G&W Laboratories, Inc.v.G W Pharma Limited

Trademark Trial and Appeal Board

Feb 16, 2010

No. 91169571 (T.T.A.B. Feb. 16, 2010)

Mailed: February 16, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

G&W Laboratories, Inc.
v.
G W Pharma Limited
_____

Opposition No. 91169571
to application Serial No. 78354188
_____

Gregg A. Paradise of Lerner, David, Littenberg, Krumholz &
Mentlik, LLP for G&W Laboratories, Inc.

Michelle L. Visser of Rader, Fishman & Grauer PLLC for G W
Pharma Limited.
______

Before Grendel, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, G W Pharma, Ltd., filed an application to
register the mark shown below

for the following goods and services:
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91169571
2
“Pharmaceutical and veterinary preparations, namely, herbs,
herbal extracts, formulas containing herbal extracts,
medicinal oils and pure extracts of medicinal plants and
herbs, for use in the treatment of multiple sclerosis,
neuropathic pain, spinal cord injury, bladder disfunction,
peripheral neuropathy, cancer pain, peri-operative pain,
rheumatoid arthritis, inflammatory bowel disease, neurogenic
symptoms, psychotic disorders, diseases of the central
nervous system, stroke and head injury, motion sickness and
chemically induced sickness; herbs for medicinal purposes;
herb teas for medicinal purposes; plants and plant materials
in dried or preserved form for medical purposes”

in International Class 5;

“Computer programmes for use in managing data in the
pharmaceutical, health care and medical fields;
computer software for use in managing data in the
pharmaceutical, healthcare and medical fields;
apparatus for receiving, recording and transmitting
data for use in the monitoring and control and
management of pharmaceuticals, namely, drug dispensing
devices, drug filling devices, tracking devices,
information transfer devices, and alerting devices”

in International Class 9;

“Drug dispensing devices used by patients and
physicians which can record and transmit data
associated with the drug management process”

in International Class 10;

“Blank paper; cardboard and goods made from these
materials, namely pharmaceutical packaging, patient
data cards, and prescription pads; printed matter,
namely pharmaceutical information leaflets and drug
dispensing records; books namely publications in the
fields of medicine, pharmaceuticals and botanicals;
printed publications, namely magazines, newsletters,
pamphlets, reports, instructional and informational
leaflets, and posters, in the fields of medicine,
pharmaceuticals and botanicals; paper packaging;
stationery; printed instructional and teaching
materials, all relating to the pharmaceutical, health
care and medical fields”

in International Class 16;

“Plastic medicine containers”
Opposition No. 91169571
3

in International Class 20;

“Agricultural and horticultural products, namely live
plants; agricultural and horticultural seeds; natural
flowers; living plants; dried plants”

in International Class 31;

“Educational services and instruction services, namely
training and teaching in the nature of classes,
seminars, lectures and through the provision of a
website in the pharmaceutical, health care and medical
fields”

in International Class 41;

“Scientific and technical research services, namely
pharmaceutical and botanical research; scientific and
technological design services, namely design of apparatus
for use in healthcare management and pharmaceutical
delivery; chemical analysis; pharmaceutical research and
development”

in International Class 42; and

“Medical services, veterinary services, medical analysis
services; horticultural services”

in International Class 44.1

Opposer, G&W Laboratories, Inc., opposed registration
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
on the ground that applicant’s mark, when used in connection

1 Application Serial No. 78354188 was filed on January 20, 2004
based for all classes of goods and services upon applicant’s
assertion of a bona fide intent to use the mark in commerce under
Trademark Act Section 1(b), with a claim of priority under
Trademark Act Section 44(d). In a communication filed on
December 2, 2005, applicant indicated that the application that
served as the basis for its Section 44(d) claim abandoned, and
withdrew its Section 44(d) claim. Applicant further amended its
application to add as a filing basis Trademark Act Section 44(e),
based upon applicant’s ownership of European Union Registration
No. 3477544, issued on August 16, 2005. “PHARMACEUTICALS” is
disclaimed.
Opposition No. 91169571
4
with applicant’s goods and services, so resembles opposer’s
previously used and registered marks:
G&W (in typed or standard characters)2
and
3
both for

“suppositories; tablets, namely, laxative tablets
and anti-diarrheal tablets; pharmaceutical preparations in
topical semi-liquid dosage forms, namely, topical
dermatological creams and ointments; liquid-containing pads
for treating hemorrhoid-related conditions and for cleansing
the rectal and vaginal areas”

in International Class 5, that confusion is likely among
consumers as to the source of the parties’ respective goods
and services.
Applicant, in its amended answer, denied all of the
allegations in the amended notice of opposition.4

2 Registration No. 2577687, issued June 11, 2002 with dates
of first use anywhere and first use in commerce of 1919. Section
8 affidavit accepted.
3 Registration No. 2606786, issued August 13, 2002 with dates
of first use anywhere and first use in commerce of 1981. Section
8 affidavit accepted.
4 Opposer’s pleaded registrations originally recited services in
Class 35 in addition to the goods identified above. Applicant
filed counterclaims to cancel both of opposer’s pleaded
registrations in their entireties on the ground of fraud,
alleging that opposer had neither rendered the Class 35 services
in commerce nor used the marks in commerce in connection
therewith. Subsequently, opposer filed its Section 8 affidavits
with respect to each registration, deleting the services in Class
35 from both; and filed a motion to dismiss the counterclaims
against Class 35 as moot, and to dismiss the counterclaims
against Class 5 for failure to state a claim. In a decision
issued on January 29, 2009, the Board found that applicant had
Opposition No. 91169571
5
The record consists of the pleadings and the files of
the involved application as well as opposer’s above-noted
registrations that were subject to applicant’s counterclaim.
In addition, during its assigned testimony period opposer
took the testimony deposition of Stephen C. Greene, its Vice
President and General Counsel, along with associated
exhibits.5 Opposer further submitted notices of reliance
upon plain copies of its pleaded registrations; and
applicant’s responses to its various discovery requests.
Applicant did not take testimony or submit any evidence
during its assigned testimony period.
Both parties submitted briefs on the merits of the
case. In addition, opposer submitted a reply brief.6

not consented to opposer’s voluntary cancellation of its Class 35
services and entered judgment against opposer on the
counterclaims as to such services in both pleaded registrations.
The Board further found that applicant’s counterclaims did not
seek cancellation of the Class 5 goods recited in opposer’s
pleaded registrations, and dismissed the counterclaims as to such
goods for failure to state a valid basis for cancellation
thereof. G&W Laboratories, Inc. v. G W Pharma Ltd. 89 USPQ2d
1571 (TTAB 2009).
Further, in its amended answer applicant asserted the
affirmative defenses of waiver and estoppel but did not pursue
them at trial. Accordingly, they are deemed waived.
5 We will refer to those portions of the testimony deposition of
Mr. Greene that were submitted under seal as containing
confidential information only in general terms.
6 Applicant submitted its brief by overnight courier on August 3,
2009. Opposer’s reply brief thus was due on August 23, 2009.
Trademark Rule 2.119(c). Inasmuch as August 23, 2009 was a
Sunday, opposer’s reply brief, filed August 24, 2009, is timely.
Trademark Rule 2.196. Accordingly, applicant’s motion to strike
opposer’s reply brief as untimely, as well as the parties’
subsequent briefing thereof, will be given no consideration.

Opposition No. 91169571
6
Applicant’s Abandonment of the Goods Recited in Class 5
As an appendix to its brief, applicant filed an express
abandonment, with prejudice, of the goods recited in Class 5
of its involved application. In an order issued on
September 15, 2009, the Board noted that opposer’s written
consent to applicant’s express abandonment is not of record,
and, in accordance with Trademark Rule 2.135, sustained the
opposition and entered judgment against applicant as to the
goods identified in Class 5 of its involved application.
Opposer’s Standing
As a result of applicant’s counterclaim to cancel
opposer’s pleaded registrations, such registrations form
part of the record of this proceeding without any actions of
the parties. Trademark Rule 2.122(b)(1). See also TBMP
§704.03(a) (2d ed. rev. 2004). Because opposer’s pleaded
registrations are properly of record, we find that opposer
has established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Priority of Use
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks therein and Class 5 goods covered thereby. See King
Opposition No. 91169571
7
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
In addition, opposer claims that it has made prior
common law use of its marks displayed above in connection
with pharmaceutical preparations and various services.7
Inasmuch as applicant has not established use of its mark in
connection with its goods or services prior to the Section
44(d) priority filing date of its application, the earliest
date upon which applicant may rely for priority purposes is
July 21, 2003.8 See Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 36 USPQ2d 1328, 1332 (TTAB 1998), quoting
Alliance Manufacturing Co., Inc. v. ABH Diversified
Products, Inc., 226 USPQ 348, 351 (TTAB 1985)(“an applicant
is entitled to rely upon the filing date of its application
as a presumption of use of the mark subject of the
application as of that date”).
Applicant neither argues nor presents evidence that
opposer’s common law marks, G & W in typed or standard

7 In its notice of opposition, opposer asserts common law rights
in its marks in connection with goods. However, during trial
opposer introduced testimony and evidence regarding its asserted
common law rights in its marks in connection with goods and
services and applicant did not object to such testimony and
evidence on that ground, but rather conducted cross-examination
on the issue during testimony and addressed the issue in its
brief. Accordingly, we deem the pleadings to have been so
amended by the implied consent of the parties. See Fed. R. Civ.
P. 15 (b). See also TBMP §507.03(b).
8 Although applicant abandoned the European Union application
that formed the basis for its Section 44(d) claim, applicant
nonetheless may rely upon the priority filing date thereof.
Trademark Rule 2.35(b)(4). See also TMEP §1003.08.
Opposition No. 91169571
8
characters and , lack inherent distinctiveness. See
Towers v. Advent Software, Inc., 913 F.2d 942, 945, 16
USPQ2d 1039, 1041 (Fed. Cir. 1990); and Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43-45
(CCPA 1981). As a result, there is nothing in the record to
suggest that opposer’s marks are not inherently distinctive
as used in connection with its goods and services. Thus, in
order to establish priority, opposer must show that it made
common law use of these marks in connection with its goods
and services prior to the July 21, 2003 priority filing date
of the involved application. Section 2(d) of the Trademark
Act, 15 U.S.C. §1057(d); Miller Brewing Co. v. Anheuser-
Busch Inc., 27 USPQ2d 1711, 1714 (TTAB 1993); and Zirco
Corp. v. American Telephone and Telegraph Co., 21 USPQ2d
1542 (TTAB 1991).
Opposer’s witness, Mr. Stephen C. Greene, testified
that he has been with opposer since August 1993.9 He
testified that since before he joined opposer, opposer has
provided the following services10 under its pleaded marks:
publishing on its website “scientific papers on current
good manufacturing practices” regarding such drugs;11

9 Greene Testimony, p. 9.
10 In his testimony, Mr. Greene identifies other products and
activities that appear to be ancillary to the Class 5 goods
identified in its pleaded registrations and thus are not goods in
trade as contemplated by Trademark Act § 45, 15 U.S.C. §1127.
11 Greene Testimony, p. 71-3.
Opposition No. 91169571
9
conducting research into the formulation and breakdown
over time of medications as well as the manufacturing
processes of such medications;12 and
data management for others in the field of managing
pharmaceutical sales inventory for its clients and
customers.13
Thus, opposer’s witness has testified that at least as
early as August 1993, opposer has provided the above-listed
services under its pleaded marks. This date is prior to the
July 21, 2003 filing date of applicant’s application. Oral
testimony, even of a single witness, if “sufficiently
probative,” may be sufficient to prove priority.
Powermatics, Inc. v. Glebe Roofing Products Co., 341 F.2d
127, 144 USPQ 430, 432 (CCPA 1965)); 4U Co. of America, Inc.
v. Naas Foods, Inc., 175 UPSQ 251, 253 (TTAB 1972). We find
that Mr. Greene’s testimony is credible and it has not been
contradicted. Accordingly, Mr. Greene’s testimony satisfies
opposer’s burden of proof in showing, by a preponderance of
the evidence, that opposer has priority of use in connection
with the above services under the common law in addition to
the goods recited in its pleaded registrations. We need not
rule on whether opposer’s marks were in use before the dates
for which Mr. Greene has testified based on personal

12 Greene Testimony, p. 74-5.
13 Greene Testimony, p. 103-5.

Opposition No. 91169571
10
knowledge, because opposer has established that it has made
use prior to applicant’s filing date.
Applicant asserts in its brief that opposer’s evidence
fails to demonstrate that it has made continuous use of its
marks. First, in order to establish priority, opposer is
required only to show prior use, not continuous use of its
marks. See West Florida Seafood Inc. v. Jet Restaurants
Inc., 31 F.3d 1122, 31 USPQ2d 1660 (Fed. Cir. 1994). To the
extent that applicant’s continuity argument may be construed
as an abandonment claim, we note that applicant has not
pleaded abandonment as an affirmative defense. Further,
there is no evidence of record showing that opposer
discontinued use of its marks with intent not to resume such
use. Based on the foregoing, opposer has shown priority of
use over applicant of its marks on the goods identified in
its pleaded registrations as well as the services listed
above under the common law.
Likelihood of Confusion
We now turn to the issue of likelihood of confusion
between opposer’s marks and applicant’s mark as used on
their respective goods and services. Our likelihood of
confusion determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion issue.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
Opposition No. 91169571
11
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Marks
We begin by addressing the strength of opposer’s marks.
Opposer asserts that it has used its G&W mark for 90 years,
and its mark for 28 years.14 Opposer’s sales figures
for the years 2005 and 2006 were submitted under seal,15
although opposer acknowledges in its brief that its sales
for each year exceeded $50 million.16 Based upon the length
of use and amount of sales of pharmaceutical products under
opposer’s marks, we find that such marks, although not
famous, nonetheless are strong and entitled to a broad scope
of protection. Cf. Bose Corp. v. QSC Audio Products 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); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992).

14 Greene Testimony, p. 7, 19.
15 Greene Testimony, p. 25.
16 Brief, p. 13.
Opposition No. 91169571
12
We turn to the first du Pont factor, i.e., whether
applicant’s mark,

and opposer’s marks, G&W (in typed or standard characters)
and are similar or dissimilar when viewed in their
entireties in terms of appearance, sound, connotation and
overall commercial impression. See Palm Bay Imports, Inc.
v. Veuve Clicquot, supra. The test, under the first du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the
goods offered under the respective marks is likely to
result.
In comparing the parties’ marks, we find that GW is the
dominant element of applicant’s mark, and the nearly
identical wording G&W is the entirety of one of opposer’s
pleaded marks and the dominant portion of opposer’s
mark, and accordingly it is entitled to more weight in our
analysis. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
Opposition No. 91169571
13
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
In applicant’s mark, the term PHARMACEUTICALS is
disclaimed, and clearly describes a central characteristic
of applicant’s goods and services. Thus, PHARMACEUTICALS
has little source distinguishing quality and is subordinate
to GW. Further, both the simple line design in applicant’s
mark and the arrow design in opposer’s mark are less
significant than the wording in the marks. If a mark
comprises both a word and a design, then the word is
normally accorded greater weight because it would be used by
purchasers to request the goods or services. In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For these
reasons, we consider GW to be the dominant feature of
applicant’s mark and G&W to be the dominant feature of
opposer’s mark. Moreover, the significance of GW in
applicant’s mark is reinforced by its location as the first
word in the mark. Presto Products Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“it is often
the first part of a mark which is most likely to be
impressed in the mind of a purchaser and remembered”). See
also Century 21 Real Estate Corp. v. Century Life of
Opposition No. 91169571
14
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992)(upon encountering the marks, consumers must first
notice the identical lead word).
Based upon the above analysis, we find that applicant’s
mark

is highly similar to opposer’s marks G&W and in that
the dominant feature of applicant’s mark, i.e., GW, is
nearly identical to the entirety of opposer’s G&W mark and
the dominant portion of opposer’s mark. The presence
of an ampersand in opposer’s marks is insignificant in
comparison to the presence of the identical letters GW
versus G&W and does little to obviate the similarities
between the marks in appearance and sound. Further, there
is nothing in the record to suggest that GW or G&W describes
any aspect of either parties’ goods or services. Thus, to
the extent that the marks have any particular connotation as
used in connection with such goods and services, there is no
reason why the marks’ connotation would not be the same.
In view of the foregoing, we find that the parties’
marks are highly similar in appearance, sound and
Opposition No. 91169571
15
connotation and that the marks, when viewed as a whole,
convey highly similar commercial impressions. Accordingly,
this du Pont factor along with the strength of opposer’s
marks heavily favors opposer.
The Goods and Services
With respect to the parties’ goods and services, it is
well established that the goods or services of the parties
need not be similar or competitive, or even offered through
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient that the
respective goods or services of the parties are related in
some manner, and/or that the conditions and activities
surrounding the marketing of the goods or services are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same source. See Hilson Research, Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993); and In re International Telephone & Telephone
Corp., 197 USPQ 910, 911 (TTAB 1978).
We base our determination of the similarity or
dissimilarity between the parties’ respective goods and
services, as we must, upon the goods and services recited in
the involved application and opposer’s pleaded
registrations. See Paula Payne Products v. Johnson
Opposition No. 91169571
16
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”)
In addition, and as discussed above, opposer has shown
prior common law rights in the marks in its registrations as
used in connection with: publishing on its website
“scientific papers on current good manufacturing practices”
regarding such drugs;17 conducting research into the
formulation and breakdown over time of medications as well
as the manufacturing processes of such medications;18 and
data management for others in the field of managing
pharmaceutical sales inventory with its clients and
customers.19
Applicant argues that the above services are merely
incidental to opposer’s pharmaceuticals and thus are not
goods in trade or services performed for the benefit of
others.20 However, opposer has introduced uncontroverted
testimony that it has made common law use of its marks in
connection with these services. There is nothing in the
record to support a finding that, while they may be
appurtenant to opposer’s pharmaceuticals, the activities
recited by opposer are not services performed for the

17 Greene Testimony, p. 71-3.
18 Greene Testimony, p. 74-5.
19 Greene Testimony, p. 103-5.
Opposition No. 91169571
17
benefit of others. As such, we find unavailing applicant’s
arguments in this regard as to these services.
In its main brief on the case, opposer generally
confines its discussion of the similarity of the parties’
goods and services to a comparison of the goods in its
pleaded registrations and the goods recited in Class 5 of
the involved application.21 As discussed above, applicant
filed with its brief an abandonment of its application with
respect to its Class 5 goods. In so doing, applicant noted
that opposer failed to argue that opposer’s goods and
services are related to the remaining goods and services in
the involved application, and asserted that, as such,
opposer has conceded its case with regard to those remaining
goods and services.22 Applicant further noted in its brief
that opposer’s witness, Mr. Greene, stated on cross-
examination that opposer does not provide the following
goods or services: computer programs, apparatus for
receiving, recording, or transmitting data for monitoring or
controlling management of pharmaceuticals in Class 9;23 drug
filling or drug dispensing devices in Class 10;24 patient
data cards, prescription pads, books or magazines,
stationery, blank paper, cardboard or paper goods in Class

20 Brief, p. 7.
21 Brief, p. 8-11.
22 Brief, p. 13-4.
23 Greene Testimony, p. 105—15.
24 Id.
Opposition No. 91169571
18
16,25 plastic medicine containers in Class 20;26 live or
dried plants or flowers, agricultural seeds in Class 31;27
or medical, medical analysis, horticultural or veterinary
services in Class 44.28
In its reply brief, opposer asserts its “products
contain or may contain horticultural products for medical
services.”29 However, while Mr. Greene testifies that
opposer’s pharmaceutical products may contain medicinal oils
or herbal extracts,30 there is nothing more in the record to
support opposer’s contention that its goods contain
“horticultural products.”
While opposer’s main brief focused on the
pharmaceutical products in Class 5, the issue of likelihood
of confusion as to the goods and services listed in the
remaining Classes of the subject application was clearly
tried and, further, addressed by applicant in its response
brief and opposer in its reply brief. In view thereof, we
do not consider the issue of likelihood of confusion as to
the remaining goods and services to have been waived by
opposer.
Turning to the relatedness of the goods and services at
issue herein, opposer has introduced testimony and evidence

25 Id.
26 Id.
27 Id.
28 Id.
29 Reply brief, p. 8, citing to Greene Testimony, p. 94-5.
Opposition No. 91169571
19
that its Class 5 pharmaceutical products are packaged into
plastic medicine containers;31 dispensed to patients from
tubes or tablets; and packaged with printed instructional
inserts,32 all displaying its marks.33 Mr. Greene testified
and introduced evidence that opposer does not manufacture or
sell such packaging and containers by themselves, but rather
purchases them to contain its drugs for sale.34 Opposer
asserts in addition that it engages in the following
activities under its marks in connection with its Class 5
pharmaceuticals: educational and instruction services
regarding its drug products provided to pharmacies, nursing
associations, and health care providers;35 and conducting
informational conferences regarding the capabilities and
advantages of certain of its drugs.36 While such testimony
and evidence may not be sufficient to support a finding that
opposer’s drug packaging and containers are goods in trade,
or that its educational and informational activities are
services preformed for the benefit of others, it nonetheless
is sufficient to show a relationship between these products
and activities and the Class 5 pharmaceuticals recited in
its pleaded registrations.

30 Greene Testimony, p. 94-5.
31 Reply brief, p. 7-8, citing to Greene Testimony, Exhibit 16.
32 Greene Testimony, p. 107-9.
33 Id., citing to Greene Testimony, Exhibit 21.
34 Greene Testimony, p. 106-9.
35 Greene Testimony, p. 71.
36 Greene Testimony, p. 71-3, Exhibit 32.
Opposition No. 91169571
20
In light of the above, we first turn to applicant’s
“Computer programmes for use in managing data in the
pharmaceutical, health care and medical fields;
computer software for use in managing data in the
pharmaceutical, healthcare and medical fields;
apparatus for receiving, recording and transmitting
data for use in the monitoring and control and
management of pharmaceuticals, namely, drug dispensing
devices, drug filling devices, tracking devices,
information transfer devices, and alerting devices”

in Class 9. As noted above, opposer has introduced
testimony on cross-examination that it does not use its
marks on computer programs or apparatus for receiving or
recording data in the pharmaceutical field. We note,
however, that opposer has shown common law use of its marks
in connection with data management for others in the field
of managing pharmaceutical sales inventory with its clients
and customers. We find that the function of applicant’s
computer programs and software, namely, “managing data in
the pharmaceutical, health care and medical fields” and its
various apparatus “for use in the monitoring and control and
management of pharmaceuticals” encompasses the function of
opposer’s more narrowly identified services, namely,
managing pharmaceutical sales inventory. In other words,
opposer’s management of pharmaceutical sales inventory is
included within the more broadly identified pharmaceutical
data management performed by applicant’s goods. As a
result, we find that applicant’s Class 9 goods are
inherently complementary and related to opposer’s data
Opposition No. 91169571
21
management services. See, e.g., In re Hyper Shoppes, 6
USPQ2d 1025 (Fed. Cir. 1988).
Next we turn to applicant’s
“Drug dispensing devices used by patients and
physicians which can record and transmit data
associated with the drug management process”

in International Class 10. Again, opposer has not
introduced any testimony or evidence that it uses its marks
in connection with such goods, but rather introduced
testimony on cross-examination that it does not use its
marks on drug dispensing devices.
We turn next to applicant’s
“Blank paper; cardboard and goods made from these
materials, namely pharmaceutical packaging, patient
data cards, and prescription pads; printed matter,
namely pharmaceutical information leaflets and drug
dispensing records; books namely publications in the
fields of medicine, pharmaceuticals and botanicals;
printed publications, namely magazines, newsletters,
pamphlets, reports, instructional and informational
leaflets, and posters, in the fields of medicine,
pharmaceuticals and botanicals; paper packaging;
stationery; printed instructional and teaching
materials, all relating to the pharmaceutical, health
care and medical fields”

in International Class 16. Opposer has submitted
testimony and evidence that it distributes printed
instructional inserts along with the pharmaceuticals
recited in its pleaded registrations. Opposer further
submitted testimony and evidence that it packages the
pharmaceuticals recited in its registrations in
cardboard packages. In addition, opposer has testified
Opposition No. 91169571
22
and introduced evidence that such printed inserts and
packaging bear its marks, along with its pharmaceutical
goods. While opposer’s use cannot be considered “goods
in trade,” such inserts and packaging are essentially
identical to applicant’s “pharmaceutical information
leaflets” and “instructional and informational
leaflets…in the field[] of…pharmaceuticals” and
“cardboard and goods made from these materials, namely
pharmaceutical packaging” and opposer’s testimony and
evidence suggests that such packaging and printed
materials are likely to be encountered with
pharmaceuticals under the same mark. Thus, opposer’s
pharmaceuticals and applicant’s pharmaceutical
packaging are inherently related in terms of confusion
as to source. Applicant’s pharmaceutical packaging
would display the nearly identical mark to the mark
displayed on the packaging for opposer’s
pharmaceuticals.
We turn next to applicant’s
“Plastic medicine containers”
in International Class 20. Opposer has testified on
cross-examination that it does not use its marks on
such goods. However, opposer has testified that it
packages certain of its pharmaceutical products in
Opposition No. 91169571
23
plastic containers bearing its marks.37 Again, while
opposer’s use cannot be considered “goods in trade,”
such plastic containers are identical to applicant’s
“plastic medicine containers” and opposer’s testimony
and evidence suggests that such containers are likely
to be encountered with pharmaceuticals under the same
mark. Thus, opposer’s pharmaceuticals and applicant’s
“plastic medicine containers” are inherently related in
terms of confusion as to source. Applicant’s
pharmaceutical containers would display the nearly
identical mark to the mark displayed on the packaging
for opposer’s pharmaceuticals.
We turn next to applicant’s
“Agricultural and horticultural products, namely live
plants; agricultural and horticultural seeds; natural
flowers; living plants; dried plants”

in International Class 31. Again, opposer has
introduced no testimony or evidence that it uses its
marks in connection with such goods and, in fact,
testified on cross-examination that it does not use its
marks on “live or dried plants or flowers,” or
“agricultural seeds.” We are not persuaded by the
speculative statements by Mr. Greene in his testimony
deposition, namely, “I’m almost certain some of the
active ingredients or inactive ingredients may have

37 Greene Testimony, p. 109.
Opposition No. 91169571
24
some herbal extracts”38 and “I think there might be
some medicinal oils in any one of the topical creams
and ointments”39 produced by opposer, that opposer is
using its marks in connection with goods that are
similar to the agricultural and horticultural products
recited in the involved application.
We turn next to applicant’s
“Educational services and instruction services, namely
training and teaching in the nature of classes,
seminars, lectures and through the provision of a
website in the pharmaceutical, health care and medical
fields”

in International Class 41. Opposer has introduced testimony
that it provides education and instruction and conducts
informational conferences under its marks regarding its drug
products and their capabilities to pharmacies, nursing
associations, and health care providers as an ancillary
activity in connection with the pharmaceutical goods recited
in its registrations. These activities are nearly identical
to applicant’s educational and instructional services in the
fields of pharmaceuticals, and the testimony submitted by
opposer suggests that such services are likely to be
encountered in connection with pharmaceuticals under the
same mark.
We turn next to applicant’s

38 Greene Testimony, p. 94.
39 Id. at 95.

Opposition No. 91169571
25
“Scientific and technical research services, namely
pharmaceutical and botanical research; scientific and
technological design services, namely design of apparatus
for use in healthcare management and pharmaceutical
delivery; chemical analysis; pharmaceutical research and
development”

in International Class 42. Opposer has introduced testimony
that it conducts research into the formulation and breakdown
over time of medications as well as the manufacturing
processes of such medications under its marks. Such
services are closely related to applicant’s pharmaceutical
research services inasmuch as opposer’s services appear to
be directed toward certain aspects thereof. In other words,
opposer’s research into the formulation, breakdown and
manufacture of pharmaceuticals appears to be encompassed
within applicant’s more broadly identified pharmaceutical
research.
Finally, we turn to applicant’s
“Medical services, veterinary services, medical analysis
services; horticultural services”

in International Class 44. As discussed above, opposer has
introduced no testimony or evidence that it uses its marks
in connection with such services and, in fact, testified on
cross-examination that it does not use its marks in
connection therewith.
Thus, based upon the testimony and evidence of record,
opposer has shown that it has made prior use of its marks in
connection with goods and services that are identical in
Opposition No. 91169571
26
part or otherwise related to the goods recited in Classes 9,
16 and 20, and the services recited in Classes 41 and 42 of
the involved application.
On the other hand, there is no evidence of a connection
between applicant’s goods and services in Classes 10, 31 and
44 and opposer’s goods and services that purchasers would
necessarily view the goods and services as having a common
source. Based only on the mere conclusory statements of
opposer, we see the likelihood of confusion claim as to
these goods and services as amounting to only a speculative,
theoretical possibility. Language by our primary reviewing
court is helpful in resolving the likelihood of confusion
issue in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de minimis
situations but with the practicalities
of the commercial world, with which the
trademark laws deal.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g
153 USPQ 412 (TTAB 1967).
In view of the foregoing, we find that the du Pont
factor of similarity between the parties’ goods and services
favors opposer as to applicant’s goods and services in
Opposition No. 91169571
27
Classes 9, 16, 20, 41 and 42; and favors applicant as to its
goods and services in Classes 10, 31 and 44.
Channels of Trade
Because of our finding that the parties’ goods and
services in Classes 9, 16, 20, 41 and 42 are related, and
because there are no recited restrictions as to the channels
of trade or classes of purchasers in the involved
application, we must assume that the goods and services are
available in all the normal channels of trade to all the
usual purchasers for such goods and services, and that the
channels of trade and the purchasers for the parties’ goods
services would, at a minimum, overlap. See Interstate
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000). See also Paula Payne Products v. Johnson Publishing
Co., supra.
We find that, as a result of the foregoing, this du
Pont factor also favors opposer as to the goods and services
in Classes 9, 16, 20, 41 and 42.
Conditions of Sale
The next du Pont factor discussed by the parties is
conditions of sale. Applicant contends that there is no
evidence of record as to whether the goods and services
recited in its application would be purchased either on
impulse or after careful consideration. Applicant is
correct that there is no evidence of record on this point.
Opposition No. 91169571
28
We note, however that even assuming that purchases of
the parties’ goods and services would involve a deliberate
decision, this does not mean that the purchasers are immune
from confusion as to the origin of the respective goods or
services, especially when, as we view the present case, the
close similarity of the marks and the parties’ Class 9, 16,
20, 41 and 42 goods and services outweigh any sophisticated
purchasing decision. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) [similarities of goods and
marks outweigh sophisticated purchasers, careful purchasing
decision, and expensive goods]. See also In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
[“Human memories even of discriminating purchasers...are not
infallible.”].
As a result, we find this du Pont factor to be, at
best, neutral or to slightly favor opposer.
Actual Confusion
The final du Pont factor discussed by the parties is
the presence or absence of actual confusion between
consumers as to the goods and services under the parties’
marks. It is noted that applicant has not begun using its
Opposition No. 91169571
29
mark in commerce and in order for an asserted lack of any
incidents of actual confusion to be a meaningful factor, the
record must demonstrate that there has been appreciable and
continuous use by applicant of its mark in the same
market(s) as those served by registrant under its mark.
See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768, 1774 (TTAB 1992). Specifically, there must be
evidence showing that there has been an opportunity for
instances of actual confusion to occur and here the record
is devoid of any such proof. See, e.g., Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.
2000).
We are not persuaded by opposer’s evidence of a job-
seeking individual sending a resume to applicant at
opposer’s address40 that actual confusion has occurred
between the parties’ goods and services under their marks.
There simply is insufficient evidence on this record in
order for the asserted absence of any instances of actual
confusion to be a meaningful factor in the determination of
whether confusion is likely to occur.
As a result, this du Pont factor is neutral.
Summary
We have carefully considered all of the evidence
pertaining to priority of use and the relevant du Pont
factors, as well as all of opposer’s arguments with respect

40 Greene Testimony, p. 63, Exhibit 31.
Opposition No. 91169571
30
thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that opposer has established its standing
to bring this proceeding; its priority of use; and that a
likelihood of confusion exists between its G&W and
marks and applicant’s involved mark, as used in connection
with their closely related goods and services in Classes 9,
16, 20, 41 and 42. To the extent there exists any doubt
about our conclusion, we resolve such doubt on the issue of
likelihood of confusion in favor of the prior user and
against the newcomer. See San Fernando Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2
(CCPA 1977).
DECISION: The opposition is sustained in part on the
ground of priority and likelihood of confusion, and
registration to applicant is refused as to the goods and
services recited in Classes 9, 16, 20, 41 and 42 of the
involved application.
The opposition is dismissed in part as to the goods and
services recited in Classes 10, 31 and 44 of the involved
application.
The September 15, 2009 Board order sustaining the
opposition to the goods identified in Class 5 of its
involved application stands.