Isolate, Inc.v.Genzyme Corp.

Trademark Trial and Appeal Board

Jul 28, 1998

No. 91097778re (T.T.A.B. Jul. 28, 1998)

Hearing: Paper No. 23
June 5, 1997 JQ
7/28/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Isolab, Inc.
v.
Genzyme Corporation
_____
Request for Reconsideration
_____
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:
The Board, in a decision dated April 14, 1998,
sustained the opposition and refused registration to
applicant. More specifically, the Board determined that
opposer’s mark LDL-DIRECT is neither deceptively
misdescriptive nor deceptive, and that applicant’s mark
DIRECT LDL, when applied to applicant’s goods, so resembles
Opposition No. 97,778
2
opposer’s previously used mark, as applied to opposer’s
goods, as to be likely to cause confusion.
Applicant has filed a request for reconsideration, and
opposer has filed a response thereto.
The request for reconsideration is not well taken
essentially for the reasons concisely set out by opposer in
its responsive brief.
In reaching our decision, we considered, of course, the
entirety of Mr. Hazlewood’s testimony, including his
statements regarding the use of opposer’s mark LDL-DIRECT
with opposer’s company name. However, as pointed out by
opposer, “the LDL-DIRECT trademark represents a separate
source of the product, and there is no requirement that
Opposer always use its house mark with its LDL-DIRECT mark.”
(brief, pp. 1-2) Indeed, one product can bear more than one
trademark, and here the mark LDL-DIRECT, as actually used,
would be recognized in and of itself as an indication of
origin for opposer’s goods. See, e.g.: Procter & Gamble
Co. v. Keystone Automotive Warehouse Inc., 191 USPQ 468
(TTAB 1976); and Textron, Inc. v. Cardinal Engineering
Corp., 164 USPQ 397 (TTAB 1969).
Regarding applicant’s allegations of misdescriptiveness
and deceptiveness, the Board, while expressing a doubt as to
whether the issues were “tried,” nevertheless took up these
claims on the merits. And, upon further review, the Board
Opposition No. 97,778
3
stands by its earlier assessment that applicant’s proofs
fall far short.
Decision: The request for reconsideration is denied,
and the decision dated April 14, 1998 stands.
R. L. Simms
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board