Inhale Therapeutic Systems, Inc.

Trademark Trial and Appeal Board

Feb 5, 2003

No. 76040782 (T.T.A.B. Feb. 5, 2003)

Paper No. 9
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Inhale Therapeutic Systems, Inc.
________
Serial No. 76/040,782
_______
Bruce W. Schwab and Mary L. Shapiro of Townsend and
Townsend and Crew, LLP for Inhale Therapeutic Systems, Inc.
Verna Beth Ririe, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hanak, Hohein and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Inhale Therapeutic Systems, Inc. has filed an
application to register SOLO as a trademark for goods in
Class 10 identified as "medical apparatus in the nature of
a hand-held unit for aerosol drug delivery to the deep lung
of large and small molecule drugs as fine, dry particles."1
1 Serial No. 76/040,782, filed May 3, 2000, based on applicant's
allegation of a bona fide intention to use the mark on or in
connection with the goods in commerce.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76/040,782
2
The trademark examining attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d). The basis for the refusal is that the
mark SOLO has already been registered for “positive airway
breathing devices,” also in Class 102, so that when
applicant's mark is used on or in connection with the
identified goods, it would be likely to cause confusion or
mistake by consumers, or to deceive consumers as to the
source of applicant's and registrant's respective goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs; an oral
hearing was not requested. We affirm the refusal.
Our determination under Section 2(d) is based on
analysis of all of the probative facts in evidence that are
relevant to factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In particular, in
this case, because the respective marks are identical3, we
2 Registration No. 2,175,252, issued July 21, 1998, to
Respironics, Inc.
3 The marks are identical in sound and appearance and are likely
to create the same commercial impression on consumers. In fact,
in arguing that SOLO “is highly suggestive and, hence, warrants a
more limited scope of protection,” applicant essentially asserts
that the marks share the same commercial impression. The
identical nature of the marks is a fact that "weighs heavily
against applicant." In re Martin's Famous Pastry Shoppe, Inc.,
748 F2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Ser No. 76/040,782
3
focus on the cumulative similarities or differences in the
the goods and the classes of consumers of the involved
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn, first, to the goods. When marks are the
same, or even nearly so, "it is only necessary that there
be a viable relationship between the goods or services in
order to support a holding of likelihood of confusion." In
re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983). The likelihood of confusion analysis, in
regard to the relatedness of applicant's and registrant's
goods, must be determined on the basis of the goods as they
are identified in the application and registration.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Since neither
identification is restricted in any way as to channels of
trade or classes of consumers, the Board must assume that
the goods could be offered through all normal channels of
trade and to the usual classes of consumers for such goods.
Id.
Moreover, apart from the presumptions we must make
based on the identifications, there are numerous items in
the record which demonstrate that goods such as applicant’s
and registrant’s can emanate from the same source and have
Ser No. 76/040,782
4
been distributed in the same channels of trade. In regard
to the goods being of the type that would emanate from the
same source, see Registration Nos. 2,085,547 and 1,745,662,
attached to the examining attorney’s final refusal of
registration.4 See also, the reprints of registrant’s web
pages attached to the first office action, which show that
registrant, besides being the source of its identified
goods, is also a source of various products for “taking
aerosol medication.” In regard to the involved goods being
the type that would move in the same channels of trade, see
the Apria Healthcare web page (www.apria.com), as well as
the Medque and OUCmedical web pages (www.medque.com and
www.oucmedical.com), all included with the final refusal of
registration; and the photocopies from the catalog of the
4 The ‘547 registration, for the mark HELPING THE WORLD BREATHE
EASIER, includes goods identified as “…continuous positive airway
pressure (CPAP) respiratory therapy apparatus, medical
aspirators, and medical nebulizers.” The ‘662 registration, for
the mark DEVILBISS, includes goods identified as “…air driven
medication nebulizers… medication atomizers… and continuous
positive airway pressure (CPAP) respiratory therapy systems….”
Although these registrations are not evidence that the marks
shown therein are in use or that the public is familiar with
them, they nevertheless have some probative value to the extent
that they serve to suggest that the goods listed therein (which
are the same types of goods involved here) are of a kind which
may emanate from a single source. In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209, 1211 (TTAB 1999). See also, In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993), and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 at n. 6 (TTAB 1988).
Ser No. 76/040,782
5
St. Louis Medical Supply company, also included with the
final refusal.
Applicant argues that its products are not a simple
nebulizer or other previously available means for
delivering medication by aerosol spray or through
inhalation therapy, i.e., “are not in any sense a
conventional inhaler” but “are complex devices that
facilitate the delivery of advanced pharmaceuticals, such
as insulin, through inhalation rather than by injection,
transdermal or oral methods of delivery.” Brief, p. 4. We
note, however, that even if this is so, applicant’s
identification of goods must be read to cover nebulizers
and existing inhalation therapy products, as well as its
apparently newer “complex devices.”
In regard to classes of consumers, there are no
restrictions in either identification, so we must assume
that the respective products can be sold to, among others,
distributors of health-care products, health care providers
and at retail, i.e., that each party may market its product
directly to end users.5 Even if we restrict our focus to
5 Neither identification contains a distribution restriction,
e.g., a restriction indicating that the product is distributed
solely by prescription, and so we must be equally concerned with
“over-the-counter” distribution directly to retail customers.
See Pennwalt Corporation v. Center Laboratories, Inc., 524 F.2d
235, 187 USPQ 599, 601 (CCPA 1975), wherein the Court was equally
concerned with appellant’s over-the-counter drugs and the fact
Ser No. 76/040,782
6
sales to distributors of health-care products, or to health
care providers who would then decide what products are
appropriate for individual patients, we believe confusion
as to source or sponsorship is likely when the marks are
identical and the respective goods would be expected to
emanate from the same source. Further, end users of the
respective products would be even more prone to confusion,
as they would not necessarily be privy to methods of
distribution of health-care products.
Applicant argues that registrant’s goods are not
delivery systems for medication and are used only by
individuals suffering from sleep apnea. In addition,
applicant maintains that its goods are not directed to
those in need of any sort of respiratory therapy product at
all but, rather, are directed to those who can benefit from
rapid infusion of medication. Specifically, applicant
notes that its product is now being used for delivery of
insulin to treat diabetes, interferon-beta to treat a form
of multiple sclerosis, and alpha-1 proteinase inhibitor to
treat emphysema, and that there are plans for using the
product to deliver other drugs, for other conditions.
that prescription drugs would be encompassed by the
identification in its registration. See also, Miles
Laboratories, Inc. v. Whorton Pharmacal Company, 199 USPQ 758,
760 (TTAB 1978), and Meyer Laboratories, Inc. v. Diurcap
Corporation, 163 USPQ 595, 596-97 (TTAB 1969).
Ser No. 76/040,782
7
Brief, p. 4. Further, applicant argues that these are the
types of products that would only be utilized following
consultation with health-care providers.
Even if we were to consider the respective products as
being used only in the manner argued by applicant, there is
nothing in the record to suggest that individuals suffering
from sleep apnea, or any other condition that might require
use of a product such as registrant’s, might not also be
suffering from diabetes, or multiple sclerosis, or
emphysema. Further, even if we assume that an individual
suffering from both sleep apnea (and using registrant’s
product) and one of the other diseases which can be treated
by medication delivered through applicant’s product would
only have both products prescribed or recommended by a
health-care provider, we cannot assume first, that such
provider would surely know the products emanated from
unrelated entities and, second, would take the time to
explain that the products had different sources, despite
their identical marks.
Considering the identical nature of the marks, the
relatedness of the goods in terms of their likelihood to
emanate from the same source and be distributed in the same
channels of trade, and the presumptive overlap in classes
of consumers, we find that confusion is likely. Finally,
Ser No. 76/040,782
8
if we had any doubt on the issue, we would have to resolve
that doubt in favor of the prior user and registrant.
Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22
USPQ2d 1453, 1458 (Fed. Cir. 1992).
Decision: The refusal of registration is affirmed.