Isolab, Inc.v.Genzyme Corp.

Trademark Trial and Appeal Board

Apr 14, 1998

No. 91097778 (T.T.A.B. Apr. 14, 1998)

Hearing: Paper No. 20
June 5, 1997 JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 4/14/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Isolab, Inc.
v.
Genzyme Corporation
_____
Opposition No. 97,778
to application Serial No. 74/535,956
filed on June 8, 1994
_____
Gail L. Morrissey and Roger Gilcrest of Standley & Gilcrest
for Isolab, Inc.
William G. Gosz and F. Brad Salcedo for Genzyme Corporation.
______
Before Simms, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Genzyme Corporation to
register the mark DIRECT LDL (“LDL” disclaimed) for
“diagnostic reagents for the immunoseparation of cholesterol
components in vitro.”1
Registration has been opposed by Isolab, Inc. on the
ground that applicant’s mark, when applied to applicant’s
Opposition No. 97,778
2
goods, so resembles opposer’s previously used mark LDL-
DIRECT for blood testing equipment and reagents, including
in vitro cholesterol test kits, as to be likely to cause
confusion under Section 2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party; applicant’s answers to
opposer’s first set of interrogatories and a copy of an
Office action issued in opposer’s application Serial No.
74/561,450, introduced by way of opposer’s notice of
reliance; and opposer’s responses to certain of applicant’s
interrogatories, and excerpts from printed publications made
of record in applicant’s notice of reliance. The parties
filed stipulated protective agreements covering some of the
trial evidence. Both parties filed briefs on the case, and
both were represented by counsel at an oral hearing held
before the Board.
At the outset, we need to consider a procedural point
regarding applicant’s assertion that opposer’s mark is
deceptively misdescriptive under Section 2(e)(1) or
deceptive under Section 2(a). These issues were not pleaded
in applicant’s answer nor any amended answer, but rather

1 Application Serial No. 74/535,956, filed June 8, 1994, alleging
Opposition No. 97,778
3
were raised for the first (and only) time in applicant’s
final brief on the case. Although we cannot condone
applicant’s failure to amend its pleading to put opposer on
adequate notice that opposer’s proprietary rights in its
mark were under attack, opposer, in its reply brief, has not
raised any objection to the interjection of these issues at
this late date. Nor was any objection raised by opposer at
the oral hearing. Opposer, in its reply brief and at the
oral hearing, addressed the merits of the newly raised
claims. Although we have doubts about whether the issues
were “tried” as contemplated under Fed. R. Civ. P. 15(b), we
will take up, given opposer’s amenability to have the issues
considered at final hearing, the merits of applicant’s
allegations as if the issues were tried by the parties.
Opposer, according to the testimony of Loren Hazelwood,
opposer’s vice president of operations, is engaged in the
sale of products for biomedical research and diagnostic
testing by clinical laboratories. The primary customers for
opposer’s products sold under the mark LDL-DIRECT are
clinical labs, reference labs and research scientists. The
products are promoted by direct mailings, catalogs, product
brochures, newsletters and appearances at trade shows.
Applicant, according to the testimony of Jerome Casey,
applicant’s vice president--sales and marketing, sells

a bona fide intention to use the mark in commerce.
Opposition No. 97,778
4
diagnostic products, including an in vitro diagnostic
product for the quantitative determination of LDL (low
density lipoproteins) cholesterol. This cholesterol is the
so-called “bad” cholesterol (as opposed to HDL cholesterol,
high density lipoproteins, the so-called “good”
cholesterol). The product sold by applicant under the mark
DIRECT LDL contains reagents which, when used by a clinician
to treat a serum specimen taken from a patient, produces a
sample containing only LDL cholesterol. Purchasers of
applicant’s product are typically clinical and hospital labs
which are reporting out cholesterol values to ordering
physicians. The product is promoted through direct
mailings, catalogs and appearances at trade shows.
We first turn our attention to applicant’s attacks on
opposer’s pleaded mark since these allegations have a direct
bearing on opposer’s proprietary rights in the mark which
opposer needs to establish in order to prevail on its
likelihood of confusion claim. Towers v. Advent Software,
Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990); and
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40 (CCPA 1981).
It is clear from applicant’s late interjection of the
issues of deceptive misdescriptiveness and deceptiveness
that they are subordinate to the main issue of likelihood of
confusion. More significantly, the record clearly
Opposition No. 97,778
5
establishes that opposer’s mark does not suffer from either
of the infirmities alleged by applicant.
The essence of applicant’s arguments is that opposer’s
product is used for separating the alpha and beta fractions
of cholesterol in human serum, and that this product is not
used to obtain or measure LDL cholesterol. Further,
according to applicant, purchasers are likely to believe
that opposer’s product has something to do with LDL
cholesterol. With regard to deceptiveness, applicant
contends that due to the need in the marketplace for a
product that measures LDL cholesterol, purchasers will be
affected in their purchasing decision by opposer’s
misdescription of its product as relating in some respect to
LDL cholesterol.
The test for deceptive misdescriptiveness involves two
questions: (1)is the term misdescriptive of the character,
quality, function, composition or use of the goods?; and
(2)if so, are prospective purchasers likely to believe that
the misdescription actually describes the goods? A third
question, used to distinguish between terms that are
deceptively misdescriptive under Section 2(e)(1) and terms
that are deceptive under Section 2(a), is whether the
midescription is likely to affect the decision to purchase
the goods. In re Budge Manufacturing Co. Inc., 857 F.2d
773, 8 USPQ2d 1259 (Fed. Cir. 1988).
Opposition No. 97,778
6
We see no reason to go into great detail about the
clear lack of merit of applicant’s claims. According to Mr.
Hazelwood, opposer’s product is used in the separation of
the alpha and beta fractions of cholesterol in human serum,
and the beta fraction is considered an LDL factor. (see
also Hazelwood dep., ex. no. 9) Thus, opposer’s product, in
point of fact, has something to do with LDL cholesterol. As
such, opposer’s LDL-DIRECT mark is not misdescriptive of the
goods, and applicant’s claims must fail. Moreover, as noted
above, we cannot overlook the fact that these claims were
initially raised at a manifestly late juncture of the
proceeding, almost as throwaway claims, with applicant
pointing to a mere few pages of testimony as the proof for
its claim. Simply put, the proof falls far short.
We next turn to the priority and likelihood of
confusion claim under Section 2(d). There is no issue of
priority of use in this case. Applicant does not dispute,
and the record establishes, that opposer’s use of LDL-DIRECT
predates applicant’s first use of its mark DIRECT LDL.2
Our determination under Section 2(d) of the Act is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the

2 Even if we were convinced by applicant’s deceptive
misdescriptiveness claim, the record establishes that opposer’s
mark had acquired distinctiveness at a time prior to the earliest
date upon which applicant is entitled to rely in this proceeding.
Opposition No. 97,778
7
likelihood of confusion issue. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The
factors deemed pertinent in the proceeding now before us are
discussed below.
With respect to the marks, applicant argues in vain
that the dominant portion of its mark is “DIRECT” whereas
the dominant portion of opposer’s mark is “LDL.” The marks,
when considered in their entireties as applied to the goods,
engender substantially similar overall commercial
impressions. The connotation of opposer’s mark is virtually
identical to the connotation of applicant’s mark. The only
real difference between the marks is that the two words
comprising the marks are transposed. This difference is
minor, as it relates to the overall commercial impressions
conveyed by these marks. In re Wines Society of America
Inc., 12 USPQ2d 1139 (TTAB 1989), and Bank of America
National Trust and Savings Association v. American Bank of
St. Joseph, 201 USPQ 842 (TTAB 1978)[confusion is likely
where the sole significant difference between marks applied
to similar goods or services is the transposition of the
words which comprise those marks and where the transposition
of words does not change the overall commercial impression].
We next turn to consider the goods sold under the
marks. We start with the premise that the goods need not be
identical or even competitive to support a holding of
Opposition No. 97,778
8
likelihood of confusion. It is sufficient that the goods
are so related or that conditions surrounding their
marketing are such that they are encountered by the same
persons who, because of the relatedness of the goods and the
similarities between the marks, would believe mistakenly
that the goods originate from or are in some way associated
with the same producer. Hercules Inc. v. National Starch
and Chemical Corp., 223 USPQ 1244, 1247 (TTAB 1984).
In the present case, applicant’s brief is silent on
this du Pont factor. The record establishes that opposer’s
in vitro blood testing product is used to determine the beta
fraction, which is a component part of LDL cholesterol. The
beta fraction refers to chylomicrons, very low density
lipoproteins and low density lipoproteins cholesterol.
Applicant’s product, according to Mr. Casey, offers users a
method to directly measure LDL as a discrete component of
cholesterol. In sum, the goods are substantially similar in
their nature and function in that both are used to obtain
LDL cholesterol values, albeit in different manners.
Further, as shown by the record, the products of the parties
move in the same channels of trade and are purchased by the
same types of laboratories.
The parties agree that these common purchasers for
their products are well informed and are sophisticated at
making purchasing decisions. Nonetheless, this factor is
Opposition No. 97,778
9
not determinative inasmuch as even sophisticated purchasers
are not immune from confusion as to source. In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983). We find this to be
especially the situation in cases such as the present one
where the marks and the goods sold thereunder are
substantially similar.
In reaching our conclusion, we acknowledge that neither
party is aware of any instances of actual confusion between
the marks during the three years of contemporaneous use.
Although this factor weighs in applicant’s favor, evidence
of actual confusion, as often stated, is difficult to
obtain. In any event, such evidence is unnecessary since
the test under Section 2(d) is not actual confusion but
likelihood of confusion.
We conclude that purchasers familiar with opposer’s
blood testing product sold under its mark LDL-DIRECT would
be likely to believe, upon encountering applicant’s mark
DIRECT LDL for diagnostic reagents for the immunoseparation
of cholesterol components in vitro, that the respective
goods originated with or were somehow associated with or
sponsored by the same entity.
Opposition No. 97,778
10
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board