICALS in applicant’s mark resultsPage 4
in some differences in appearance and pronunciation, these differences are insufficient to distinguish the marks. Moreover, although the word PHARMACEUTICALS provides additional information about applicant’s services because it is descriptive, both marks have essentially the same meaning and convey the same commercial impression.[fn5]
As the examining attorney has pointed out, the general rule is that a subsequent user may not appropriate the entire mark of another and avoid a likelihood of confusion by adding descriptive or subordinate matter thereto. See In re Jump Designs LLC, 80 USPQ2d 1370, 1375 (TTAB 2006) and cases cited therein: Hewlett-Packard Co. v. Packard Press Inc.,281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002) (HEWLETT PACKARD and PACKARD TECHNOLOGIES); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986) (RESPONSE and RESPONSE CARD); and In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS). Applicant’s examples of cases in which noPage 5
likelihood of confusion have been found are inapposite, as they involve the addition of a distinctive element which, when added to the registrant’s mark, creates a mark with a different meaning and commercial impression. See, e.g., Colgate-Palmolive Co. v. Carter-Wallace, Inc., 167 USPQ 529 (CCPA 1970) (PEAK PERIOD and PEAK).
The du Pont factor of the similarity of the marks favors a finding of likelihood of confusion.
This brings us to a consideration of the goods and services, keeping in mind that the greater the degree of similarity between the applicant’s mark and the cited registered mark, the lesser the degree of similarity between the applicant’s goods or services and the registrant’s goods or services that is required to support a finding of likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). We address first the fact that the examining attorney has focused her attention on applicant’s “pharmaceutical research and development” services. The Office is under no burden to demonstrate that confusion is likely with respect to each item or service in the identification of a single-class application, such as the one involved in this appeal; likelihood of confusion must be found if there is likely to be confusion with respect to any good or service identifiedPage 6
in such an application. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
In support of her position that the goods and services are related, the examining attorney has submitted third-party registrations and excerpts from third-party websites. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel Sons Co., 29 USPQ2d 1783 (TTAB 1993). The third-party registrations showing that companies have adopted a single mark for services of the type identified in applicant’s application and the goods identified in the cited registration include the following:
Reg. No. 3613825 for a design mark for, inter alia, dietary supplements and scientific research and analysis services for further application in the medical and pharmaceutical fields;
Reg. No. 3514187 for AMINOPURE for, inter alia, nutritional supplements for gastrointestinal health and for enhancing immune responses and product research and development in the fields of dietary and nutritional supplements and pharmaceutical preparations;
Reg. No. 3198935 for ADH and design for, inter alia, nutritional supplements and product research andPage 7
development in the field of vitamins, nutritional supplements, and product research and development in the field of vitamins, nutritional supplements and amino acids for medical purposes; and
Reg. No. 2910457 for M MARTEK for, inter alia, nutritional supplements and biotechnology research and development services.
The website evidence shows companies featuring on their websites that they do pharmaceutical product research and development and also market products. See, for example:
The website for Life Extension has the subhead “Clinical Research of Nutritional Supplements, Vitamin Supplements and Herbal Supplements” and describes itself as “a research organization engaged in cutting-edge clinical research?.” It also features various supplements, such as B12, bearing the trademark LIFE EXTENSION. www.lef.org
The website for BIOVA states that the company’s “advanced Research and Development capabilities have yielded several patent-pending processes and unique branded ingredient products. ? Target markets include cosmeceutical, pharmaceutical, animal health and nutraceutical applications, including supplement and functional food products.” www.biova.com
“Hi-Tech Pharmacal Co., Inc., a leading manufacturer and marketer of branded and generic liquid pharmaceutical products in the United States, isPage 8
dedicated to meeting the needs of its customers through development and marketing of the highest quality pharmaceuticals.” www.hitchpharm.com
The Johnson Johnson website, www.jnj.com, lists various products, including Viactiv as “a healthy path to more calcium in your diet,” while at www.jnjpharmarnd.com, it states: “Johnson Johnson Pharmaceutical Research Development, L.L.C. By leveraging our world-class discovery and development expertise, ?. Within our labs, scientists are harnessing these advances and are breaking new ground in the development of tomorrow’s medicines?.”
Taken together, this evidence, along with the fact that a lesser degree of relatedness is required between the goods and services in view of the highly similar marks, is sufficient to show that applicant’s services and opposer’s goods are related. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993) (service station and lubrication change services related to distributorship services in the field of automotive parts). This du Pont factor favors a finding of likelihood of confusion.
Applicant argues, however, that two other du Pont factors, the channels of trade and sophistication of purchasers, outweigh the factors of the similarity of the marks and the similarity of the goods and services. Certainly if channels of trade for goods or services arePage 9
totally different, so that customers for one will not encounter the goods or services of the other, there will be no opportunity for confusion to occur. And in this case we can accept applicant’s argument that its pharmaceutical and cosmeceutical research and development services will be offered to individuals or companies that sell or wish to sell pharmaceutical or cosmeceutical products, and not the general public, who are the purchasers of the registrant’s nutritional supplements. However, these sophisticated consumers of applicant’s services will not be insulated from exposure to the registrant’s nutritional supplements, which is the situation when the channels of trade factor outweighs the factors of the similarity of the marks and the goods and services. Consumers of pharmaceutical research and development services are also members of the general public and therefore may come into contact with the registrant’s nutritional supplements; in fact, they are more likely to know of the nutritional supplements because of their sophistication about the pharmaceutical industry. Further, because of their more specialized knowledge they will be aware that companies that engage in research and development of pharmaceutical and nutritional supplement products also sell such products. As a result, such potential purchasers, knowing of nutritional supplementsPage 10
offered under the mark PHYTOCHROME, and encountering pharmaceutical research and development services offered under the mark PHYTOCHROME PHARMACEUTICALS, are likely to believe that these services emanate from or are sponsored by the same source as the goods. There is, further, the likelihood of reverse confusion: that consumers of applicant’s pharmaceutical research and development services rendered under the mark PHYTOCHROME PHARMACEUTICALS are likely to believe, upon encountering the registrant’s nutritional supplements sold under the mark PHYTOCHROME, that this product emanates from or is associated with the source of the services.
We would add that the fact that pharmaceutical research and development services are expensive, and that the purchasers of applicant’s services will be careful and discriminating, does not serve to obviate the likelihood of confusion. The only difference in the marks is the presence/absence of the word PHARMACEUTICALS, and as previously discussed, this term has no real source-identifying capacity, such that consumers, even careful consumers who note the presence/absence of this word in the mark, will not regard it as indicating a difference in source of the goods and services. See Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 1548,Page 11
14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (even sophisticated purchasers can be confused by very similar marks). Further, as applicant has pointed out, purchasers of the registrant’s goods “are making relatively inexpensive purchases” and “such a transaction is typically quick and requires minimal customer interaction to complete.” Reply brief, p. 4. This increases the likelihood of reverse confusion; a customer familiar with applicant’s PHYTOCHROME PHARMACEUTICALS mark used for its services and encountering PHYTOCHROME nutritional supplements may simply assume, without giving it a great deal of thought or deliberation, that these supplements emanate from the same source. As for applicant’s argument that “use of Applicant’s services is a transaction that spans months, often years,” reply brief, p. 4, to the extent that applicant is asserting that purchasers will, over the course of time, be aware that applicant is not connected with PHYTOCHROME nutritional supplements, this argument is not persuasive. The issue is whether a consumer is likely to be confused at the point that it is making the decision to obtain applicant’s services.
Thus, although we agree with applicant that its services will be sold in a different channel of trade from the registrant’s nutritional supplements, and that thePage 12
purchasers of applicant’s services will be sophisticated and discriminating, for the reasons discussed above, these factors do not avoid the likelihood of confusion and certainly do not outweigh the du Pont factors of the similarity of the marks and the goods and services which favor a finding of likelihood of confusion.
These are the only du Pont factors discussed by applicant and the examining attorney, and/or on which evidence has been submitted. To the extent that other du Pont
factors are applicable, we treat them as neutral.[fn6]
Finally, if there is any doubt on the issue of likelihood of confusion, it is well settled that such doubt must be resolved against the newcomer and in favor of the prior user or registrant. In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973). As the newcomer, applicant has the opportunity of avoiding confusion, and is charged with the obligation to do so. In re Shell Oil Co., 26 USPQ2d at 1691.
Decision: The refusal of registration is affirmed.
[fn2] Application Serial No. 77709896, filed April 8, 2009, based on Section 1(b) of the Trademark Act,15 U.S.C. ? 1051(b) (intent-to-use). [fn3] Registration No. 2349434, issued May 16, 2000; Section 8 and 15 affidavits accepted and acknowledged. [fn4] In her brief the examining attorney asserts that “pharmaceuticals” in applicant’s mark is generic and that “when viewed in the context of the recited services, the term pharmaceuticals’ merely conveys the general nature of the applicant’s business and does little to add any source identifying significance to the mark.” p. 7. It is not clear, in light of this explanatory language, whether the examining attorney is contending that “pharmaceuticals” is generic for applicant’s identified services, or whether she simply regards it as a generic term for “pharmaceuticals” per se. Applicant did not respond to this point in its reply brief, and we note that in the preceding Office actions, and even elsewhere in her brief, the examining attorney characterized the word PHARMACEUTICALS in applicant’s mark as “descriptive wording.” Therefore, we have treated PHARMACEUTICALS in applicant’s mark as a descriptive but not generic term for its services. [fn5] We take judicial notice of the dictionary definition of “phytochrome”: botany a blue-green pigment existing in two interchangeable forms, present in most plants, that mediates many light-dependent processes, including photoperiodism and the greening of leaves. The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). [fn6] In her Examiner’s Statement the examining attorney stated that the term “phytochrome” is suggestive; applicant did not discuss this in its reply brief in any way. The dictionary definition for this term, see footnote five, does not indicate that the registered mark is suggestive or is entitled to a limited scope of protection.