Gilead Sciences, Inc.v.Gilead Capital LP

Trademark Trial and Appeal Board

Apr 20, 2021

91233311 (T.T.A.B. Apr. 20, 2021)

Mailed: April 20, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Gilead Sciences, Inc.
v.

Gilead Capital LP
_____

Opposition No. 91233311
Opposition No. 91233327
_____

Lisa Greenwald-Swire and Michael A. Amon of Fish & Richardson P.C.
for Gilead Sciences, Inc.

Kanchana Wangkeo Leung for Gilead Capital LP.
_____

Before Zervas, Bergsman and English, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Gilead Capital LP (Applicant) filed applications to register the marks GILEAD
CAPITAL, in standard character form, and GILEAD CAPITAL LEADERSHIP
INVESTING and design, reproduced below, both for the services set forth below:
Hedge fund investment services; Investment advisory
services; Investment management; Financial services,
namely, operation and management of hedge funds,
commodity pools and other collective investment vehicles,
and trading for others of securities, options, futures,
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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derivatives, debt instruments and commodities, in
International Class 36.1

The description of the mark in the application reads as follows:
The mark consists of the words “Gilead Capital” in small
caps font in the color green located above a black horizontal
arrow and the words “Leadership Investing” in the color
black. The arrow starts on the left side of the page, slightly
before the beginning of the word “Gilead,” points to the
right and extends slightly beyond the end of the word
“Capital.” The words “Leadership Investing” appear below
the arrow, in italicized font, and in smaller font size than
the words “Gilead Capital.” The alignment of the phrase
“Leadership Investing” is right justified with the word
“Leadership” beginning below the letter “a” in “Gilead” and
the word “Investing” ending below the “l” in “Capital.”
The color(s) green, and black is/are claimed as a feature of
the mark.
Applicant disclaims the exclusive right to use the words “Capital” and “Investing.”
In the application for the mark GILEAD CAPITAL, Applicant disclaims the
exclusive right to use the word “Capital.”
The operative pleading in these proceedings is Opposer’s Second Amended and
Consolidated Notice of Opposition.2 As grounds for opposition, Opposer alleges

1 Applicant filed Serial No. 87048941 for the mark GILEAD CAPITAL LEADERSHIP
INVESTING and design (Opposition No. 91233311) and Serial No. 87048887 for the mark
GILEAD CAPITAL, in standard character form (Opposition No. 91233327) on May 24, 2016,
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming first use of its marks
anywhere and in commerce as of January 15, 2016.
2 28 TTABVUE. Unless otherwise noted, citations are to the record in Opposition No.
91233311.
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likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1051(d),
and that Applicant’s marks GILEAD CAPITAL and GILEAD CAPITAL
LEADERSHIP INVESTING and design falsely suggest a connection with Opposer
under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).
With respect to the likelihood of confusion claim, Opposer claims ownership of the
four registrations listed below:3
● Registration No. 3604505 for the mark GILEAD, in standard character form, for
“financial sponsorship of sports, educational and entertainment programs and
events,” in International Class 36;4
● Registration No. 3665182 for the mark GILEAD, in standard character form, for
“health insurance consultation to patients,” in International Class 36, and “providing
health and medical information about medical disorders; counseling and charitable

3 Opposer attached to its Second Amended and Consolidated Notice of Opposition copies of
the registrations printed from the USPTO Trademark Status and Document Retrieval
system (TSDR) showing the current status and title to the registrations. 28 TTABVUE 24-
41. Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R.§ 2.122(d)(1), we receive Opposer’s
registrations in evidence and make them part of the record.
Opposer’s allegation that it “has developed a variety of registered and unregistered GILEAD
marks (collectively, the ‘GILEAD Marks’), including but not limited to” the four registrations
specifically identified in Opposer’s Second Amended and Consolidated Notice of Opposition
does not put Applicant on notice that Opposer is relying on any registrations in addition to
those specifically identified in Opposer’s pleading. Opposer’s Second Amended and
Consolidated Notice of Opposition ¶4 (28 TTABVUE 14). Opposer also alleged that it “owns
at least 186 other registrations for the mark GILEAD worldwide.” Opposer’s Second
Amended and Consolidated Notice of Opposition ¶5 (28 TTABVUE 15). It is incumbent upon
Opposer to put Applicant on notice as to which of those 186 registrations form the basis of
Opposer’s likelihood of confusion claim. A plaintiff may not use an unpleaded registration as
the basis for an opposition. See FUJIFILM SonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d
1234, 1235 (TTAB 2014).
4 Registered April 7, 2009; renewed.
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services for patients, namely, providing information and assistance with respect to
obtaining prescription medications,” in International Class 44;5
● Registration No. 4279898 for the mark GILEAD, in standard character form, for
“pharmaceutical preparations, namely, pharmaceuticals for the treatment of viral
infections; pharmaceuticals for the treatment of cardiovascular disorders and
conditions; pharmaceuticals for the treatment of respiratory disorders and
conditions; pharmaceuticals for the treatment of fungal diseases and disorders;
pharmaceuticals for the treatment of liver disease; pharmaceuticals for the treatment
of HIV/AIDS and hepatitis,” in International Class 5;6 and
● Registration No. 3251595 for the mark GILEAD, in standard character form, for
“pharmaceutical preparations, namely, antivirals, antifungals and preparations for
the treatment of infectious conditions,” in International Class 5.7
Applicant, in its Answer, denies the salient allegations in Opposer’s Second
Amended and Consolidated Notice of Opposition.
The Board consolidated proceedings in its May 10, 2017 order.8

5 Registered August 4, 2009; renewed.
6 Registered January 22, 2013; Sections 8 and 15 declarations accepted and acknowledged.
7 Registered June 12, 2007; renewed.
8 6 TTABVUE.
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I. Preliminary Issues
A. Numerous objections.
Both parties filed numerous objections to the other’s evidence.9 Because an
opposition proceeding is akin to a bench trial, the Board is capable of assessing the
proper evidentiary weight to be accorded the testimony and evidence, taking into
account the imperfections surrounding the admissibility of such testimony and
evidence. As necessary and appropriate, we will point out any limitations in the
evidence or otherwise note that we cannot rely on the evidence in the manner sought.
We have considered all of the testimony and evidence introduced into the record. In
doing so, we have kept in mind the various objections the parties have raised and we
have accorded whatever probative value the subject testimony and evidence merit.
See Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479
(TTAB 1017), appeal dismissed per stipulation, No. 17-00345 (E.D. Va. August 24,
2017); U.S. Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1540 (TTAB 2006).
See also Poly-America, L.P. v. Ill. Tool Works Inc., 124 USPQ2d 1508, 1510 (TTAB
2017) (where the objections refer to probative value rather than admissibility and the
evidence that is subject to the objections is not outcome determinative, “we choose
not to make specific rulings on each and every objection”).

9 Opposer’s Objections to Applicant’s first and second notices of reliance (85 TTABVUE 58-
59); “Applicant’s Objections to Opposer’s Purported Evidentiary Record” in Applicant’s Brief,
p.13 (86 TTABVUE 22).
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B. Whether the parties tried Opposer’s use of GILEAD as a trade
name or trademark for financial or investment related services
by express or implied consent.
In its August 7, 2019 order, the Board noted, “Opposer has not set forth a sufficient
claim of likelihood of confusion based on rights accrued at common law in the mark
GILEAD.”10
Nevertheless, in its brief, Opposer argues that it renders financial and business
advisory services that are substantially similar to Applicant’s services even though
those services were not included in the descriptions of goods and services in Opposer’s
pleaded registrations.
[Opposer] is well-known in the investment communities for
its active investing in start-up companies and funding of
medical research institutions. In 2018, [Opposer] invested
directly in over 24 different companies.11
___
[Opposer] invests in innovative technologies, provides
capital to other companies, and enters into strategic
financially-backed business collaborations with third
parties in the healthcare space. [Opposer] structures and
finances investments in a range of companies, including
with co-investors. [Opposer] also provides funding to
universities and research institutions, and awards grants
to support scientific research. Through its active and wide-
ranging investments, [Opposer] has become known to
investors and the investment community for identifying,
financing and investing in emerging companies and
technologies related to new and innovative therapeutics.12

10 41 TTABVUE 10. Because Opposer made its pleaded registrations of record and Applicant
admitted Opposer’s priority, the Board denied Opposer’s motion to compel Applicant to
provide information regarding Applicant’s first use of its mark.
11 Opposer’s Brief, p. 4 (85 TTABVUE 6).
12 Id. at p. 9 (85 TTABVUE 11).
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___
[Opposer] owns longstanding common law trademark
rights in GILEAD for a wide array of goods and services as
a result of its broad commercial use of GILEAD.
[Opposer’s] common law trademark rights extend to [inter
alia]:
● Capital and equity investment and financing services;
● Venture capital financing services;
● Business advisory and consulting services, including
working with management teams to improve strategy and
execution; [and]
● Acquisition consultation services.13
___
[Opposer] and [Applicant] render overlapping and closely
related investment financing and business advisory
services in that they both provide, inter alia, investment
capital, investment management and advisory services,
and related strategic advice to third parties.14
___
While this combination of providing investment capital and
business advisory services is referred to by [Applicant] as
“leadership investing,” it is no different than [Opposer’s]
“active investing” services, rendered long prior to
[Applicant], by which [Opposer] couples its financial
support with business advice and strategic guidance to
companies to spur their success. [Opposer’s] Chief
Financial Officer testified that [Opposer’s] equity
investments are the same as those made by any other
equity investor or investment management firm and that
they provide an immediate and direct benefit for the
companies in which [Opposer] invests by providing them

13 Id. at p. 10 (85 TTABVUE 12). See also id. at pp. 21-24 (85 TTABVUE 23-26).
14 Id. at p. 43 (85 TTABVUE 45). See also id. at pp. 4-5 (85 TTABVUE 6-7) (Applicant also
invests in healthcare-related companies and Applicant’s “investment activities are covered
by the same media outlets that cover [Opposer’s] investment activities.”).
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with critical capital for management, operations, and
product development.15
___
And while it is true that [Opposer’s] mission is to bring
forward medicines for life-threatening diseases, it is
equally true that [Opposer] also renders financial and
business advisory services.16
In opposition, Applicant contends that because Opposer bases its likelihood of
confusion claim on Opposer’s ownership of the four pleaded registrations discussed
above,17 the issue before us is whether Applicant’s marks for investment management
services are likely to cause confusion with Opposer’s registrations for the mark
GILEAD covering pharmaceutical products, health insurance consultation, and event
sponsorship.18 Thus, Applicant objects to part of Andrew Dickinson’s testimony
declaration regarding Opposer’s purported investment services, in part, on the
ground that Opposer “has not set forth a sufficient claim based on common law
rights”19 and, therefore, the testimony is “not germane to the case and not
admissible.”20
Fed.R.Civ.P. 15(b) provides, in pertinent part, that when the parties try by express
or implied consent issues not raised by the pleadings, we shall treat those issues in
all respects as if the parties raised them in the pleadings. It is clear from Applicant’s

15 Id. at p. 44 (85 TTABVUE 46).
16 Id. at p. 45 (85 TTABVUE 47).
17 Applicant’s Brief, p. 10 (86 TTABVUE 19).
18 Id. at p. 12 (86 TTABVUE 21).
19 Id. at p. 23 (86 TTABVUE 32). Andrew Dickinson is Opposer’s Chief Financial Officer.
20 Id. at p. 23-24 (86 TTABVUE 32-33).
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description of the likelihood of confusion issue and objection to Andrew Dickinson’s
testimony that Applicant did not expressly consent to Opposer’s assertion of common
law rights.
As for whether there was implied consent, implied consent to the trial of an
unpleaded issue can be found only where the nonffering party (1) raised no objection
to the introduction of evidence on the issue, and (2) was fairly apprised that the
evidence was being offered in support of the issue. TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (TBMP) § 507.03(b) (2020). “Fairness dictates whether
an issue has been tried by consent – there must be an absence of doubt that the
nonmoving party is aware that the issue is being tried.” Id. See also Morgan Creek
Prods. Inc. v. Foria Int’l Inc., 91 USPQ2d 1134, 1139 (TTAB 2009).
To analyze the basis of Opposer’s likelihood of confusion claim, we reproduce below
the relevant allegations in Opposer’s Second Amended and Consolidated Notice of
Opposition:21
3. For over 30 years, [Opposer] has prominently used the
term GILEAD as a trademark and trade name to identify
itself and its products.
4. In that time, [Opposer] has developed a variety of
registered and unregistered GILEAD marks (collectively,
the “GILEAD Marks”), including but not limited to
[Opposer’s four pleaded registrations].
___
23. As described above, Opposer is the owner of the
registered and incontestable GILEAD Mark[s].

21 28 TTABVUE 13-19.
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___
28. Within the biotech and pharmaceutical industries, it is
common for companies like [Opposer] to invest
substantially and regularly in innovative companies and
technologies in the healthcare industry. In fact, many
pharmaceutical and biotech companies have investment
arms of their businesses, including Novartis Venture Fund,
Roche Venture Fund, Amgen Business Development, and
Merck Research Ventures Fund. See Exhibit 6 (an article
from the Gen publication on Genetic Engineering and
Biotechnology News, which lists 20 different corporate
venture funds in the biotech and pharmaceutical space).
29. [Opposer] makes regular investments in smaller
companies in the biotech, pharmaceutical, and healthcare
services space.
30. As a result, it is likely that investment professionals
and others are likely to encounter both parties’ marks in
circumstances likely to give rise to confusion or mistake.
As the Board noted above, Opposer did not plead common law use of the trade
name or trademark GILEAD in connection with financial investment services as a
basis for its likelihood of confusion claim. However, Opposer alleges that
pharmaceutical companies invest “in innovative companies and technologies in the
healthcare industry” and relevant consumers perceive that such investments by
companies known for manufacturing and selling pharmaceuticals and Applicant’s
hedge funds services, investment advisory services, and investment management
emanate from the same source.
Based on the following facts we find that the parties did not try Opposer’s
likelihood of confusion claim based on Opposer’s purported trade name or common
law trademark used in connection with financial or investment-related services by
implied consent:
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(i) Opposer did not plead common law rights in the trade name or
trademark GILEAD in connection with financial or investment-related
services;
(ii) the Board noted Opposer had not set forth a sufficient claim of likelihood
of confusion based on rights accrued at common law in a pretrial order;
(iii) Applicant, in its brief, identified the basis of Opposer’s likelihood of
confusion claim as whether Applicant’s GILEAD marks for investment
management services are likely to cause confusion with Opposer’s
registrations for the mark GILEAD covering pharmaceutical products,
health insurance consultation, and event sponsorship; and
(iv) Applicant objected to part of Andrew Dickinson’s testimony declaration
on the ground that Opposer “has not set forth a sufficient claim based
on common law rights” and, therefore, the testimony is “not germane to
the case and not admissible.”
Opposer argues that Board proceedings are not limited to the goods or services in
Opposer’s pleaded registrations and that Opposer has rights beyond its
registrations.22 Specifically, Opposer argues that it “may rely on rights arising from
‘prior trademark or service mark use, prior use as a trade name, prior use analogous
to trademark or service mark use, or any other use sufficient to establish proprietary
rights,’” citing Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1378 (Fed. Cir. 2002). While Opposer may rely on prior trademark or service

22 Opposer’s Reply Brief, p. 4 (87 TTABVUE 6).
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mark use, prior use as a trade name, prior use analogous to trademark or service
mark use, or any other use sufficient to establish proprietary rights, it must give
Applicant notice on what it is relying to prove its proprietary rights. The purpose of
notice pleading is to remove the requirement to use “magic words,” not to remove the
requirement of notice. See Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536,
1538 (TTAB 2007). Opposer must give Applicant fair notice of its claim and the basis
on which it rests and, in this case, Opposer failed to give Applicant such notice.
Opposer contends that its trade name and common law rights have always been
at issue in this proceeding.23 We disagree. There is nothing in Opposer’s Second
Amended and Consolidated Notice of Opposition summarized above putting
Applicant on notice of Opposer’s trade name and common law rights. As noted above,
the Board specifically noted in a pretrial order, “Opposer has not set forth a sufficient
claim of likelihood of confusion based on rights accrued at common law in the mark
GILEAD.”24 Thus, the Board put Opposer on notice that it must amend its pleading
to assert any common law rights it may have.
While we hold that the parties did not try by express or implied consent Opposer’s
likelihood of confusion claim based on Opposer’s purported trade name or trademark
use in connection with financial or investment-related services, Opposer is entitled
to prove that relevant consumers perceive the manufacture and sale of
pharmaceuticals as including Opposer’s financial or investment-related activities.

23 Id. at p. 10 (87 TTABVUE 12).
24 41 TTABVUE 10.
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This is the import of paragraph Nos. 28-30 in Opposer’s Second Amended and
Consolidated Notice of Opposition discussed above.25
II. The Record.
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s application.
A. Opposer’s Testimony and Evidence.
1. Testimony declaration of Andrew Dickinson, Opposer’s Chief
Financial Officer;26

2. Testimony declaration of Amy Flood, Opposer’s Senior Vice
President of Public Affairs;27

3. Testimony declaration of Melissa A. Pittaoulis, Ph.D., Associate
Director at NERA Economic Consulting, Opposer’s consumer survey
expert;28

4. Bruce E. Stangle, Ph.D., co-founder of Analysis Group, Inc., an
economics consulting firm specializing in providing economic and
financial advice;29

5. Notice of reliance on Opposer’s four pleaded registrations, and four
other registrations owned by Opposer printed from the USPTO
TSDR database showing the current status of and title to the
registrations;30

25 28 TTABVUE 19. These allegations are silent as to what trademarks the providers of such
services use for such services and when any such use may have commenced.
26 60-61 TTABVUE.
27 63-64 TTABVUE. The Board posted the portions of the Amy Flood declaration Opposer
designated confidential at 65 TTABVUE.
28 66 TTABVUE.
29 67 TTABVUE. The Board posted the portions of the Dr. Stangle declaration Opposer
designated confidential at 68 TTABVUE.
30 69 TTABVUE.
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6. Notice of reliance on copies of third-party registrations purportedly
owned by pharmaceutical companies;31

7. Notice of reliance on unsolicited media articles referring to Opposer
and Internet materials purportedly showing a mistaken association
between Opposer and Applicant;32

8. Notice of reliance on copies of administrative panel decisions of the
World Intellectual Property Organization ordering the transfer of
ownership of various GILEAD-formative domain names to
Opposer;33

9. Notice of reliance on excerpts from the discovery deposition of Jeffrey
A. Strong, Applicant’s Managing Partner;34

10. Rebuttal testimony declaration of Melissa A. Pittaoulis;35

11. Rebuttal notice of reliance on Applicant’s response to Opposer’s
interrogatory No. 17;36 and

12. Rebuttal notice of reliance on an Internet document from the U.S.
Census Bureau in the U.S. Department of Commerce entitled
“Dynamics of Economic Well-Being: Fluctuations in the U.S. Income
Distribution: 2009-2012.”37

C. Applicant’s Testimony and Evidence.
1. Testimony declaration of Jeffrey A. Strong, Applicant’s Managing
Partner;38

31 70 TTABVUE.
32 71 TTABVUE.
33 72 TTABVUE.
34 73 TTABVUE. The Board posted the portions of the Jeffery Strong deposition Opposer
designated confidential at 74 TTABVUE.
35 80 TTABVUE.
36 81 TTABVUE.
37 82 TTABVUE.
38 76 TTABVUE.
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2. Notice of reliance on copies of official records (land records) referring
to land in Gilead, Nebraska;39

3. Notice of reliance on a request for the Board to take judicial notice of
the existence and location of the village of Gilead in Thayer County,
Nebraska;40

4. Notice of reliance on Opposer’s responses to Applicant’s interrogatory
Nos. 10, 12, 23, 30, 33 and 34;41 and

5. Notice of reliance on Opposer’s admissions to Applicant’s first set of
requests for admission.42

III. Entitlement to a Statutory Cause of Action.
Even though Applicant does not contest it, Opposer’s entitlement to a statutory
cause of action, formerly referred to as “standing” by the Federal Circuit and the
Board,43 is a threshold issue in every inter partes case. See Corcamore, LLC v. SFM,
LLC, 978 F.3d 1298, 2020 USPQ2d 11277 (Fed. Cir. 2020); Australian Therapeutic
Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 (Fed. Cir.
2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d

39 77 TTABVUE.
40 78 TTABVUE.
41 79 TTABVUE 5-17.
42 79 TTABVUE 19-60. A party may introduce only an admission to a request for admission
through a notice of reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). A denial
or statement that the responding party cannot respond to the request does not establish the
truth or falsity of the assertion, but rather leaves the matter for proof at trial. Life Zone Inc.
v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials to requests for
admission inadmissible because “unlike an admission (or a failure to respond which
constitutes an admission), the denial of a request for admission establishes neither the truth
nor the falsity of the assertion, but rather leaves the matter for proof at trial.”). As such, we
have considered only the admissions to the requests for admission.
43 Our decisions have previously analyzed the requirements of Sections 1063 and 1064 under
the rubric of “standing.” We now refer to this inquiry as entitlement to a statutory cause of
action. Despite the change in nomenclature, our prior decisions and those of the Federal
Circuit interpreting “standing” under §§ 1063 and 1064 remain applicable.
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1058, 1062 (Fed. Cir. 2014). To establish entitlement to a statutory cause of action, a
plaintiff must demonstrate: (i) an interest falling within the zone of interests
protected by the statute and (ii) proximate causation. Corcamore, 2020 USPQ2d
11277 at *4. See also Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Because Opposer has properly introduced into evidence copies of its pleaded
registrations showing the current status of and title to the registrations, Opposer has
established its entitlement to a statutory cause of action. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016)
(standing established based on pleaded registration made of record).
IV. Priority
Because Opposer has properly made of record its pleaded registrations, priority is
not an issue as to the mark and goods and services covered by the registrations. See
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016)
(citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400, 182 USPQ 108,
110 (CCPA 1974)).
V. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
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(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont,
177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight
afforded to each factor depends on the circumstances. Any single factor may control
a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d
994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1406-
07).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
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similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l,
64 USPQ2d at 1380)).
A. The strength of Opposer’s GILEAD mark.
Opposer contends that its GILEAD mark is famous.
GILEAD is a famous trademark, given that it has been
used for over 30 years as the house mark for a global
pharmaceutical company with over 10,000 employees,
average annual revenues for the past eight years of over
$22 billion, and an average annual advertising spend
for the past eight years of $500 million.44
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys,
Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Under the fifth factor, likelihood of confusion fame is not “an all-or-nothing
measure.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed. Cir. 2017). It “varies along a spectrum from very strong
to very weak.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (quoting In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)).

44 Opposer’s Brief, p. 38 (85 TTABVUE 40).
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To determine a mark’s place on that spectrum, we consider its inherent strength,
based on the nature of the mark itself, and its commercial strength, based on its
marketplace recognition. See In re Chippendales USA, Inc., 622 F.3d 1346,
96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength.”); Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017); Top Tobacco, L.P.
v. North Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the
strength of a mark is determined by assessing its inherent strength and its
commercial strength); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881,
1899 (TTAB 2006) (market strength is the extent to which the relevant public
recognizes a mark as denoting a single source); 2 J. Thomas McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 11:80 (5th ed. March 2021 update) (“The
first enquiry is for conceptual strength and focuses on the inherent potential of the
term at the time of its first use. The second evaluates the actual customer recognition
value of the mark at the time registration is sought or at the time the mark is asserted
in litigation to prevent another’s use.”).
We turn first to the inherent or conceptual strength of GILEAD when used in
connection with pharmaceutical products. “Gilead” is a mountain in northwest
Jordan or a district in ancient Palestine, east of the Jordan River in present North
Jordan.45

45 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (2021) (accessed
April 1, 2021). See also MERRIAM-WEBSTER DICTIONARY (merrriam-webster.com) (accessed
April 1, 2021); Gilead, ENCYCLOPAEDIA BRITANNICA (britannica.com) (accessed April 2, 2021)
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Gilead (ji−LEED), fertile, mountainous region, NW
Jordan, bordering on Syria in the N and on Israel and the
West Bank in the W. The most developed and inhabited
part of Jordan, consisting of the Balqa and Irbid districts.
It was one of the most fertile regions of biblical Canaan and
was much fought over.46
Gilead is also a village in Thayer county Nebraska.47
Opposer uses and registered a shield and leaf logo it refers to as the “Balm of
Gilead.”48
The leaf symbolizes the Balm of Gilead, a medicinal
treatment that was mentioned in the Bible’s Old
Testament and named for the region of Gilead, where the
tree with leaves producing this balm was said to grow. The
Balm of Gilead signifies a universal cure and is often
accompanied by the image of a tree, shrub, or leaf.49
The commercial impression engendered by the mark GILEAD in connection with
pharmaceuticals is a reference to the biblical medicinal treatment inasmuch as there
is no testimony or evidence that Gilead has any geographical significance for

(“Gilead, area of ancient Palestine east of the Jordan River, corresponding to modern
northwestern Jordan.”).
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format, as well as encyclopedias. In re Cordua Rests. LP, 110 USPQ2d
1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); B.V.D.
Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir.
1988) (“dictionaries and encyclopedias may be consulted”); In re Red Bull GmbH, 78 USPQ2d
1375, 1378 (TTAB 2006).
46 “Gilead,” COLUMBIA GAZETTEER OF THE WORLD ONLINE (2021) (accessed April 14, 2021).
The Board may take judicial notice of information in a gazetteer which is a standard reference
work. See In re Spirits of New Merced LLC, 85 USPQ2d 1614, 1617 n. 3 (TTAB 2007); In re
Consolidated Specialty Rests., Inc., 71 USPQ2d 1921, 1927 (TTAB 2004).
47 “Gilead,” COLUMBIA GAZETTEER OF THE WORLD ONLINE (accessed April 14, 2021).
48 Registration No. 2661262 registered December 17, 2002; renewed. (69 TTABVUE 11);
Flood Testimony Decl. ¶15 (63 TTABVUE 7);
49 Flood Testimony Decl. ¶¶15-16 (63 TTABVUE 7).
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pharmaceutical products. We find GILEAD is an arbitrary, or at worst suggestive,
mark and inherently distinctive and, thus, presumed to designate origin. See
Chippendales, 96 USPQ2d at 1685 (“[I]f the mark is inherently distinctive, it is
presumed that consumers will view it as a source identifier.”); Cicena Ltd. v.
Columbia Tele. Grp., 900 F.2d 1546, 14 USPQ2d 1401, 1405 n.5 (Fed. Cir. 1990). See
also Maytag Co. v. Luskin’s, Inc. , 228 USPQ 747, 750 (TTAB 1986) (“there is nothing
in our trademark law which prescribes any different protection for suggestive,
nondescriptive marks than that which is accorded arbitrary and fanciful marks”); In
re Great Lakes Canning, Inc. , 227 USPQ 483, 485 (TTAB 1985) (“the fact that a mark
may be somewhat suggestive does not mean that it is a ‘weak’ mark entitled to a
limited scope of protection”).
We find that Opposer’s GILEAD mark is an inherently strong mark.50
We turn now to the commercial strength or fame of Opposer’s GILEAD mark. We
may measure the commercial strength or fame of Opposer’s GILEAD mark indirectly
by the volume of sales of and advertising expenditures for the goods and services

50 Applicant, in its brief, referred to four third-party registrations incorporating the name
“Gilead” contending they are admissible as “a matter of public record.” Applicant’s Brief, p.
38 (86 TTABVUE 47). However, the Board does not take judicial notice of third-party
registrations. Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1110 (TTAB 2007); In re
Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998). Even if we considered the third-
party registrations, they would not have any probative value because the description of goods
and services in the third-party registrations are far removed from the goods and services at
issue. See Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315,
128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (error to rely on third-party evidence of similar
marks for dissimilar goods, as Board must focus “on goods shown to be similar”); TAO
Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (third party
registrations in unrelated fields “have no bearing on the strength of the term in the context
relevant to this case.”).
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identified by the mark at issue, “the length of time those indicia of commercial
awareness have been evident,” widespread critical assessments and through notice
by independent sources of the products and services identified by the marks, as well
as the general reputation of the products and services. Bose Corp. v. QSC Audio
Prods. Inc., 63 USPQ2d at 1305-06 and 1309. Raw numbers alone may be misleading,
however. Thus, some context in which to place raw statistics may be necessary, for
example, market share or sales, or advertising figures for comparable types of goods
or services. Id. at 1309.
Other contextual evidence probative of the renown of a mark may include:
● extent of catalog and direct mail advertising, email blasts, customer calls,
and use of social media platforms, such as Twitter, Instagram, Pinterest, and
Facebook, identifying the number of followers;
● the number of consumers that Opposer solicits through its advertising
throughout the year;
● local, regional, and national radio and television advertising campaigns, free-
standing print campaigns, and mentions in national publications;
● unsolicited media attention; and
● product placement in television and in movies.
Omaha Steaks, 128 USPQ2d at 1694.
Finally, because of the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, Opposer has the duty to prove the fame of its
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mark clearly. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Opposer introduced the evidence listed below to prove that its GILEAD mark is
famous:
● “Gilead is and has been a leader in the development of medicines for the
treatment and prevention of HIV-1 infection, beginning with the 2001 United States
Food and Drug Administration approval of Viread® (tenofovir disoproxil fumarate)
for the treatment of HIV-1 infection in connection with other antiretroviral agents,
followed by the 2006 approval of Atripla® (efavirenz/emtricitabine/tenofovir
disoproxil fumarate), the first single-tablet regimen treatment for HIV-1 infection,
and the 2012 approval of Truvada® (emtricitabine/tenofovir disoproxil fumarate) for
the prevention of HIV-1 infection.”51
● In 2014, Opposer “released Harvoni® (ledipasvir/sofosbuvir), a single-tablet
regimen that cures certain genotypes of Hepatitis C.”52
● Currently, Opposer “is … in the spotlight for its research and testing of its
investigational compound remdesivir as a potential treatment for COVID-19.”53

51 Dickinson Decl. ¶17 (60 TTABVUE 8). See also Flood Decl. ¶22 (63 TTABVUE 8).
52 Dickinson Decl. ¶17 (60 TTABVUE 8). See also Flood Decl. ¶25 (63 TTABVUE 8).
53 Dickinson Decl. ¶17 (60 TTABVUE 8). See also Flood Decl. ¶30 (63 TTABVUE 11).
“Due to the coronavirus pandemic and [Opposer’s] investigational drug remdesivir to treat
Covid-19, visits to [Opposer’s] website at skyrocketed to over 4 million visits
between March 1, 2020 and May 31, 2020.” Flood Decl. ¶9 (63 TTABVUE 4).
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● Opposer’s Truvada® and Descovy® both for PrEP “are currently the only
products approved by the FDA for the prevention of HIV infection.54
● “The U.S. market for HIV treatment has been consolidating around [Opposer’s]
Biktarvy®, which has been and is the number one prescribed HIV regimen in the
U.S.”55
● “[Opposer’s] share of the HIV treatment market in the U.S. has been
approximately at 80% over the last three years [2017-2019].”56
● Due to the success of the above-noted drugs, Opposer’s revenues have grown
from 2012 through 2019 as reflected in the table below:57

● “When [Opposer’s] medications are dispensed, they come in a bottle or carton
that prominently display[s] the GILEAD trademark, and in some cases, the GILEAD
trademark also appears on the pills themselves.”58

54 Dickinson Decl. ¶19 (60 TTABVUE 9).
55 Id.
56 Id.
57 Id. at ¶18 (60 TTABVUE 9).
58 Flood Decl. ¶27 (63 TTABVUE 9).
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● “[Opposer’s] medical breakthroughs are also covered by the media.”59
● “[Opposer] owns corporate social media accounts on LinkedIn, Twitter, and
Facebook under the GILEAD name, among others. [Opposer’s] LinkedIn page has
over 310,000 followers and its Twitter newsfeed has over 60,000 followers.”60
● Opposer’s social media accounts, press releases, corporate advertising, corporate
reports and annual reports “have reached hundreds of millions of people.”61
● “In 2015, [Opposer] received a Scrip Award for ‘Pharmaceutical Company of the
Year.’ The company was also recognized as one of the most innovative companies by
Fast Company and as one of the smartest companies by MIT Technology Review in
2015.”62
● “In 2016, Business Insider named [Opposer] as one of the best companies to work
for to have an impact on the world, and Fortune magazine listed [Opposer] as one of
the world’s most admired companies. That same year, [Opposer’s] scientists also won
the Lasker-DeBakey Clinical Medical Research Award for their transformative
research for hepatitis C treatment. The Lasker Award is one of the highest honors
awarded for medical research. And Barron’s, which offers financial and investment
news, ranked Gilead as #2 out of the 500 largest public companies. Also in 2016,
[Opposer] received the Scrip Award for the ‘Licensing Deal of the Year’ for its

59 Flood Decl. ¶29 and Exhibit 26 (63 TTABVUE 10 and 186-196). See also Opposer’s notice
of reliance on unsolicited media articles referring to Opposer (71 TTABVUE 7-251).
60 Flood Decl. ¶10 (63 TTABVUE 4).
61 Id. at ¶11 (63 TTABVUE 4-5).
62 Id. at ¶33 (63 TTABVUE 13).
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collaboration with Galapagos. [Opposer] was ranked as #17 of Fortune’s Fastest-
Growing Companies, #2 in Pharmaceutical Executive’s Annual Industry Audit, and
#3 among global large-cap companies in The Boston Consulting Group’s ‘The World’s
Top Value Creators.’”63
● “In 2018, [Opposer] and its subsidiary Kite Pharma, Inc. were awarded the Prix
Galien Award for ‘Best Biotechnology Product’ by The Galien Foundation for
Yescarta, a cell therapy treatment in which T-cells are removed from a patient with
lymphoma and genetically engineered to produce a specific T-cell receptor.”64
● In 2020, “[Opposer] received the inaugural ‘Emerging Collaborator Award’ from
the Crohn’s & Colitis Foundation for its work in partnership with the inflammatory
bowel disease community.”65
● “In 2015 and 2016, [Opposer] was recognized as the top corporate funder by the
‘Funders Concerned About AIDS’ organization and was named #1 for charitable
giving and #2 in total giving by The Chronicle of Philanthropy.”66
● “In 2013, the USPTO awarded Gilead its inaugural ‘Patents for Humanity’
award for the medical category. The USPTO’s Patents for Humanity program
recognizes patent owners and licensees who address global challenges in health and
standards of living. [Opposer] was awarded this honor for making its HIV drugs
available to the world’s poor by utilizing a network of generic pharmaceutical

63 Id. at ¶34 (63 TTABVUE 13-14).
64 Id. at ¶35 (63 TTABVUE 14).
65 Id. at ¶36 (63 TTABVUE 14).
66 Id. at ¶42 (63 TTABVUE 16).
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manufacturers in Asia and Africa. In 2016, Fortune magazine identified [Opposer] on
its ‘Change the World’ list, which names companies with a positive social impact.”67
● “[Opposer] advertises in a variety of ways including by disseminating
educational ‘disease state’ social media ads that receive millions of impressions
(views) and through national advertising campaigns for its branded medicines. All
advertising content displays the GILEAD trademark.”68
● Opposer spent nearly $3.2 billion on promotion and advertising in the United
States from 2012 through 2019.69
Opposer’s testimony and evidence regarding its substantial revenue, extensive
advertising and promotional activities, philanthropy, innovative research and
development, and media attention prove that GILEAD is a commercially strong mark
or famous mark when used in connection with pharmaceutical products.
Applicant, in its brief, does not contest that GILEAD is a commercially strong or
famous mark when used in connection with the goods and services identified in
Opposer’s pleaded registrations; rather Applicant contends Opposer has not proven
that GILEAD is a commercially strong or famous mark when used in connection with
investment and financially related services.
Although Opposer has submitted testimony and exhibits
regarding its sales and marketing expenditures, it has
failed to support its position that its reputation, if any, for
pharmaceutical products and health consultation services
would have reach beyond its registered goods and services.

67 Id. at ¶53 (63 TTABVUE 19).
68 Id. at ¶58 (63 TTABVUE 21).
69 Id. at ¶64 (63 TTABVUE 23-24).
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Consequently, Opposer’s evidence falls short of
establishing the fame of its mark. Furthermore, while
Opposer may have been the subject of articles and received
some awards, Opposer has not presented any direct
evidence (e.g., customer testimony) of fame or brand
recognition of its GILEAD Mark in the markets relevant to
this analysis.70
Applicant’s argument misses the point of why Opposer is trying to prove that its
mark is commercially strong or famous. A plaintiff introduces evidence to show that
its mark is commercially strong to establish the extent of its trademark rights. The
stronger the mark, the more extensive the trademark rights. As noted above, we
accord a commercially strong mark a commensurately broad scope of protection or
exclusivity of use. A famous mark has extensive public recognition and renown. See
Bose Corp., 63 USPQ2d at 1305; Recot, 54 USPQ2d at 1897; Kenner Parker Toys,
22 USPQ2d at 1456.
As noted above, we found that Opposer’s GILEAD mark is a commercially strong
or famous mark when used in connection with pharmaceutical products. “As a mark’s
fame increases, the [Trademark] Act’s tolerance for similarities in competing marks
falls.” Kenner Parker Toys, 22 USPQ2d at 1456. Nevertheless, the commercial
strength or fame of a mark is not an automatic entitlement to appropriate a mark for
all products and services. See Recot, 54 USPQ2d at 1894 (“[F]ame alone cannot
overwhelm the other DuPont factors as a matter of law.”); Burns Philp Food Inc. v.
Modern Prods Inc., 24 USPQ2d 1157, 1160 (TTAB 1992), aff’d, 28 USPQ2d 1687 (Fed.
Cir. 1993) (while the fame of a mark is entitled to substantial weight in the likelihood

70 Applicant’s Brief, p. 37 (86 TTABVUE 46).
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of confusion analysis, there may be countervailing factors). Thus, we must keep in
mind the commercial strength or fame of Opposer’s GILEAD mark when we analyze
the other DuPont likelihood of confusion factors.
Because Opposer’s GILEAD mark when used in connection with pharmaceuticals
is an inherently and commercially strong or famous mark, we find that is a very
strong mark on the spectrum from very strong to very weak and famous, and,
therefore, it is entitled to a broad scope of protection.
B. The similarity or dissimilarity of the marks.
We now turn to the DuPont factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may
be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019); accord Krim-Ko Corp. v.
Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is
sufficient if the similarity in either form, spelling or sound alone is likely to cause
confusion.”) (citation omitted).
In comparing the marks, we are mindful that “[t]he proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently similar
in terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Cai v. Diamond Hong,
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Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs.,
101 USPQ2d at 1721.
Applicant is seeking to register the marks GILEAD CAPITAL, in standard
character form, and GILEAD CAPITAL LEADERSHIP INVESTING and design,
reproduced below:

The mark in Opposer’s pleaded registrations is GILEAD, in standard character form.
The marks are similar because they share the name “Gilead.” As discussed in the
previous section of this decision, “Gilead” is arbitrary term, or at worst suggestive,
when used in connection with pharmaceuticals and it is commercially very strong and
famous.
The term “Gilead” is the dominant element of Applicant’s marks. There is nothing
improper in stating that, for rational reasons, we have given more or less weight to a
particular feature of a mark, such as a common dominant element, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
With respect to Applicant’s mark GILEAD CAPITAL, in standard character form,
the term “Gilead” is the dominant element of the mark because the word “Capital” is
descriptive when used in connection with Applicant’s investment and financial
services and Applicant has disclaimed the exclusive right to use it. Disclaimed,
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descriptive matter may have less significance in likelihood of confusion
determinations. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050
(Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 41 USPQ2d at 1533-34); Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion.’”)
(quoting Nat’l Data Corp., 224 USPQ at 752); In re Code Consultants, Inc.,
60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
Further reinforcing the significance of the name “Gilead” in Applicant’s mark is
its position as the first word in the mark. The lead word in a mark generally has a
position of prominence because it is likely that consumers will notice and remember
it to play a dominant role in the mark. See Detroit Ath. Co., 128 USPQ2d at 1049
(finding “the identity of the marks’ two initial words is particularly significant
because consumers typically notice those words first”); Palm Bay Imps., 73 USPQ2d
at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the
identical lead word).
With respect to Applicant’s mark GILEAD CAPITAL LEADERSHIP INVESTING
and design, GILEAD is also the dominant feature of Applicant’s mark. First,
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Applicant displays the term GILEAD CAPITAL as the largest and most prominent
part of the mark.
Second, in the case of marks consisting of words and a design, we normally accord
words greater weight because the words are likely to make an impression upon
purchasers, and consumers will remember the words and use the words to request
the services. See Viterra, 101 USPQ2d at 1908 and 1911 (citing CBS Inc. v. Morrow,
708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)); Herbko Int’l, 64 USPQ2d at 1380
(“Because the impact of the design in the overall commercial impression is minor
when compared with the words, a consumer viewing Herbko’s mark would attach
greater significance to the words CROSSWORD COMPANION than to the crossword
puzzle design.”).
Third, the reasons that the name “Gilead” is the dominant part of Applicant’s
mark GILEAD CAPITAL also explain why the name “Gilead” is the dominant part of
Applicant’s mark GILEAD CAPITAL LEADERSHIP INVESTING and design.
Another reason supporting the similarity of the marks is that Applicant’s marks
incorporate Opposer’s entire mark. While there is no express rule that we must find
marks similar where Applicant’s marks incorporate the entirety of Opposer’s mark,
the fact that Applicant’s marks subsume Opposer’s mark increases the similarity
between them. See, e.g., China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d
1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar
to opposer’s mark CHI both for electric massagers); Coca-Cola Bottling Co. of
Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556,
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188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda,
quinine water and ginger ale is likely to cause confusion with BENGAL for gin);
Broadcasting Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007)
(respondent’s mark ABS-CBN is similar to petitioner’s mark CBN both for television
broadcasting services).
Finally, Applicant sometimes refers to GILEAD CAPITAL as GILEAD.71
Q. And you have referred to your company as Gilead in
your annual letter to your partners, correct?
___
A. In shorthand after making it … clear that it’s Gilead
Capital.
Q. Exactly. In shorthand, you refer to your company as
Gilead in those three documents [pitch deck, annual
letter, and when talking to a potential investor],
right?
___
A. Correct.72
Inasmuch as Applicant refers to itself as GILEAD, the relevant public may also
refer to GILEAD CAPITAL and GILEAD CAPITAL LEADERSHIP INVESTING and
design as “Gilead.”
[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to Sears
alone), Ward’s for Montgomery Ward’s, and Bloomies for
Bloomingdales.

71 Strong Discovery Dep., pp. 126-27 and 252 (73 TTABVUE 99-100 and 187).
72 Id. at p. 252 (73 TTABVUE 187).
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Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant’s business
is commonly referred to as ‘Giant’, it does indicate that people have called it by that
name, omitting the word ’Hamburgers’. Thus, in a conversation between two
consumers in opposer’s area about a place of business called ‘Giant’, there likely
would be confusion about which ‘Giant’ they were talking about.”); Anheuser-Busch,
LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1819 (TTAB 2015) (“While
Opposer’s beer was originally sold under the BUDWEISER brand, customers soon
began to abbreviate the mark, calling for BUDWEISER beer just by the name
‘BUD.’”); Big M Inc. v. U.S. Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“[W]e cannot
ignore the propensity of consumers to often shorten trademarks and, in the present
case, this would be accomplished by dropping the ‘T.H.’ in referring to registrant’s
stores [T.H. MANDY].”.
Applicant contends that the addition of the word “Capital” to its marks creates a
distinct commercial impression from Opposer’s mark.73
Here, Applicant’s Marks consist of the term GILEAD
combined with the additional terms CAPITAL and
INVESTING, which are typically used in connection with
investment management services, as well as
LEADERSHIP INVESTING, which is Applicant’s
registered mark for certain investment management and
hedge fund services. These additional terms distinguish
Applicant’s Marks from Opposer’s Mark[] in appearance
and sound, and clearly connote and reinforce the
commercial impression that Gilead Capital is engaged in

73 Applicant’s Brief, pp. 16-17 (86 TTABVUE 25-26).
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hedge fund services. That these additional terms are
legally disclaimed does not negate their consideration as
part of such marks.74
Applicant’s contention does not persuade us that GILEAD CAPITAL and GILEAD
CAPITAL LEADERSHIP INVESTING and design have a different meaning and
engender a different commercial impression than Opposer’s GILEAD mark.
Applicant does not take into account the inherent and commercial strength of
Opposer’s mark, nor does it take into account the prominence the name “Gilead” plays
in the marks, including the fact that Applicant and its clients sometimes refer to
GILEAD CAPITAL as “Gilead.”
We find that Applicant’s marks GILEAD CAPITAL, in standard character form,
and GILEAD CAPITAL LEADERSHIP INVESTING and design, are similar in their
entireties to Opposer’s mark GILEAD. This finding of fact is supported by our
analysis of the purported instances of confusion discussed below.
C. The similarity or dissimilarity and nature of the goods and
services.
Applicant seeks to register its marks for the services set forth below:
Hedge fund investment services; Investment advisory
services; Investment management; Financial services,
namely, operation and management of hedge funds,
commodity pools and other collective investment vehicles,
and trading for others of securities, options, futures,
derivatives, debt instruments and commodities.
Although Opposer’s registrations include services in International Classes 36 and
44, we focus our analysis on Opposer’s pharmaceutical products because it is

74 Id.
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Opposer’s core business, the basis of Opposer’s argument that the goods and services
are related, and the goods for which Opposer’s GILEAD mark is famous or
commercially strong. Thus, Opposer’s description of goods at issue are set forth below:
● “pharmaceutical preparations, namely, pharmaceuticals for the treatment of
viral infections; pharmaceuticals for the treatment of cardiovascular disorders and
conditions; pharmaceuticals for the treatment of respiratory disorders and
conditions; pharmaceuticals for the treatment of fungal diseases and disorders;
pharmaceuticals for the treatment of liver disease; pharmaceuticals for the treatment
of HIV/AIDS and hepatitis”; and
● “pharmaceutical preparations, namely, antivirals, antifungals and preparations
for the treatment of infectious conditions.”
Applicant argues that there is no likelihood of confusion because (i) Applicant’s
services are different from Opposer’s goods and, therefore, not related, (ii) the parties
offer their goods and services in different channels of trade to different classes of
consumers, and (iii) Applicant’s consumers exercise a high degree of consumer care.
For example,
● Opposer’s “[p]harmaceutcal preparations, event and program sponsorship, and
health insurance consultation are each dissimilar to investment management and
hedge fund services.”;75
● “[Applicant] provides hedge fund investment services, investment management,
and securities trading services in the shares of publicly-traded companies in North

75 Applicant’s Brief, p. 19 (86 TTABVUE 28).
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America, Europe, and Australia. Applicant’s Services do not include investing in
privately-held companies or providing venture or seed capital to start-up
businesses.”;76
● Applicant requires institutions to maintain a minimum account of $500,000 and
individuals to maintain an account of $250,000;77
● “Applicant’s consumers are ‘accredited investors,’ ‘qualified clients,’ and
‘qualified purchasers.’ These types of potential investors include institutional
investors, such as foundations, endowments, charitable organizations, pension and
employee benefit plans, insurance companies, sovereign wealth funds, funds of funds,
and family offices, as well as certain high net-worth individuals.”;78 and
● Applicant’s clients and prospective clients “are highly-sophisticated and conduct
extensive diligence before hiring a manager to invest millions of dollars on their
behalf” and, therefore, “exercise care in the selection of their asset managers,”
including whether Applicant’s investment management strategy “aligns with the
clients’ objectives.”79
Applicant’s arguments ignore the breadth of Applicant’s “investment advisory
services” and “investment management” services. Applicant has identified
“investment advisory services” and “investment management” as separate activities
in Applicant’s description of services having separated them from the other listed

76 Id. at p. 21 (86 TTABVUE 30).
77 Id. at p. 35 (86 TTABVUE 44).
78 Id. at p. 29 (86 TTABVUE 38).
79 Id. at pp. 34-35
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activities with semicolons. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d
1163, 1166 (TTAB 2013) (finding that, because a semicolon separated the two
relevant clauses in registrant’s identification, its “restaurant and bar services” is a
discrete category of services that stands alone and independently as a basis for
likelihood-of-confusion analysis, and is not connected to nor dependent on the services
set out on the other side of the semicolon). See also TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 1402.01(a) (2018) (“Semicolons should generally be
used to separate distinct categories of goods or services within a single class.”).
For example, “cleaners, namely, glass cleaners, oven
cleaners, and carpet cleaners; deodorants for pets” is an
acceptable identification in Class 3. In this example, the
word “cleaners” names the category covering “glass
cleaners, oven cleaners, and carpet cleaners.” The
semicolon prior to “deodorants for pets” indicates that the
deodorants are a separate category of goods from the
cleaners.
Id.
Because Applicant’s “investment advisory services” and “investment
management” are unrestricted and include no limitations, we presume that
Applicant’s “investment advisory services” and “investment management,”
encompass all activities included in the identified services. See, e.g., Levi Strauss &
Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed.
Cir. 2013); In re FCA US LLC, 126 USPQ2d 1214, 1217 (TTAB 2018) (where a
description of goods includes no restrictions or limitations, the Board must read the
application to cover all goods of the type identified); Sw. Mgmt., Inc. v. Ocinomled,
Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the services in an application or
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registration are broadly described, they are deemed to encompass all the activities of
the nature and type described therein), quoted in In re Country Oven, Inc.,
2019 USPQ2d 443903, * 4 (TTAB 2019) and cited in In re AC Webconnecting Holding
B.V., 2020 USPQ2d 11048, *11-12 (TTAB 2020).
We do not read limitations into the identification of services. i.am.symbolic,
123 USPQ2d at 1748; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent nature
of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read limitations into the
registration”); In re Thor Tech Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have
no authority to read any restrictions or limitations into the registrant’s description of
goods.”).
Additionally, we may not rely on extrinsic evidence beyond the description of goods
and services in Applicant’s applications and Opposer’s pleaded registrations to
distinguish Applicant’s services from Opposer’s goods and services, channels of trade
and classes of consumers. See e.g., In re Dixie Rests. Inc., 41 USPQ2d at 1534;
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987) (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983)); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986) (evidence that relevant goods are expensive wines sold to discriminating
purchasers must be disregarded given the absence of any such restrictions in the
application or registration). “The description of the goods in the application for
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registration is critical because any registration that issues will carry that
description.” CBS, 218 USPQ at 199.
We presume, therefore, that Applicant’s “investment advisory services” and
“investment management” include all types of investment advisory, management
services, and all types of investors regardless of their income, wealth, or
sophistication. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014) (recognizing Board precedent
requiring consideration of the “least sophisticated consumer in the class”).
Nevertheless, Applicant’s “investment advisory services” and “investment
management” services are specifically different from Opposer’s pharmaceuticals,
sponsorship services, health insurance consultation, providing health and medical
information about medical disorders, and providing information and assistance with
respect to obtaining prescription medications. However, “[i]n comparing the . . . goods
[and services], ‘[t]he issue to be determined . . . is not whether the goods [and
services]. . . are likely to be confused but rather whether there is a likelihood that
purchasers will be misled into the belief that they emanate from a common source.’”
Anheuser-Busch, 115 USPQ2d at 1825 (quoting Helene Curtis Indus. Inc. v. Suave
Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989)).
In determining whether the goods and service are related, it is not necessary that
the goods and services of the parties be similar or competitive in character to support
a holding of likelihood of confusion; it is sufficient for such purposes if Opposer
establishes that the goods and services are related in some manner or that conditions
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and activities surrounding marketing of the goods and services are such that they
would or could be encountered by same persons under circumstances that could,
because of similarities of marks used with them, give rise to the mistaken belief that
they originate from or are in some way associated with the same producer. Coach
Servs., 101 USPQ2d at 1722.
Where the marks are as similar as the marks before us, it is only necessary that
there be a viable relationship between the goods and services to support a finding of
likelihood of confusion. See i.am.symbolic, 116 USPQ2d at 1411; In re Opus One, Inc.,
60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp.,
222 USPQ 355, 356 (TTAB 1983).
In this regard, Opposer contends that its investment activities are a key aspect of
its pharmaceutical business and provides the viable relationship among the goods
and services at issue. See Opposer’s Second Amended and Consolidated Notice of
Opposition ¶¶28-30 (because it is common for pharmaceutical companies to invest in
innovative companies and technology in the healthcare industry, investment
professionals and others will encounter both parties’ marks in circumstances likely
to give rise to confusion or mistake).
To support these allegations, Andrew Dickinson, Opposer’s Chief Financial
Officer, testified that Opposer and other healthcare and pharmaceutical companies
“fund, invest in, advise, support, and partner and collaborate with other innovative
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companies, both public and private, as well as research and educational
institutions.”80
In 2018 alone, [Opposer] invested directly in over two
dozen companies, by partnerships, mergers, acquisitions,
venture capital financing, and other types of equity
investment transactions. [Opposer] has been actively
investing in companies for more than fifteen years.81
Opposer has been investing in other companies since 2004.82
Some pharmaceutical companies fund and invest in other companies by forming
a separate venture arm, subsidiary or affiliate company.
These arms, subsidiaries, and/or affiliates typically use the
trade name of their pharmaceutical parent. For example,
Amgen has its Amgen Ventures, Roche has its Roche

80 Dickinson Testimony Decl. ¶¶4-5 (60 TTABVUE 3).
Applicant objects to the Dickinson Testimony Declaration discussing “Opposer’s purported
‘Funding and Equity Investment Services’ and ‘Presence in the Investor Community.’”
Applicant’s Brief, p. 13 (86 TTABVUE 22). Applicant contends that Andrew Dickinson’s
testimony regarding the investment activities of third parties is hearsay and irrelevant.
Applicant’s Brief, pp. 19-20 and 23-27 (86 TTABVUE 28-29 and 32-36).
Mr. Dickinson’s testimony regarding general investment activities of pharmaceutical
companies is not hearsay because he bases his testimony on personal knowledge, experience
and observations. For example, Mr. Dickinson testified that in his over 20 years working for
pharmaceutical companies, “I know that most of our peer pharmaceutical companies are, and
have long been, offering these same type of services and they – and we – are rendering the
same services that any investment management firm and does provide,” and that “I also
know that many pharmaceutical companies fund and invest in other companies by forming
a separate venture arm, subsidiary or affiliate company that focuses only on investment
services.” Dickinson Testimony Decl. ¶¶5-6 (60 TTABVUE 3).
His testimony on the subject is relevant because it relates directly to whether the relevant
public perceives a relationship between pharmaceutical companies and their investment
arms and investment firms in general and specifically to Opposer’s investment activities as
part of its pharmaceutical manufacturing and sales and Applicant’s hedge fund services,
investment advisory services, and investment management.
Applicant’s objections to Andrew Dickinson’s testimony are overruled.
81 Id. at ¶4 (60 TTABVUE 3).
82 Id. at ¶20 (60 TTABVUE 10).
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Venture Fund, Novartis has its Novartis Venture Fund,
and Pfizer has Pfizer Ventures.83
Opposer’s investment activities include the following:
1. Direct equity investments in public and private companies;84
2. Investing in independent companies with which Opposer also collaborates
by providing strategic guidance such as,
a. providing them with resources to operate, research, develop, and
conduct clinical trials for investigational medicines and treatments;
b. advising and training their employees on research and development,
clinical trials, regulatory approval, and positioning products in
markets;
c. helping them acquire or research new technologies;
d. working with their management teams to improve strategy and
execution;
e. handling their operations such as order fulfillment, manufacturing,
distribution, inventory management, warehousing, and sales, all of
which are highly regulated services that may be difficult for a small
company to handle efficiently and be compliant with applicable
regulations; and
f. handling marketing and other promotional support services.85

83 Id. at ¶6 (60 TTABVUE 3).
84 Id. at ¶¶21-22 (60 TTABVUE 10).
85 Id. at ¶23 (60 TTABVUE 10-11).
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3. Providing capital financing to support research, development, operations,
and management of universities and research institutions.86
By virtue of its status as a major pharmaceutical company and its investment
activities, Opposer “regularly meets with other investors, including large
institutional investors such as retirement funds, mutual funds, and hedge funds, as
well as with companies in which [Opposer is] considering investing.”87 For example,
Opposer regularly attends and presents at financial conferences related to healthcare
companies, including the annual JP Morgan Chase Healthcare Conference. The JP
Morgan Chase Healthcare Conference is a large investment symposium attended by
emerging companies, technology developers, industry leaders in healthcare, and
members of the investment community (e.g., investors, analysts, and media).88
Opposer also attends and presents at the Jefferies Healthcare Conferences sponsored
by the Jefferies Financial Group, as well as conferences sponsored by Piper Jaffray,
Goldman Sachs, Bank of America Merrill Lynch, Barclays, Morgan Stanley, Wells
Fargo and Citi.89 At these conferences, Opposer meets with representatives from
potential investment targets and investing partners.90
The testimony of Bruce E. Stangle, Ph.D., co-founder of Analysis Group, Inc., an
international economic consulting firm, corroborates Andrew Dickinson’s testimony

86 Id. at ¶26 (60 TTABVUE 12).
87 Id. at ¶31 (60 TTABVUE 14).
88 Id. at ¶¶33-34 and 38-39 (60 TTABVUE 14-15 and 18).
89 Id. at ¶38 (60 TTABVUE 18).
90 Id. at ¶37 (60 TTABVUE 17-18).
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regarding the investment activities of third-party pharmaceutical companies.91 Dr.
Stangle provides the following testimony:
● Large healthcare-related companies, like Merck, Novartis, Johnson & Johnson
(“J&J”), and Opposer are active investors. These companies invest in start-ups and
emerging healthcare-related companies that show promising research and
development results, or that own innovative technology. Typical investments include

91 Stangle Testimony Decl. (67 TTABVUE). Dr. Stangle has been a practicing economist for
over 40 years specializing in economic and financial advice. He advises companies in the
healthcare, medical device, biotech and pharmaceutical industries on a variety of economic
and financial issues, including equity investments and acquisitions. Stangle Testimony Decl.
¶¶ 2-4 (67 TTABVUE 3-4). In addition, Dr. Stangle is an active “angel investor” in more than
50 companies providing seed money for start-ups and emerging companies, including
companies in the healthcare, medical device, biotech and pharmaceutical industries. Id. at
¶¶5-7 (67 TTABVUE 4-5).
Applicant objects to the testimony of Dr. Stangle in its entirety. Applicant’s Brief, p. 13
(86 TTABVUE 22). According to Applicant, Dr. Stangle’s opinions are inadmissible under
Fed. R. Evid. 401, 402 and 702 because (i) they are irrelevant, (ii) Dr. Stangle does not apply
recognized methodology or principles for showing likelihood of confusion or a false association
of a connection, (iii) they are hearsay, and (iii) Dr. Stangle is not qualified to testify as an
expert in a trademark case. We rely on Dr. Stangle’s testimony to the limited extent he refers
to the investment activities of third-party pharmaceutical companies. We do not consider his
opinion as to whether the goods and services are related or whether there is a likelihood of
confusion. The Board is responsible for making those determinations and we will not
substitute the opinion of a witness even that of an expert witness for our own evaluation of
the facts. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010).
Dr. Stangle’s testimony is relevant because it relates directly to whether the relevant public
perceives a relationship between Opposer’s investment activities as part of its
pharmaceutical manufacturing and sales and Applicant’s hedge fund services, investment
advisory services, and investment management.
Dr. Stangle’s testimony is not hearsay because he bases his testimony on personal knowledge,
experience and observations.
Dr. Stangle is qualified to testify regarding the investment practices of companies in the
healthcare-related industry including how large-cap companies in this industry set up
financial investment arms that use the unique part of the parent’s name. Thus, Dr. Stangle
qualifies as an expert in the investment practices of companies in the healthcare related
industries.
Applicant’s objections to Dr. Stangle’s testimony in its entirety is overruled.
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taking an equity stake in the smaller company and an active role to support and
benefit that company by, for example, providing resources to support the research
and development activities of the smaller company and assisting with clinical trials
or regulatory affairs;92
● Many of the above-noted pharmaceutical firms have investment divisions
“whose primary objective is to invest in healthcare-related companies and ventures.”
Many of these divisions bear the name of their parent (e.g., Novartis invests through
Novartis Venture Fund and J&J invests through Johnson & Johnson Innovations);93
● The table reproduced below “shows the top 20 pharmaceutical and biotechnology
firms by market capitalization” and their investment divisions. “A dash in the
‘Investment Arm’ column indicates only that the company does not have an
investment arm organized formally as a separate entity.”94

92 Stangle Testimony Decl. ¶10 (67 TTABVUE 6).
93 Id. at ¶12 (67 TTABVUE 6-7).
94 Id. at ¶11 (67 TTABVUE 6).
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● Opposer ‘is well known among investors and others in the investment
community for making investments.”95
Finally, Opposer introduced copies of use-based, third-party registrations covering
the goods and services in Applicant’s description of services and Opposer’s description
of goods and services. Third-party registrations based on use in commerce that
individually cover a number of different goods and services may have probative value
to the extent that they serve to suggest that the listed goods and services are of a type

95 Id. at ¶22 (67 TTABVUE 10).
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that may emanate from the same source. Country Oven, 2019 USPQ2d 443903, *8; In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d
149 (Fed. Cir. 1988). We list below the relevant registrations, with relevant portions
of the identifications of goods and services.96
Mark Reg. No. Goods and Services
AMGEN
(owned by Amgen Inc.)
3226919 A full line of pharmaceuticals
AMGEN VEMTURES
(owned by Amgen Inc.)
3942123 Venture capital services, namely, providing financing
to start-up companies; venture capital advisory
services
JOHNSON & JOHNSON
(owned by Johnson &
Johnson)
1477368 Sports adhesive tape and blister dressings
JOHNSON & JOHNSON
INNOVATION
(owned by Johnson &
Johnson)
5617947 Providing financing to entrepreneurs, start-ups and
existing businesses
LILLY
(owned by Eli Lilly and
Company)
1318867 A full line of pharmaceuticals
LILLY VENTURES
(owned by Eli Lilly and
Company)
5826948 Venture capital financing; venture capital services,
namely, providing financing to seed and early stage
companies; venture capital advisory, financing,
funding and fund management services

Opposer has established a tenuous nexus between manufacturing and selling
pharmaceuticals and investment advisory services and investment management by
showing that it is common for large pharmaceutical companies to invest in innovative

96 70 TTABVUE. We did not include the registrations owned by Merck Sharp & Dohme
(Registration No. 2169031 for the mark MERCK and Registration No. 5499038 for the mark
MRL VENTURES FUND) and Novartis AG (Registration No. 4986124 for the mark
NOVARTIS and Registration No. 4857256 for the mark NVF) because they are for different
marks.
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companies and technologies in the healthcare industry if for no other reason to
expand their own research and development capabilities for pharmaceuticals.
As noted above, Opposer is an active participant in the investment advisory and
investment management fields, as are other pharmaceutical companies, by attending
and presenting at numerous healthcare investment conferences attended by
representatives of emerging companies, technology developers, healthcare leaders,
and members of the investment community.
Thus, even if the goods in question are different from, and
thus not related to, one another in kind, the same goods
can be related in the mind of the consuming public as to
the origin of the goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.
Recot, 54 USPQ2d at 1898 (finding the Board erred when it refused to consider the
lay evidence that several large companies produce and sell both pet and human food
in deciding whether a consumer would reasonably believe that FIDO LAY dog treats
originated from the same source as FRITO-LAY human snacks). See also In re
Malletier, 777 Fed. Appx. 984, 2019 USPQ2d 249385, *4 (Fed. Cir. 2019) (“Goods need
not be identical or similar in kind to be related. Instead, what matters is whether ‘the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that [the goods] emanate from the same source.’”) (quoting Coach
Servs., 101 USPQ2d at 1722). Likewise, in the cases before us, the evidence shows
that several large companies manufacture and sell pharmaceuticals as well as invest
in start-up and emerging healthcare companies. See Faberge, Inc. v. Haw Par Bros.,
Int’l Ltd., 216 USPQ 861, 863 (TTAB 1983) (finding that specifically different goods
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are commercially related based on testimony that companies manufacture and sell
drugs, as well as products in the cosmetic, toiletry and fragrance field).
We find that Applicant’s “investment advisory services” and “investment
management” and Opposer’s pharmaceuticals are related.
D. Established, likely-to-continue channels of trade and classes of
consumers.

We turn now to the channels of trade and classes of consumers.97 Opposer
describes its channels of trade for its pharmaceuticals as follows:
Most of [Opposer’s] pharmaceutical products are
distributed in the United States exclusively through
wholesale channels.98 A few products [e.g., Letairis®
(ambrisentan) and Cayston® (aztreonam for inhalation
solution)] are distributed exclusively by specialty
pharmacies that dispense medications for complex or
chronic conditions that require significant patient
education.
[Opposer’s] investigational new pharmaceuticals are
distributed to patients in the United States who have
enrolled in Gilead-sponsored clinical trials.
[Opposer’s] cell therapy treatment services are distributed
through treatment centers that collect a patient’s T-cells,
which are sent to a manufacturing center in El Segundo,
California before being sent back to the treatment center
for use with the patient.

97 Because Opposer did not plead its claim of likelihood of confusion based on its use of
GILEAD as a trade name or trademark in connection with financial or investment-related
services and because the parties did not try that claim by express or implied consent, we do
not consider the channels of trade or classes of consumers to whom Opposer markets those
activities.
98 See also Opposer’s response to Applicant’s request for admission No. 27 (79 TTABVUE 34)
(Opposer sells and distributes most of its products in the U.S. exclusively through the
wholesale channel) and No. 28 (79 TTABVUE 34-35) (Opposer’s product sales to wholesalers
McKesson Corporation, AmerisourceBergen Corporation, and Cardinal Health, Inc.
combined form approximately 89% of Opposer’s product sales in the U.S.).
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___
[Opposer’s] informational, awareness, grant-related,
sponsorship and other services are provided online and in
person.
[Opposer’s] investment-related services are provided on an
opportunity-by-opportunity basis.99
Opposer advertises its mark as follows:
[Opposer] advertises in print media, including as
newspapers and magazines of general circulation (such as
People magazine) and print media focused on health care
issues or directed toward health care professionals, on
television, and on the internet. In addition, [Opposer] has
sponsored numerous events and activities and hosted
booths at events and activities, including events of general
interest and events more particularly directed to health
care professionals and people interested in therapeutic
areas where [Opposer] has developed or is researching
treatments. Lastly, [Opposer] promotes its products
through direct field contact with physicians, hospitals,
clinics and other healthcare providers.100
Accordingly, Opposer’s pharmaceuticals are offered through wholesale channels,
specialty pharmacies, patients in clinical trials, and treatment centers specializing in
cell therapy. The classes of customers include physicians, hospitals, clinics and other
healthcare providers. Opposer’s advertising also reaches ordinary consumers
presumably so they can ask their doctor if a specific pharmaceutical treatment may
be appropriate for them.
As noted above, we presume that Applicant’s unrestricted “investment advisory
services” and “investment management” include all types of investment advisory,

99 Opposer’s response to Applicant’s interrogatory No. 12 (79 TTABUE 7-8).
100 Opposer’s response to Applicant’s interrogatory No. 10 (79 TTABUE 6-7).
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management services, and all types of investors regardless of their income, wealth,
or sophistication.
Opposer did not introduce any testimony or evidence showing a nexus or
connection between the parties’ channels of trade and classes of consumers such that
we might find that Opposer’s pharmaceuticals and Applicant’s “investment advisory
services” and “investment management” will be encountered by the same consumers
in the same marketing milieu. This absence of convergent marketing channels,
competition, and classes of consumers decreases the likelihood of confusion. Thus,
Opposer failed to meet its burden of proving that the parties market their goods and
services in the same channels of trade to the same classes of consumers.
E. Conditions under which the parties make sales.
We now turn to the conditions under which the parties make sales (i.e., the degree
of consumer purchasing care). While Applicant’s hedge fund clients may be
sophisticated consumers, there is no testimony or evidence regarding the purchasing
process and the degree of consumer purchasing care for Applicant’s unrestricted
“investment advisory services” or “investment management” which the description of
services dictates may be rendered to less affluent clients. See Stone Lion Capital
Partners, 110 USPQ2d at 1163-64 (recognizing Board precedent requiring
consideration of the “least sophisticated consumer in the class”). Neither is there any
testimony or evidence regarding the purchasing process and degree of consumer
purchasing care for Opposer’s pharmaceuticals.
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Nonetheless, we may assume that entities that purchase pharmaceuticals
exercise a high degree of purchasing care by virtue of the nature, complexity and
purpose of the pharmaceutical products. However, we do not know whether those
purchasers focus on Opposer’s product names (e.g., Viread®, Atripla®, Truvada®,
etc.) or Opposer’s GILEAD mark. For example, when Opposer’s advertising reaches
ordinary consumers presumably so they can ask their doctor if a specific
pharmaceutical treatment may be appropriate for them, there is no testimony or
evidence regarding whether the ordinary consumer inquires about a specific drug or
a specific drug manufactured by a specific company (e.g., Viread or Viread by Gilead).
Opposer failed to meet its burden of proving that the factor regarding the
conditions under which the parties make sales weighs in favor of finding a likelihood
of confusion and, thus, we find that this DuPont factor is neutral.
F. Instances of confusion.
1. Purported instances of confusion.
Opposer introduced testimony and evidence regarding four purported instances of
confusion:
● The CentralCharts website (centralcharts.com) entries for Opposer, Gilead
Sciences, reported that “Gilead Capital [Applicant] Expresses Grave Concerns with
Monotype Proxy Statement and Highlights Board’s Failure to Protect Shareholders’
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Interests” (August 28, 2019)101 and “Gilead Capital Sends Open Letter to Board of
Monotype Imaging Holdings Opposing Sale To HGGC.” (August 20, 2019).102
● The Reuters website
(global.factiva.com/hp/printsaves.aspx?pp=Pring&hc=Publication) corrected a
posting where it incorrectly “coded” Applicant for Opposer.
Dec 19 [2016] (Reuters) – Alerts on Landauer Inc.
commenting on Gilead Capital LP’s [Applicant] nomination
of directors was wrongly coded to Gilead Sciences Inc.
[Opposer], an unrelated company. For the correct alerts,
click.103
● In a March 14, 2017 email exchange between Applicant and Manako Ihaya, a
certified Japanese translator in Foothill Ranch, California, preparing for a telephone
conference, Ms. Ihaya wrote, “Just curious, I’ve worked with Gilead Sciences
[Opposer] before, so I had assumed that you were associated.”104
● A representative of an institutional investor approached Jeffrey Strong,
Applicant’s Managing Partner, at the Santangel’s Investment Conference and
inquired whether Applicant has any association with Opposer.105 The representative

101 71 TTABVUE 256. “CentralCharts is a social network and an information portal on the
financial markets for traders and investors.” 71 TTABVUE 264.
102 71 TTABVUE 257.
103 71 TTABVUE 265.
104 Strong Discovery Dep., pp. 143-144 (73 TTABVUE 110-111); Stangle Testimony Decl. ¶32
and Exhibit OTX67 (67 TTABVUE 14 and 68 TTABVUE 11). Opposer designated Exhibit
OTX 67 confidential.
105 Strong Discovery Dep., pp. 136-142 (73 TTABVUE 103-109).
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of the institutional investor did not explain why he thought there might be an
association.106
These purported instances of confusion are not particularly probative because
they are too lacking in detail to demonstrate actual confusion. See Georgia-Pacific
Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980) (“Actual
confusion is entitled to great weight but only if properly proven. … Such is not the
case here.”); Mini Melts, 118 USPQ at 1475 (“Without direct testimony from these
individuals, there is insufficient information to ascertain what they were thinking, or
what caused the purported confusion.”); Marshall Field & Co. v. Mrs. Fields Cookies,
25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries as to corporate affiliations is not
evidence of confusion because, without more, they “indicate that these persons were
aware that [the companies at issue] were two different entities”); Kraft, Inc. v. Balin,
209 USPQ 877, 882 (TTAB 1981) (it is necessary to fully probe the circumstances
surrounding a purported instance of confusion to learn whether it sheds any light on
what may normally be expected to occur in the marketplace). Compare Roto-Rooter
Corp. v. O’Neal, 513 F.2d 44, 186 USPQ 73, 74 (5th Cir. 1975) (actual confusion
evidenced by testimony of four individuals). In these cases, Opposer did not call any
of the individuals who were purportedly confused as witnesses to explain why they
thought Opposer and Applicant were associated. In addition, inquiries as to whether
Applicant and Opposer are associated do not necessarily prove that the inquirers
were confused. See Mini Melts, 118 USPQ at 1475.

106 Id. at p. 141 (73 TTABVUE 108).
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While the testimony and evidence falls short of proving actual confusion, it does
reinforce our finding that the marks are similar because the similarity of the marks
form the basis of the inquiries or errors.
2. Opposer’s confusion consumer survey.
Opposer introduced a likelihood of confusion survey to determine whether
relevant consumers who encounter the GILEAD CAPITAL marks are likely to believe
the marks identify Opposer or a company affiliated or otherwise connected to
Opposer.107 We may regard a properly conducted survey as evidence akin to actual
confusion. See Blue Cross and Blue Shield Ass’n v. Harvard Comty. Health Plan Inc.,
17 USPQ2d 1075, 1078 n.7 (TTAB 1990) (citing 2 J. McCarthy, TRADEMARKS AND
UNFAIR COMPETITION, Section 32:54 at page 783 (2d ed. 1984) (“Survey results are
generally classified as evidence of actual confusion ...”).
Professor McCarthy more recently opined that survey evidence is not direct
evidence of actual confusion but circumstantial evidence from which we may infer
likelihood of confusion.
As discussed previously, survey evidence is circumstantial,
not direct, evidence of the likelihood of confusion. Surveys
do not measure the degree of actual confusion by real
consumers making mistaken purchases. Rather, surveys
create an experimental environment from which we can get
useful data from which to make informed inferences about
the likelihood that actual confusion will take place. Direct
evidence of actual confusion can come only from such
sources as misdirected phone calls or letters or even from
that rarest of evidence, the testimony of someone willing to
testify that they were once a confused customer.

107 Pittaoulis Testimony Decl. ¶6 (66 TTABVUE 3).
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6 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 32:184 (5th ed. 2021). Thus, a properly conducted survey is circumstantial evidence
from which we may infer a likelihood of confusion. See ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1247 (TTAB 2015) (“Survey results may act as
circumstantial evidence of likelihood of confusion, if the survey is designed and
conducted using generally-accepted principles and methodology.”).
Opposer introduced testimony about and evidence of a survey conducted by NERA
Economic Consulting, under the direction of Dr. Pittaoulis.108 According to her
testimony, Dr. Pittaoulis oversaw an online survey “using a variant of the ‘Squirt’
methodology,”109 conducted “in accordance with accepted survey research principles
such as those listed in the Federal Judicial Center’s Manual for Complex Litigation
and described in the Reference Manual on Scientific Evidence,” “including practices
such as defining the relevant population, selecting a representative sample,
employing a control group, asking non-leading questions, and analyzing the data
properly.”110
Dr. Pittaoulis “conducted the survey using Dynata, a leading market research firm
that specializes in sampling and survey data collection.”111 She designed and
conducted a double-blind survey. The survey respondents did not know the purpose
of the survey, the context in which she would use the survey data, or the company

108 Pittaoulis Testimony Decl. (66 TTABVUE).
109 Squirtco v. Seven-Up Co., 628 F.2d 1086, 207 USPQ 897, 899 n.4 (8th Cir. 1980).
110 Pittaoulis Testimony Decl. ¶¶8 and 15 (66 TTABVUE 4 and 6-7).
111 Id. at ¶16 (66 TTABVUE 7).
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who had engaged NERA to collect the data. Although the project managers at Dynata
knew that she would use the survey data in a legal proceeding, they did not know the
issue in dispute or the parties involved.112
Applicant’s clients and prospective clients form the basis or the universe of survey
respondents, including potential customers for hedge fund services, investment
advisory services, investment management.113
To qualify for the survey, respondents had to indicate that in the last 12 months
or in the next 12 months they either engaged or intend to engage in investing in a
hedge fund, participating in a commodity pool, enter into a commodities or futures
contract, purchase or trade securities, such as stocks, bonds, or options, or use the
services of an investment management or investment advisory company. In addition,
respondents were required to have annual household incomes of at least $300,000.114
“A total of 627 respondents completed the survey.”115 Dynata randomly assigned
the respondents to a test group or one of two control groups.116 “Each of the three
groups had 209 respondents.”117 Dynata showed the test group the mark GILEAD
CAPITAL and the list of activities comprising Applicant’s description of services.118
Dynata then showed the test group respondents the names GILEAD SCIENCES,

112 Id. at ¶18 (66 TTABVUE 7).
113 Id. at ¶20 (66 TTABVUE 7-8).
114 Id. at ¶¶21-22 (66 TTABVUE 8).
115 Id. at ¶9 (66 TTABVUE 4). See also id. at ¶65 (66 TTABVUE 20).
116 Id. at ¶¶9 and 25 (66 TTABVUE 4 and 9).
117 Id. at ¶9 (66 TTABVUE 4). See also id. at ¶65 (66 TTABVUE 20).
118 Id. at ¶27 (66 TTABVUE 10).
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BOSTON SCIENTIFIC, GENESIS HEALTHCARE, and QUEST DIAGNOSTICS one
at a time in a randomized order with a description of services associated with each
name as shown below:119

119 Id. at ¶¶32-32 (66 TTABVUE 10-11).
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After the test group respondents viewed a name, Dynata asked each respondent
“Do you think this company is the same company or a different company than the one
whose name and description you were shown first, or do you not know?”120
For test group respondents who said the same company, Dynata asked them
“What makes you think that this company is the same company as the company
whose name and description you were first shown?”121
For test group respondents who said a different company or don’t know, Dynata
asked those respondents “Do you think this company is associated or connected with
the company whose name and description you saw first, or is not associated or
connected with the company whose name and description you were shown first, or do
you not know?”122
For those respondents who selected associated or connected, Dynata asked them
“What makes you think that this company is connected or affiliated with the company
whose name and description you saw first?”123
“Respondents completed this same series of questions for each of the four names
(i.e., GILEAD SCIENCES, BOSTON SCIENTIFIC, GENESIS HEALTHCARE, and
QUEST DIAGNOSTICS).”124

120 Id. at ¶34 (66 TTABVUE 11-12).
121 Id. at ¶37 (66 TTABVUE 13).
122 Id. at ¶39 (66 TTABVUE 13).
123 Id. at ¶41 (66 TTABVUE 14).
124 Id. at ¶42 (66 TTABVUE 14).
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Dynata asked the respondents in Control Group 1 and Control Group 2 the same
series of questions. However, instead of GILEAD CAPITAL, Dynata showed Control
Group 1 GILEAN CAPITAL and Control Group 2 BOSTON CAPITAL as the first
mark.125
According to the survey results as interpreted by Dr. Pittaoulis,
36.8% of the Test Group respondents believed that
GILEAD SCIENCES was either the same company or an
affiliate of GILEAD CAPITAL, while only 21.5% of Control
Group #1 respondents believed that GILEAD SCIENCES
was either the same company as or an affiliate of GILEAN
CAPITAL. This leaves a net confusion rate of 15.3
percent.126
As a point of reference, Dr. Pittaoulis found,
[T]he share of Control Group # 2 respondents who
experienced some form of either source confusion or

125 Id. at ¶¶44-57 (66 TTABVUE 14-18).
126 Id. at ¶86 (66 TTABVUE 30). See also id. at ¶66 (66 TTABVUE 20).
Dr. Pittauolis concluded 20.6% of the Test Group believed GILEAD CAPITAL was the same
company as GILEAD SCIENCES, 13.9% of Control Group 1 believed GILEAN CAPITAL was
the same company as GILEAD SCIENCES, yielding a net source confusion rate of 6.7%. Id.
at ¶¶10(a) and 68-69 (66 TTABVUE 4-5 and 21).
She concluded 32.5% of the Test Group believed GILEAD CAPITAL was associated or
connected to GILEAD SCIENCES, 17.7% of Control Group 1 believed GILEAN CAPITAL
was associated with or connected to GILEAD SCIENCES, yielding a net source confusion
rate of 14.8. Id. at ¶¶10(b) and 78-79 (66 TTABVUE 5 and 26-27).
Finally, she concluded 36.8% of the Test Group believed that GILEAD CAPITAL was either
the same company as or an affiliate of GILEAD SCIENCES, 21.5% of Control Group 1
believed that GILEAN CAPITAL was either the same company as or an affiliate of GILEAD
SCIENCES, yielding a net overall confusion rate of 15.3%. Id. at ¶¶10(c) and 85-86
(66 TTABVUE 5 and 29-30).
Presumably, the 36.8% of the Test Group who believed GILEAD CAPITAL was either the
same company as or an affiliate of GILEAD SCIENCES is a combination of the 20.6% of the
Test Group who believed GILEAD CAPITAL was the same company as GILEAD SCIENCES
and the 32.5% of the Test Group who thought GILEAD CAPITAL was an affiliate of or
connected to GILEAD SCIENCES.
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affiliate confusion between BOSTON SCIENTIFIC and
BOSTON CAPITAL was 10.5 percent.127
The 15.5% confusion rate is within the range of percentages the Board and courts
have found probative. See Miles Labs., Inc. v. Naturally Vitamin Supplements,
1 USPQ2d 1445, 1462 (TTAB 1986) (18% corroborates finding of likely confusion)
(citing James Burrough, Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 192 USPQ
555, 565 (7th Cir. 1976) (15%); Lon Tai Shing Co. v. Kock + Lowy, 19 USPQ2d 1081,
1097 (S.D.N.Y. 1991) (survey result of 18% confusion is ”within the range of
cognizable confusion recognized in this Circuit”); Jockey Int’l, Inc. v. Burkard,
185 USPQ 201 (S.D. Cal. 1975) (11.4%); McDonough Power Equip., Inc. v. Weed Eater,
Inc., 208 USPQ 676, 683 (TTAB 1981) (11%)).
Nevertheless, we must consider the survey results in light of an evaluation of the
survey, including the fact that the stimulus cards lack marketplace reality. Miles
Labs., 1 USPQ2d at 1457 and 1462.128 For example, when Dynata showed the survey
respondents a stimulus care with the name “Gilead Capital” and list of services and
“Gilead Sciences” with a list of products and services rather than how they might
appear in actual use (e.g., on pharmaceutical bottle or a prospectus for an
investment).

127 Id. at ¶88 (66 TTABVUE 31).
128 Professor McCarthy notes “survey numbers that go below 20% need to be carefully viewed
against the background of other evidence weighing for and against a conclusion of likely
confusion.” 6 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 32:188
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In addition, Dr. Pittaoulis did not testify about the sampling error derived from a
sample size of 209. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1831 n.23 (TTAB 2015) (“[A] confidence interval may be useful in considering
survey results (at least when a random sample is chosen), particularly when the
sample size is somewhat small.”) (citing Daubert v. Merrill Dow Pharm., Inc.,
509 U.S. 579, 594 (1993) (“[I]n the case of a particular scientific technique, the court
should ordinarily consider the known or potential rate of error.”) and Avon Prods.,
Inc. v. S.C. Johnson & Son, Inc., 32 USPQ2d 1001, 1006 (S.D.N.Y. 1994) (not reported
in F. Supp.) (“[O]ne must employ statistical confidence tests when making a claim
regarding the projectability of a sample or survey result in order to infuse that result
with any meaning.”)). For example, if the sampling error derived from a sample size
of 209 is over 5% then as much as 20.5% of the population may be confused or as little
as 10.5% of the population may be confused.
Applicant objects to the testimony of Dr. Pittaoulis and the likelihood of confusion
consumer survey she introduced.
Dr. Pittaoulis’ opinions are inadmissible under Federal
Rules of Evidence 401, 403, and 702 because (i) her
opinions do not address the legal issues in the case; (ii) are
not the product of reliable principles and methods because
she used the wrong survey design; and (iii) are based on
insufficient facts or data because she failed to survey the
relevant population.129
First, Applicant contends that Dr. Pittaoulis did not test the marks at issue in
these proceedings because she used GILEAD SCIENCES instead of GILEAD, the

129 Applicant’s Brief, p. 40 (86 TTABVUE 49).
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mark in Opposer’s pleaded registrations, and she did not include Applicant’s mark
GILEAD CAPITAL LEADERSHIP IN INVESTING and design. Opposer’s use of
GILEAD SCIENCES rather than GILEAD is a harmless error. Opposer’s GILEAD
mark is closer to Applicant’s GILEAD CAPITAL mark than GILEAD SCIENCES
because the word “Sciences” is an additional difference in the marks. The survey
respondents are more likely to distinguish GILEAD SCIENCES from GILEAD
CAPITAL than distinguish GILEAD from GILEAD CAPITAL. Thus, the use of
GILEAD SCIENCES in lieu of GILEAD benefits Applicant.
As noted above, we found GILEAD and GILEAD CAPITAL to be the dominant
parts of Applicant’s mark GILEAD CAPITAL LEADERSHIP INVESTING and
design. Nevertheless, GILEAD CAPITAL LEADERSHIP INVESTING and design is
different from GILEAD CAPITAL. There are more points of difference between
GILEAD CAPITAL LEADERSHIP INVESTING and design and GILEAD
SCIENCES than between GILEAD CAPITAL and GILEAD SCIENCES. We would
be speculating if we drew any inferences from the survey results using GILEAD
CAPITAL instead of GILEAD CAPITAL LEADERSHIP INVESTING and design.
Accordingly, we will not further consider the survey in our likelihood of confusion
analysis in connection with the GILEAD CAPITAL LEADERSHIP INVESTING and
design mark.
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Second, Applicant contends that Opposer should have used the Eveready
methodology130 instead of the Squirt survey design.131 The Eveready methodology
“more accurately approximates market conditions by ensuring that respondents are
not made artificially aware of the other party’s trademark.”132 The Squirt survey
design is appropriate in the following circumstances:
(i) accessibility of the senior mark in memory is low to non-
existent; and (ii) the brands exist together in the market or
one mark is typically encountered soon after the other.
“The second criterion is necessary because, if the products
are not competing or complementary goods/services with
identical or substantially overlapping consumers, then
respondents who report a ‘connection’ due to the ‘similarity
of names’ are ‘demonstrating merely that they had read the
names . . . in artificially close proximity.’” Hypnotic Hats,
Ltd. v. Wintermantel Enters., LLC, 335 F. Supp. 3d 566,
596-97 (S.D.N.Y.).133
According to Applicant, because Opposer claims its GILEAD mark is famous and
because there is no evidence that the parties offer their goods and services in the
same channels of trade to the same classes of consumers, the Board should reject
Opposer’s use of the Squirt survey format.134

130 Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 188 USPQ 623, 640-41 (7th Cir.
1976) (unaided survey questions where survey respondents were shown accused mark and
were asked who made the product and what other products that company put out, all without
showing or asking consumers about plaintiff’s mark).
131 Squirtco v. Seven-Up Co., 207 USPQ at 899 n.4 (aided survey questions where survey
respondents were shown the parties’ marks together and asked whether they thought the
two products were put out by the same companies or different companies and what made the
respondents think that the products were put out by the same or different companies).
132 Applicant’s Brief, p. 42 (86 TTABVUE 51) (citing Kargo Global, Inc. v. Advance Magazine
Publishers, Inc., No. 06 CIV 550 JFK, 2007 WL 2258688, at *8 (S.D.N.Y. Aug. 6, 2007)).
133 Applicant’s Brief, p. 42 (86 TTABVUE 51).
134 Applicant’s Brief, p. 42 (86 TTABVUE 51).
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Applicant’s objection goes to the probative value we should give Opposer’s survey
rather than to admissibility. As we noted above, we evaluate the survey methodology
and its results, including the fact that the stimulus cards lack marketplace reality,
and the other evidence weighing for and against finding a likelihood of confusion. In
this regard, Professor McCarthy advises, “[t]he ‘Eveready’ format is especially useful
when the senior mark is readily recognized by buyers in the relevant universe.”
6 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 32:174. In addition,
The “Squirt” survey method will often produce different
results from the “Eveready” format for the same contesting
marks. For a senior user's mark that is not readily
identified by survey respondents, a Squirt survey is more
likely to produce a higher level of perception that the
marks identify the same or related sources.
Id. at § 32:174.50. See also Nat’l Distillers Prods. Co., LLC v. Refreshment Brands,
Inc., 198 F.Supp.2d 474, 482-484 (S.D.N.Y. 2002) (an Eveready-type survey showed
a zero level of confusion while a Squirt-type survey showed a 38% level of confusion
of affiliation.).
On the one hand, Opposer alleges that its mark is famous but, on the other hand,
Opposer introduces a likelihood of consumer survey better suited where its mark is
not readily recognizable by the relevant public. In addition, because Dynata shows
the survey respondents both marks, the Squirt-style survey presents a side-by-side
comparison of the marks when there is no testimony or evidence that Applicant’s
“investment advisory services” and “investment management” and Opposer’s
pharmaceutical products are offered for sale on a side-by-side basis.
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Finally, Applicant objects to Opposer’s likelihood of confusion survey because the
universe of respondents is not accurate.
Applicant’s potential clients are persons who are
“accredited investors,” “qualified clients,” and/or “qualified
purchasers,” and thus the pool of consumers for Applicant’s
Services includes institutional investors and certain high-
net-worth individuals. … Furthermore, respondents were
not asked about their incomes, either alone or combined
with their spouses, for each of the two most recent years and
whether they had a reasonable expectation of reaching the
same income level in the current year so as to qualify as
“accredited investors.” They were not asked whether they
owned more than $5,000,000 in investments for “qualified
purchaser” status, nor were they asked if they would have
at least $1,000,000 under the management of an
investment advisor so as to be “qualified clients.” …
Even if Dr. Pittaoulis had properly screened for natural
persons who were potential consumers of Applicant’s
Services, her survey should still be rejected as being
unrepresentative because it excludes institutional
investors entirely.135
As discussed in the analysis of the similarity or dissimilarity and nature of the
goods and services, we presume Applicant’s “investment advisory services” and
“investment management” include all types of investment advisory, management
services, and all types of investors regardless of their income, wealth, or
sophistication. Thus, the universe of survey respondents is under inclusive.
We sustain Applicant’s objections to Opposer’s likelihood of confusion survey to
the limited extent that we will not consider it in connection with Opposer’s claim

135 Applicant’s Brief, pp. 43-44 (86 TTABVUE 52-53).
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against Applicant’s mark GILEAD CAPITAL LEADERSHIP INVESTING and
design. Otherwise, we overrule Applicant’s objections.
However, we will not infer there is a likelihood of confusion from Opposer’s survey
because (i) it does not sufficiently replicate the marketplace, (ii) it presents a side-by-
side comparison of the marks when Applicant’s services and Opposer’s goods and
services are not offered for sale on a side-by-side basis, (iii) the survey style is more
conducive where Opposer’s mark is not famous or commercially strong as we have
found it to be here, and (iv) because Opposer did not introduce the sampling error
derived from a survey of 209 respondents.
G. Conclusion
Even though Opposer’s GILEAD mark is commercially strong, the parties’ marks
are similar and the parties’ goods and services are tenuously related, because
Opposer failed to prove the parties’ goods and services are offered in the same
channels of trade to the same classes of consumers, there is no testimony or evidence
that the same consumers will encounter the parties marks and goods and services in
the same marketing milieu. In other words, the same consumers will not be exposed
to the parties’ marks under circumstances likely to give rise to the mistaken belief
that the goods and services emanate from the same source. See In re HerbalScience
Grp., 96 USPQ2d 1321, 1324 (TTAB 2010) (“Because of the differences in the channels
of trade and customers for applicant’s and the registrant’s goods, there is virtually no
opportunity for confusion to arise.”). See also Sheller-Globe Corp. v. Scott Paper Co.,
204 USPQ 329, 336 (TTAB 1979) (no likelihood of confusion despite applicant’s
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extensive commercial use of its mark because, inter alia, differences in trade
channels, purchasers, uses of the goods, and advertising media). Therefore, we find
that Applicant’s marks GILEAD CAPITAL, in standard character form, and GILEAD
CAPITAL LEADERSHIP INVESTING and design, both for, “hedge fund investment
services; investment advisory services; investment management; financial services,
namely, operation and management of hedge funds, commodity pools and other
collective investment vehicles, and trading for others of securities, options, futures,
derivatives, debt instruments and commodities” is not likely to cause confusion with
Opposer’s mark GILEAD, in standard character form for pharmaceutical products.
We dismiss Opposer’s Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
likelihood of confusion claims as to both marks in both oppositions.
VI. False suggestion of a connection
Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), in relevant part, prohibits
registration of matter which may...falsely suggest a connection with persons, living
or dead, institutions, beliefs or national symbols...” As applied to these cases, Opposer
must show:
(1) Applicant’s marks GILEAD CAPITAL and GILEAD CAPITAL LEADERSHIP
INVESTING and design are the same as, or a close approximation of, the name or
identity previously used by another person or institution, in this case Opposer, Gilead
Sciences, Inc.;
(2) Relevant consumers will recognize Applicant’s marks as such, in that they
point uniquely and unmistakably to Opposer;
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(3) Opposer is not connected with the services offered by Applicant under the
marks; and
(4) The fame or reputation of Opposer is such that, when Applicant uses its marks
in connection with Applicant’s services, consumers will presume there is a connection
with Opposer.
See Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372,
217 USPQ 505, 508-510 (Fed. Cir. 1983) (providing the foundational principles for the
current four-part test used to determine the existence of a false suggestion of
connection). See also Bd. of Trs. v. Pitts, 107 USPQ2d 2001, 2025 (TTAB 2013); Petról
eos Mexicanos v. Intermix SA, 97 USPQ2d 1403, 1405 (TTAB 2010); Boston Red Sox
Baseball Club Ltd. P’ship v. Sherman, 88 USPQ2d 1581, 1593 (TTAB 2008)
In determining whether Applicant’s marks falsely suggest a connection with
Opposer, it is important to keep in mind that the rationale behind the Section 2(a)
prohibition differs significantly from the Section 2(d) ground of likelihood of
confusion. As Professor McCarthy points out “[t]he issue in a § 2(a) case is not
whether consumers would believe that the defendant’s goods emanate from the
plaintiff [but] whether consumers would falsely assume the goods had some
connection with plaintiff.” 3 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 19:76. While Congress designed likelihood of confusion to
protect the public from confusion as to the source of goods or services, the Federal
Circuit has noted that the Section 2(a) false suggestion of a connection ground
protects different interests:
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[T]he rights protected under the § 2(a) false suggestion
provision are not designed primarily to protect the public,
but to protect persons and institutions from exploitation of
their persona.
Bridgestone/Firestone Research Inc. v. Auto. Club de l'Ouest de la France, 245 F.3d
1359, 58 USPQ2d 1460, 1463-64 (Fed. Cir. 2001) (citing to Univ. of Notre Dame,
271 USPQ at 508-509 (“[I]t appears that the drafters sought by § 2(a) to embrace
concepts of the right to privacy,” even in the absence of likelihood of confusion); See
also In re MC MC S.r.l., 88 USPQ2d 1378, 1380 (TTAB 2008).
We turn to the first element. “[T]he similarity required for a ‘close approximation’
is akin to that required for a likelihood of confusion under § 2(d) and is more than
merely ‘intended to refer’ or ‘intended to evoke.’” Bos. Athletic Ass’n v. Velocity, LLC,
117 USPQ2d 1492, 1497 (TTAB 2015) (citation omitted). For the reasons we
articulated for finding Applicant’s marks similar to Opposer’s mark, we find that
GILEAD CAPITAL and GILEAD CAPITAL LEADERSHIP INVESTING and design
are close approximations of Opposer’s identity, Gilead Sciences, Inc., particularly
because Applicant refers to itself as Gilead, the same as the mark in Opposer’s
pleaded registrations (i.e., GILEAD identifies the source of Opposer’s
pharmaceuticals).
We now turn to the second element of the false suggestion claim: whether the
relevant public will recognize GILEAD CAPITAL and GILEAD CAPITAL
LEADERSHIP INVESTING as pointing uniquely and unmistakably to Opposer.
Thus, to show an invasion of one’s “persona,” it is not
sufficient to show merely prior identification with the name
adopted by another. Nor is it sufficient, as urged by the
Opposition No. 91233311
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University, that the fame of the name of an institution
provides the basis for protection in itself. The mark
NOTRE DAME, as used by Gourmet, must point uniquely
to the University.
Univ. of Notre Dame du Lac, 217 USPQ at 509. See also Hornby v. TJX Cos., Inc.,
87 USPQ2d 1411, 1424 and 1427 (TTAB 2008) (“the name claimed to be appropriated
by the defendant must point uniquely to the plaintiff.”). That is, to falsely suggest a
connection with Opposer, Applicant’s use of GILEAD CAPITAL in connection with
“hedge fund services,” “investment advisory services,” or “investment management”
must point uniquely to Opposer.
Applicant’s marks GILEAD CAPITAL and GILEAD CAPITAL LEADERSHIP
INVESTING and design do not satisfy this demanding standard. The only
commonality between Applicant’s marks and Opposer’s identity is the name “Gilead.”
As noted above, “Gilead” refers to a mountain in northwest Jordan or a district in
ancient Palestine, east of the Jordan River in present North Jordan.136 Opposer uses
and registered a shield and leaf logo it refers to as the “Balm of Gilead.”
The leaf symbolizes the Balm of Gilead, a medicinal
treatment that was mentioned in the Bible’s Old
Testament and named for the region of Gilead, where trees
with leaves producing this balm was said to grow. The
Balm of Gilead signifies a universal cure and is often
accompanied by the image of a tree, shrub, or leaf.137

136 Dictionary.com based on THE RANDOM HOUSE UNABRIDGED DICTIONARY (2021) (accessed
April 1, 2021). See also MERRIAM-WEBSTER DICTIONARY (merrriam-webster.com) (accessed
April 1, 2021); Gilead, ENCYCLOPAEDIA BRITANNICA (britannica.com) (accessed April 2, 2021)
(“Gilead, area of ancient Palestine east of the Jordan River, corresponding to modern
northwestern Jordan.”).
137 Flood Testimony Decl. ¶¶15-16 (63 TTABVUE 7).
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In addition, “Gilead” is a farm community or village in Nebraska that serves as the
source for Applicant’s name.138
The name “Gilead” is not uniquely associated with Opposer because the name also
identifies a region in Jordan, formerly, Palestine, a medicinal treatment originating
from Gilead, and a village in Nebraska. See Univ. of Notre Dame du Lac, 217 USPQ
at 509 (“Notre Dame” is not a name solely associated with the University because “[i]t
serves to identify a famous and sacred religious figure and is used in the names of
churches dedicated to Notre Dame, such as the Cathedral of Notre Dame in Paris,
France. Thus, it cannot be said that the only ‘person’ which the name possibly
identifies is the University and that the mere use of NOTRE DAME by another
appropriates its identity.”).
We now turn to the fourth element in the false suggestion of a connection claim:
whether the fame or reputation of Opposer is such that, when Applicant uses its
marks are in connection with Applicant’s services, consumers will presume there is a
connection with Opposer. As discussed above, GILEAD is a commercially strong mark
and Opposer is and has been a leader in the development of medicines for the
treatment and prevention of HIV-1 infection, as well as for the treatment of Covid-
19. Nevertheless, Opposer’s likelihood of confusion survey found that only 6.7% of the
respondents thought GILEAD CAPITAL is the same company as GILEAD
SCIENCES.
As my analysis shows, 20.6 percent of Test Group
respondents experienced source confusion and 13.9 percent

138 Strong Testimony Decl. ¶¶40-43 (63 TTABVUE 12-13).
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of Control Group #1 respondents experienced source
confusion, leaving a net confusion rate of 6.7 percent.139
Such a de minimis percentage of respondents believing GILEAD CAPITAL is the
same company as GILEAD SCIENCES is not compelling evidence that the relevant
public will presume there is a connection between GILEAD CAPITAL and Opposer.
Inasmuch Applicant’s marks do not point uniquely and unmistakably to Opposer
and Opposer has failed to establish that the relevant public will not presume there is
a connection between GILEAD CAPITAL and Opposer, the Section 2(a) false
suggestion of a connection claim fails and we dismiss the oppositions on that ground.
Decision: The oppositions are dismissed on the Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), claims of likelihood of confusion as to both applications.
The false suggestion of a connection claims under Section 2(a) of the Trademark
Act, 15 U.S.C. § 1052(a), are dismissed as to both applications.

139 Pittaoulis Testimony Decl. ¶69 (66 TTABVUE 21).