Immunex Corporationv.Applied Medical Research, Inc.

Trademark Trial and Appeal Board

Mar 6, 2006

No. 91153080 (T.T.A.B. Mar. 6, 2006)

Mailed:
March 6, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Immunex Corporation
v.
Applied Medical Research, Inc.
________

Opposition No. 91153080
against Serial No. 75704454
_______

Lisa Peller London, Laurence R. Hefter, Andrea Anderson and
Margaret A. Esquenet of Finnegan Henderson Farabow
Garrett & Dunner, L.L.P. for Immunex Corporation.

Edward J. Petrus, M.D., Medical Director of Applied Medical
Research, Inc., pro se.
_______

Before Seeherman, Bucher and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applied Medical Research seeks registration on the
Principal Register of the mark IMMUNO-RX (standard character
drawing) for goods identified in the application as follows:
“Vaccines composed of killed bacterial bodies
and their lysates and probiotic bacteria for
use in stimulating the immune system” in
International Class 5.1

1 Application Serial No. 75704454 was filed on May 13, 1999
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91153080
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Immunex Corporation has opposed the application on the
following grounds: alleging that applicant’s mark, when
used on the identified goods, so resembles opposer’s
previously used and registered mark IMMUNEX (standard
character drawing) for “pharmaceuticals for the treatment of
autoimmune diseases, healing wounds, and cancer” also in
International Class 5,2 as to be likely to cause confusion,
to cause mistake or to deceive; and alleging that
applicant’s mark so resembles opposer’s mark as to cause
dilution of the distinctive quality of opposer’s mark, which
was distinctive and became famous before applicant filed the
instant application.3
In its answer, applicant has denied the salient
allegations of the notice of opposition. Only opposer
timely filed a brief in this case.4 Neither party requested
an oral hearing.

2 Registration No. 1689809, registered on June 2, 1992,
claiming first use anywhere since at least as early as January 4,
1988 and claiming first use in commerce since at least as early as
September 9, 1991. Section 8 affidavit accepted and Section 15
affidavit acknowledged; first renewal granted.
3 In its brief, opposer also claims that this application
should be barred from registration because applicant lacks a bona
fide intention to use its mark in commerce. However, this ground
was not included in the original notice of opposition, the
pleadings were never amended to include it as a pleaded ground,
and there is nothing in the record to support a contention that
the parties have tried this issue.
4 Opposer’s motion to strike applicant’s brief as untimely was
granted on September 28, 2005.
Opposition No. 91153080
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The record includes the pleadings; the file of the
opposed application; and the testimony declaration, with
exhibits, of opposer’s sales representative, Mark Snyder,
that opposer filed on December 15, 2004.5 Additionally, on
November 19, 2004, opposer submitted under its First Notice
of Reliance a status and title copy of its pleaded
Registration No. 1689809 for the mark IMMUNEX; on November
22, 2004, opposer submitted under its Second Notice of
Reliance a copy of applicant’s responses to opposer’s First
Set of Interrogatories and a copy of applicant’s
supplemental responses to opposer’s first set of
interrogatories; and on December 14, 2004, opposer submitted
under its Third Notice of Reliance articles from the
LEXIS/NEXIS database which qualify as printed publications
under Trademark Rule 2.122(e).6
Applicant has not submitted any evidence,7 nor has
applicant objected to any of the evidence opposer entered
into the record.

5 According to a submission of December 7, 2004, the parties
stipulated to taking testimony by declaration or affidavit.
6 To the extent that several of these excerpts were from wire
service reports, and there is no evidence that these articles ever
circulated in the United States, we have not considered them.
7 Applicant submitted no notice of reliance and no testimony or
exhibits during its testimony period, although the record reveals
allegations made in its answer that were never proven, as well as
inappropriate attachments of newspaper articles and other papers
to various motions and responses filed throughout the litigation
but that were never correctly submitted for the record.
Opposition No. 91153080
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The record shows that opposer was a pioneer in the
field of biotechnology as early as 1981. Immunex
Corporation has had one major, breakthrough drug, sold under
the mark ENBREL. This drug, whose generic name is
etanercept, is an injectable rheumatoid arthritis treatment,
initially targeted to adults. It is a type of protein that
blocks the action of tumor necrosis factor (TNF) – a
substance created naturally by the body’s immune system.
People with immune diseases, such as rheumatoid arthritis,
ankylosing spondylitis, psoriatic arthritis, and psoriasis,
have too much TNF in their bodies. The ENBREL pharmaceutical
can reduce the amount of TNF in the body to normal levels,
helping to treat such diseases.
The record shows that Immunex Corporation faced some
widely-publicized challenges and failures in 2001 to produce
enough ENBREL medication to meet increasing demand. In July
2002 Amgen bought Immunex Corporation for ten billion
dollars, in what was at that time the largest acquisition
ever of a biotech drug maker.8

8 Applicant attempted to show examples of where this deal was
much criticized in the financial press as a huge gamble, or even a
serious misstep, for Amgen. None of this material was properly
made of record. Nonetheless, there are LEXIS/NEXIS articles
placed into the record by opposer from this period containing
references to many of these same challenges.
Opposition No. 91153080
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Since the sale of Immunex Corporation to Amgen, the
ENBREL drug has been marketed in North America jointly by
Amgen and Wyeth Pharmaceuticals. At the time of the
purchase, the URL for Immunex Corporation’s website
(www.immunex.com) was changed to www.amgen.com. However,
Immunex Corporation continues to be a wholly-owned
subsidiary of Amgen; is responsible for manufacturing ENBREL
medication; and owns the trademark registration for, and
common law rights in, IMMUNEX.
Amgen continues to use the trade name Immunex
Corporation on the ENBREL product – a medication that has
been distributed to more than 250,000 patients worldwide.9
STANDING AND PRIORITY
Initially, we find that based upon the submission into
the record of its federal trademark registration, opposer
has demonstrated standing in this case. Further, in view of
that registration, priority is not in issue. King Candy
Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).

9 “Over 250,000 patients worldwide have used ENBREL, and the
IMMUNEX mark and name has appeared on all packaging and literature
for that product.” ¶ 16, Testimony Declaration of Mark Snyder.
Opposition No. 91153080
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LIKELIHOOD OF CONFUSION
We turn then to a consideration of whether opposer has
proven a likelihood of confusion. Our determination under
Section 2(d) of the Trademark Act is based upon an analysis
of all of the probative facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The Goods
We turn first to the du Pont factor focusing on the
similarity and nature of the goods as described in
applicant’s application compared with the goods listed in
opposer’s registration. The identifications of goods in
both opposer’s registration and the opposed application
refer to “immune” and “autoimmune.” However, we must look
beyond this mere use of similar language and examine the
respective identifications carefully in their entireties to
determine whether the goods of the parties are similar.
Opposition No. 91153080
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Applicant’s goods, as identified in its application,
are “vaccines composed of killed bacterial bodies and their
lystates and probiotic bactieria for use in stimulating the
immune system.” We view applicant’s identification of goods
as two distinctly different items, namely ! “vaccines
composed of killed bacterial bodies and their lystates” and
" “probiotic bacteria for use in stimulating the immune
system.” This interpretation is supported by applicant’s
supplemental responses to opposer’s interrogatories. In
responses prepared by applicant on October 29, 2003, to
questions about applicant’s intended products, the timing of
affected products, anticipated channels of trade, intended
classes and types of consumers, etc., applicant said that
“ … the mark has not been used and is [sic] currently in
use, but anticipate its use in dietary supplements and
immunostimulants in the future.” We view applicant’s
response as indicating that its probiotic bacteria product
is different from its ethical pharmaceutical in the nature
of a vaccine (i.e., the first phrase of its identification
of goods, supra).
As for opposer’s goods, much of the focus of opposer’s
evidence has been on opposer’s “pharmaceuticals for the
treatment of autoimmune diseases,” such as its ENBREL drug.
However, inasmuch as any comparison of the goods must be
Opposition No. 91153080
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made on the basis of how the parties’ goods are identified
in their respective registration and application, we note
that opposer’s goods include a much broader range of medical
preparations than this narrow formulation, including
“pharmaceuticals for the treatment of … healing wounds and
cancer.” See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); and Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987)
[the question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-à-vis
the goods and/or services recited in an opposer’s
registration, rather than what the evidence shows the goods
and/or services to be].
As noted, applicant’s probiotic bacteria10 are intended
to be sold in the medium of a dietary supplement. Such
products may be sold over-the-counter to members of the
general public. Further, whether the bacteria are sold as
ingredients of a dietary supplement, or as the dietary
supplement itself, ultimate consumers would encounter the

10 We take judicial notice of the definition of the term,
probiotic: “Probiotic noun Definition: a preparation (as a
dietary supplement) containing live bacteria (as lactobacilli)
that is taken orally to restore beneficial bacteria to the body.”
MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY (Eleventh ed. 2003).
Opposition No. 91153080
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trademark, either for the product or as an ingredient in the
product. The ultimate users of “pharmaceuticals for the
treatment of autoimmune diseases, healing wounds and cancer”
would also include ordinary consumers. Even if the
pharmaceuticals were sold by prescription, the trademark is
likely to be encountered by these same ultimate users. In
this connection, we note that:
… the parties’ drugs, as identified, also
could be dispensed outside of the hospital
setting, such that the ultimate users will
have direct contact with them. As stated in
KOS Pharmaceuticals Inc., [369 F.3d 700, 70
USPQ2d 1874 (3rd Cir. 2004)], citing
Checkpoint Sys., Inc. v. Check Point Software
Techs., Inc., 269 F.3d 270, 285 [60 USPQ2d
1609] (3rd Cir. 2001), “[w]here both
professionals and the general public are
relevant consumers, ‘the standard of care to
be exercised … will be equal to that of the
least sophisticated consumer in the class.’”
Thus, we must be sensitive to the fact that
patients from the general public will not
exercise the degree of care exhibited by
medical professionals. As also stated by the
Third Circuit in KOS Pharmaceuticals Inc.,
id.: “While doctors and pharmacists play a
gate-keeping role between patients and
prescription drugs, they are not the ultimate
consumers. Patients are. Courts have noted
that drugs are increasingly marketed directly
to potential patients through, for example,
‘ask-your-doctor-about-Brand-X’ style
advertising.”

Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306
(TTAB 2004) [respondent’s ONCASE mark for “therapeutic
compositions containing reagents for in vivo anticancer use”
Opposition No. 91153080
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is likely to cause confusion with petitioner’s ONCONASE mark
for “pharmaceuticals, namely, anticancer drugs”].
Accordingly, the goods of the opposer and applicant, as
identified in their respective registration and application,
could include goods directed to members of the general
public, as well as to professionals, such as physicians and
pharmacists. Because the goods are broadly identified, the
identifications could include goods that address conditions
that may affect the same individuals.
It is well settled, in this regard, that goods need not
be identical or even competitive in nature in order to
support a finding of likelihood of confusion. Instead, it is
sufficient that the goods are related in some manner and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks employed in connection therewith, to the mistaken
belief that they originate from or are in some way associated
with the same producer or provider. See Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978); and In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
As noted above, because the respective identifications
of goods could include products that address conditions that
may affect the same individuals, and hence might well be
Opposition No. 91153080
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purchased and used by the same individuals, we conclude that
the goods of the parties, as identified, are related.
Trade channels
In determining the similarity or dissimilarity of
established, likely-to-continue trade channels, we must
consider how the parties’ goods are identified in their
respective registration and application. Neither has any
restrictions as to the channels of trade. In the absence of
any specification that opposer’s listed goods are sold by
prescription, we must assume, at the very least, that the
pharmaceuticals for the treatment of healing wounds would be
sold over-the-counter. We must presume that such products
could be found in the same channels of trade as would
applicant’s over-the-counter, nutraceutical/dietary
supplement products, especially in drug stores. Hence, we
find that the channels of trade are the same or overlapping.
Conditions of sale
As to the conditions under which and buyers to whom
sales are made, in the event both parties would be marketing
over-the-counter goods through the same channels of trade,
there would be an overlap in consumers. Although the
parties’ products are for general health purposes, items
such as wound care products and dietary supplements are
Opposition No. 91153080
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rather inexpensive items, and due to their nature, they are
not necessarily going to be purchased using a great degree
of deliberation or care.
The Marks
We turn next to the du Pont factor focusing on the
similarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
Applicant’s mark is IMMUNO-RX and opposer’s mark is
IMMUNEX. As to connotation, both marks suggest a
connection with the immune system. There are also
similarities in the appearance and pronunciation of the two
marks in that both begin with “IMMUN," followed by a vowel,
and end with the letter “X.” While there are some
differences in the middle of the marks, and in particular,
applicant’s mark contains a hyphen, these differences are
not sufficient to distinguish the marks.
Under actual market conditions, consumers generally do
not have the luxury of making side-by-side comparisons. The
proper test in determining likelihood of confusion is not a
side-by-side comparison of the marks, but rather, the
decision must be based on the similarity of the general
overall commercial impressions engendered by the involved
Opposition No. 91153080
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marks. See Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Thus, although there are some differences in the marks,
we find that the marks are similar in their entireties as to
appearance, sound, connotation and commercial impression.
The renown of the IMMUNEX mark
The record shows that the major trademark asset of
Immunex Corporation over the years has been the intellectual
property right associated with the ENBREL etanercept
pharmaceutical. The research, promotional and sales figures
that have been made a part of this record are primarily
directed to this product.
As to the IMMUNEX mark, throughout this litigation
applicant has taken the position that Immunex Corporation
abandoned its rights in the IMMUNEX mark in July 2002 – at
the time Amgen acquired Immunex Corporation. However, in
the absence of a counterclaim or a cancellation proceeding,
applicant cannot attack opposer’s registration, and we must
accord opposer’s registration all the presumptions we would
accord to any duly registered mark.
Moreover, on the merits of this claim, we find that
this was not the case. Rather, the record shows that
Immunex Corporation continues to be a wholly-owned
Opposition No. 91153080
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subsidiary of Amgen, is responsible for manufacturing ENBREL,
and owns the subsisting trademark registration for, and
common law rights in, IMMUNEX.
According to opposer’s testimony, Amgen continues to
use “Immunex Corporation” in connection with the ENBREL
product. However, the record contains no copies of any
labels showing how prominently the word IMMUNEX appears on
the ENBREL label. Therefore, we cannot determine whether it
would make an impression on consumers. We also note that
media references since 2002 refer only to the name, “Immunex
Corporation,” in connection with Amgen’s historical purchase
in July 2002 of the company that makes the ENBREL
pharmaceutical – never to IMMUNEX as a product mark.
In spite of this record, opposer argues that its
IMMUNEX trademark has achieved “widespread recognition and
fame in the field of pharmaceuticals and biotechnology.” We
disagree. To the extent opposer has shown the expenditure
of substantial sums of money on research and development and
marketing efforts, leading to a substantial sales volume of
products (especially ENBREL etanercept), it is not clear how
this expenditure, and consequent sales, supports a claim of
widespread recognition for its IMMUNEX mark. Since Amgen’s
acquisition of Immunex Corporation in 2002, it is unclear
Opposition No. 91153080
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that even the financial world continues to place
significance on the name IMMUNEX. In short, we find on this
record that opposer has failed to establish that opposer’s
mark has achieved widespread recognition.
Accordingly, while we must accord this registered mark
all of the statutory presumptions that attach to opposer’s
subsisting registration, we find the record deficient in
making the case that IMMUNEX is a well-known mark. The
factor of fame is therefore neutral.
Absence of actual confusion
While the record contains no instances of actual
confusion, this is certainly not surprising in a case such
as this. We note that applicant’s application is still an
intent-to-use application, and there is absolutely no
evidence that applicant has begun using its mark.
Therefore, as far as we can tell from this record, there has
been no opportunity for confusion to occur.
Resolving doubt
It has often been stated that any doubts about
likelihood of confusion under § 2(d) of the Act must be
resolved against applicant as the newcomer. In re
Pneumatiques, Caoutchouc Mfr., 487 F.2d 918, 179 USPQ 729
Opposition No. 91153080
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(CCPA 1973). We note that when marks are used on
pharmaceutical preparations and confusion can lead to
serious consequences, it is even more important to avoid
that which will cause such confusion. See Blansett
Pharmacal Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d
1473 (TTAB 1992); and American Home Products Corporation v.
USV Pharmaceutical Corporation, 190 USPQ 357 (TTAB 1976).
Thus, in this case, which involves pharmaceutical and/or
nutraceutical products, there is an even stronger reason for
resolving doubt in this manner.
Conclusion on Likelihood of Confusion
Accordingly, we find that applicant’s use of the mark
IMMUNO-RX for, inter alia, probiotic bacteria for use in
stimulating the immune system, is likely to cause confusion
with opposer’s mark IMMUNEX, registered for pharmaceuticals
for the treatment of autoimmune diseases, healing wounds,
and cancer.
In making our decision herein, we have given no weight
to opposer’s arguments regarding the alleged fame of the
IMMUNEX mark. Although opposer has shown significant sales
and advertising of its ENBREL product, no such evidence has
been submitted for the IMMUNEX mark. Because of the manner
in which the mark ENBREL has been used and promoted, it is,
Opposition No. 91153080
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as we stated previously, the term that enjoys the primary
recognition, and the evidence of record does not persuade us
that this same recognition would apply to IMMUNEX.
Dilution
The second ground asserted by opposer is that of
dilution. Section 43(c)(1) of the Trademark Act, 15 U.S.C.
§ 1145, provides that “[t]he owner of a famous mark shall be
entitled, subject to the principles of equity and upon such
terms as the court deems reasonable, to an injunction
against another person’s commercial use in commerce of a
mark or trade name, if such use begins after the mark has
become famous and causes dilution of the distinctive quality
of the mark, and to obtain such other relief as is provided
in this subsection.” Section 13(a) of the Act, 15 U.S.C.
§ 1063(a), makes this ground available for opposition
proceedings. As set out in the Act itself, and as
interpreted by case law, a threshold requirement for proving
a dilution claim under the Federal Trademark Dilution Act of
1995 (FTDA) is the fame of opposer’s mark. See Toro Co. v.
ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001).
Well-known mark status, or fame, for likelihood of
confusion purposes, and fame for dilution purposes are
distinct concepts. Palm Bay Imports Inc. v. Veuve Clicquot
Opposition No. 91153080
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Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). Dilution fame requires that the mark
is a member of a “select class” of marks. Establishing fame
for FTDA purposes presents a much higher burden on applicant
than simply showing general advertising and sales figures
and unsupported assertions of fame. Palm Bay Imports Inc.
v. Veuve Clicquot, supra, at 1694; and Toro Co. v. ToroHead
Inc., supra at 1179 – 84.
However, we have already found that opposer has failed
to prove that IMMUNEX is a well-known mark in our likelihood
of confusion analysis. Therefore, given the stricter
standard required to prove fame in order to obtain
protection under the dilution statute, it is clear that
opposer has not proven that IMMUNEX is famous for dilution
purposes during any relevant time period. See Blue Man
Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1822 (TTAB
2005). Accordingly, we find that opposer has failed to
establish its claim of dilution.
Decision: The opposition is dismissed on the ground of
dilution, but sustained on the ground of likelihood of
confusion.