McNeil-PPC, Inc.v.Walgreen Co.

Trademark Trial and Appeal Board

Jan 22, 2013

No. 91184978 (T.T.A.B. Jan. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

McNeil-PPC, Inc.
v.
Walgreen Co.
_____

Opposition No. 91184978
to application Serial No. 76682070
filed on September 19, 2007
_____

James D. Weinberger, Laura Popp-Rosenberg and Giselle C. Woo of Fross Zelnick
Lehrman & Zissu PC for McNeil-PPC, Inc.

Mark J. Liss, Caroline L. Stevens and Michelle L. Calkins of Leydig Voit & Mayer
Ltd. for Walgreen Co.
_____

Before Zervas, Kuhlke and Mermelstein, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Walgreen Co., seeks registration on the Principal Register of the
mark WAL-ZYR in standard characters for goods identified as “pharmaceuticals,
namely, allergy medications” in International Class 5.1

1 Application Serial No. 76682070 filed on September 19, 2007, based on an allegation of a
bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1(b).
Opposition No. 91184978

2

Opposer, McNeil-PC, Inc., has opposed registration of applicant’s mark on the
ground that, as used with applicant’s goods, the mark so resembles the previously
used mark ZYRTEC for allergy medications as to be “likely to cause confusion,
cause mistake or deceive consumers and cause them to believe that the goods
offered under Applicant’s WAL-ZYR mark emanate from, or are sponsored by,
manufactured by, endorsed by or otherwise connected with Opposer, in violation of
Lanham Act Section 2(d), 15 U.S.C. § 1052(d).” Not. of Opp. ¶ 25. In support of this
claim, opposer alleges, inter alia, that UCB Pharma, S.A. owns a registration for the
mark ZYRTEC, that a prior licensee, opposer’s predecessor, used the mark in
connection with allergy medications since 1996 on a prescription basis and opposer
is currently the exclusive licensee in the United States to use the mark ZYRTEC in
connection with allergy medications, now offered over the counter (OTC).
In addition, opposer asserts a claim of dilution in that “use of WAL-ZYR by
Applicant will cause dilution of the distinctive quality of the famous ZYRTEC mark,
in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c)(1).” Not. of Opp.
¶ 30.
Applicant filed an answer by which it admitted that it markets its product
next to or in close proximity to opposer’s product on applicant’s shelves, and that it
sold ZYRTEC in its retail pharmacies since about when the product was first
available. Applicant otherwise denied the remaining salient allegations.2

2 Applicant’s asserted affirmative defense based on a family of marks, is not a recognized
defense.
Opposition No. 91184978

3

EVIDENTIARY OBJECTIONS/RECORD
We begin by addressing the parties’ respective evidentiary objections.
Opposer seeks to exclude the testimony of Dr. Alex Simonson, applicant’s survey
expert, and accompanying report because of several alleged flaws in the survey.
Specifically, opposer asserts that the survey: (1) did not capture the correct
universe of respondents in that only 15% of the survey respondents were women in
the 35-49 age range with no indication as to whether they have children, even
though that is “the typical over-the-counter allergy medication purchaser”;3 (2)
used an inappropriate control because the control mark WAL-ZEE “emphasizes ‘Z,’
which is a portion of both the ZYRTEC and the WAL-ZYR mark, and could itself be
a source of confusion, including since advertising for the Zyrtec product has
emphasized the ‘Z’ portion of the mark”;4 (3) only tested for confusion as to which
company “makes or puts out” the product and as to confusion based on some
undefined “affiliation or association” but did not test for all types of likely confusion
present in the case (e.g., confusion of the marks, confusion as to source of active
ingredient);5 (4) was administered improperly inasmuch as it was not known
whether interviewers were affirmatively instructed not to probe or exhaust possible
responses and at least in one case the respondent incorrectly recorded a control cell

3 Opp. Stmt of Objections p. 2.

4 Id. at 3.

5 Id. at 5.

Opposition No. 91184978

4

as a test cell response;6 (5) may have been conducted near a Walgreens store (it was
not explicitly stated whether or not a Walgreens was nearby) which could skew the
results inasmuch the universe of respondents would consist of a high number of
Walgreens customers; (6) included confusing compound questions and open-ended
questions without clear instructions for follow-up; (7) did not include unredacted
certification pages making it impossible to know whether the interview certification
process was completed; (8) had incomplete verification of respondents (only 66%);
and (9) was inaccurately analyzed because it does not show which responses were
counted as confused (i.e., the expert did not show his work), and the responses were
analyzed inconsistently.
Applicant argues that opposer does not challenge Dr. Simonson’s
qualifications, and the survey and report stand “unrebutted by anyone qualified or
educated in the field” inasmuch as opposer did not retain a professional to either
conduct their own survey or critique applicant’s survey.7
Opposer’s objections address the weight to be given the survey and do not
merit exclusion of the survey. In view thereof, we find the survey admissible, and
its probative value is discussed infra.
In addition, opposer objects to certain portions of Mr. Tompkins’ testimonial
deposition and certain exhibits. Specifically, Exhibit 19 is a collection of circular
advertising inserts. Opposer objects that Mr. Tompkins did not properly

6 Id.

7 App. Resp. to Objections pp. 2-3.

Opposition No. 91184978

5

authenticate the pages because he did not state for certain that they were true and
correct copies but rather only that he believed them to be so. However, as applicant
states because opposer did not raise this objection at the deposition is it waived.
Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1070 (TTAB 2011).
Further, opposer objects that Mr. Tompkins did not compile the reports of
customer comments in Exhibits 23-25 and does not know if they represent every
record with comments on WAL-ZYR and whether whoever did create the
compilation searched for comments on ZYRTEC or only WAL-ZYR. However, again
these objections, which really to go authentication, were not made during the
deposition and are considered waived. As to the problems pointed out by opposer,
we have taken them into account in evaluating the probative value of the
compilations.
Applicant objects to the declaration of Giselle Woo and accompanying
exhibits, which consist of brief excerpts of the results from a search of the Westlaw
database for references to the mark ZYRTEC in U.S. media. While we agree that
their probative value is limited by the fact that they are simply search result
excerpts, In re Bayer Aktiengesellschaft, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007),
we do not strike the declaration or the exhibits from the record inasmuch as they
were properly made of record. Gen. Motors Corp. v. Aristide & Co., 87 USPQ2d
1179, 1183 (TTAB 2008).
Opposition No. 91184978

6

With regard to applicant’s renewed objections pertaining to documents
produced after the close of discovery, that objection was already denied by Board
order on May 6, 2011, and we do not disturb that order.
The record consists of: (1) the subject application file and pleadings; (2)
testimony deposition with exhibits of Rohinish Hooda, Vice-President of U.S. Sales
and Marketing for Ethicon, Inc., a subsidiary of Johnson & Johnson, opposer’s
parent company (Hooda Test.); (3) trial declaration by stipulation with exhibits of
Giselle C. Woo, opposer’s outside counsel; (4) discovery deposition by stipulation
with exhibits, of James Donahue, Director of Media Team, Pfizer, Inc.; (5) opposer’s
Notices of Reliance on printed publications, applicant’s discovery deposition
testimony, applicant’s discovery responses, Internet material and official records;
(6) testimony deposition of Robert Tompkins, General Merchandise Manager of
Health and Wellness for applicant (Tompkins Test.); (7) expert testimony by
affidavit (on stipulation) with exhibits of Dr. Alex Simonson, President of Simonson
Associates, Inc. (Simonson Test.); and (8) applicant’s Notices of Reliance on
discovery depositions, opposer’s discovery responses and official records.
THE PARTIES
Opposer is the current exclusive licensee permitted to sell ZYRTEC branded
OTC allergy medication in the United States.8 From 1996-2007, ZYRTEC branded
medications were sold on a prescription basis by a third party, Pfizer and its
subsidiaries, under an exclusive licensing arrangement with UCB, Inc. and UCB

8 Hooda Test. at 14, 148.

Opposition No. 91184978

7

Pharma, S.A., the owner of the ZYRTEC registration.9 In 2006-2007, opposer’s
parent company, Johnson & Johnson, purchased Pfizer’s Consumer Healthcare
business which included the ZYRTEC brand.10
Applicant is a nationwide drugstore with approximately 800 drugstores
across the United States.11 Its stores offer a variety of beauty products, food
products, OTC medications and prescription medications.12 Applicant “sells many
private label or store brand equivalents of brand name [OTC] medicines.” App. Br.
p. 9. Many of its private label products begin with “WAL-“ and end with either a
portion of the generic name of the drug (WAL-PROFEN), the end of a brand name
(WAL-DRYL), or, as in a couple of instances, the beginning of the brand name
(WAL-DRAM, WAL-ZAN).13 Over many years applicant has sold a substantial
amount of a variety of private label “WAL-” branded products.
PRIORITY/STANDING
Opposer, as the licensee and not the owner of the pleaded registration, must
prove its common law rights prior to applicant’s priority date. Hydro-Dynamics Inc.
v. George Putnum and Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed.
Cir. 1987). “Under the rule of Otto Roth, a party opposing registration of a
trademark due to a likelihood of confusion with his own unregistered term cannot

9 Hooda Test. at 12, 13.

10 Hooda Test. at 16, 19, 151-152, Exhs. 2-3.

11 Tompkins Test. at 4, 7.

12 Id.

13 Tompkins Test. at 63, 83.
Opposition No. 91184978

8

prevail unless he shows by a preponderance of the evidence that his term is
distinctive of his goods, whether inherently or through the acquisition of secondary
meaning or through ‘whatever other type of use may have developed a trade
identity.’” Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041
(Fed. Cir. 1990), citing Otto Roth & Co. v. Universal Food Corp., 640 F.2d 1317, 209
USPQ 40, 43 (CCPA 1981). Thus, in order to prevail, opposer must establish that it
acquired trademark rights in the ZYRTEC mark, that the mark is distinctive, either
inherently or through acquired distinctiveness, and that its use predates applicant’s
first actual or constructive use. Applicant relies on the filing date of the pending
application; thus, opposer must establish use prior to applicant’s constructive use
date of September 9, 2007.
We find that opposer has established its priority. The record shows that
opposer’s predecessor used the mark ZYRTEC for the same goods beginning in
1996.14 The sales of these goods were by prescription. Opposer’s sales of ZYRTEC
over the counter did not begin until January 2008. However, we find that opposer
may rely on its predecessor’s prior prescription sales – the marks and the products
are the same. To the extent there is any distinction it is the narrower channel of
trade for prescription medication.15 Further, contrary to applicant’s contention, the
record shows a clear chain of trademark rights from prior licensees to opposer.16

14 Hooda Test. at 12-13.

15 See, e.g., Hooda Test. at 28, 32-34.

16 See, e.g., Hooda Test. at 13-14, 19-20, Exhs 1-2. These records were submitted under
seal.
Opposition No. 91184978

9

Finally, there is no dispute that the mark is inherently distinctive. Thus, the first
use date of 1996, upon which opposer may rely, is prior to applicant’s September 9,
2007, constructive first use date.
Moreover, in view of the above findings, opposer has sufficiently established
that it has standing to bring this proceeding inasmuch as it has demonstrated a real
interest in preventing registration of the proposed mark. See Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee,
Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987; Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
We turn then to consider whether there is a likelihood of confusion.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co. Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). Further, “[a]lthough confusion, mistake or
deception about source or origin is the usual issue posed under Section 2(d), any
confusion made likely by a junior user’s mark is cause for refusal; likelihood of
confusion encompasses confusion of sponsorship, affiliation or connection.” Hilson
Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1429
(TTAB 1993); Federal Bureau of Investigation v. Societe: “M. Bril & Co.,” 172 USPQ
310, 315 (TTAB 1971) (under Section 2(d) party must show purchasing public would
Opposition No. 91184978

10

mistakenly assume that the applicant’s goods or services originate with, are
sponsored by, or are in some way associated with it”). See also Majestic, 65
USPQ2d at 1205 (“...mistaken belief that [a good] is manufactured or sponsored by
the same entity ... is precisely the mistake that Section 2(d) of the Lanham Act
seeks to prevent”).
Fame/Strength
We begin with the strength of opposer’s ZYRTEC mark in order to determine
the scope of protection to be accorded opposer’s mark as we analyze the other du
Pont factors. ZYRTEC is fanciful and conceptually it is a strong mark. The
commercial strength of a mark “may be measured indirectly, among other things,
by the volume of sales and advertising expenditures of the goods traveling under
the mark, and by the length of time those indicia of commercial awareness have
been evident.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002). In addition, some context in which to place raw
statistics may be necessary. Bose Corp., 63 USPQ2d at 1309.
In support of its assertion of fame, opposer has shown that it has used the
ZYRTEC mark in connection with its allergy medication for 15 years.17 Sales of
allergy medication under the ZYRTEC mark and advertising expenditures have
been substantial throughout that time.18 In particular, since the switch from
prescription to OTC in January 2008, the brand has been heavily advertised in all

17 For purposes of a claim under Section 2(d), a plaintiff may rely on the establishment of
fame through the trial period.

18 These records were submitted under seal.

Opposition No. 91184978

11

types of media, including television, print, point-of-sale displays, and newspaper
inserts. In launching the OTC product, opposer produced a high-profile advertising
campaign that included setting up a dome for three days in New York City’s Central
Park, allowing people to walk through 80 degree temperatures and enjoy various
forms of entertainment while it was snowing outside. This particular campaign
received wide media coverage.19 Opposer has also used celebrities to increase the
impact of the advertising. Several brand awareness studies have ranked ZYRTEC
very high.20 In addition, several third parties that track brand loyalty have ranked
ZYRTEC at high levels.21 Putting its numbers in context, opposer has
approximately 21 percent of the OTC allergy medicine market, second only to
Claritin at 27 percent. Suffice it to say, opposer enjoys a healthy market share in
this product category.
Based on this record, we find that opposer has shown that its ZYRTEC mark
is both conceptually and commercially very strong. In view thereof, we accord it a
broad scope of protection. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000).

19 Hooda Test. at 77-83, Exh. 26.

20 Hooda Test. at 80, Exhs 51-62. Applicant attempts to minimize the probative value of
opposer’s brand awareness results by arguing that opposer relies on the aided awareness
results, but the unaided awareness results, not surprisingly, are lower. While unaided
awareness numbers are more significant, that does not mean that aided awareness
numbers have no significance. Carefirst of Maryland Inc. v. FirstHealth of the Carolinas
Inc., 77 USPQ2d 1492, 1506-07 (TTAB 2005), aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed.
Cir. 2007). Moreover, the very high aided awareness numbers have significance and have
not been shown to be compromised. Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 96
USPQ2d 1479 (TTAB 2010).

21 Hooda Test. at 116-122, Exhs 64, 66.
Opposition No. 91184978

12

Applicant did not present argument on the factor pertaining to possible third-
party uses of similar marks for similar goods. Opposer points out that the only
“evidence” of third-party marks consist of registrations which may not serve as
evidence of use and are for unrelated products. Thus, based on this record ZYRTEC
stands alone in its field.
Goods/Channels of Trade/Classes of Purchasers
Applicant’s goods are “pharmaceuticals, namely, allergy medications” and
opposer’s goods are allergy medications. There is no dispute that the goods are
commercially identical, including sharing the same active ingredient, and are, in
fact, sold in the same channels of trade to the same classes of customers.22 The
most stark examples in the record are found in Exhibit 22 of the Hooda testimony
where WAL-ZYR and ZYRTEC are displayed next to each other on shelves; WAL-
ZYR promotional balloons are prominently displayed directly above the ZYRTEC
display shelf; and THE ZYRTEC display bin is filled with WAL-ZYR product.23 In
view thereof, these du Pont factors weigh heavily in opposer’s favor.

22 We note that opposer, relying on prior use, has proven its channels of trade which include
all variety of retail stores (big-box, general merchandise, grocery stores, chain drug stores,
independent drug stores, and convenience stores). Hooda Test. at 37, 93, 121-126.
However, as to the application, in view of the absence of limitations in the identification we
must presume all ordinary channels of trade for such goods and may not limit our analysis
to only applicant’s stores. To be clear, however, we do consider applicant’s stores as one of
several channels of trade.

23 See also App. Answer ¶ 20. “Applicant admits that one of the ways it markets and
intends to market its WAL-ZYR product is next to or in close proximity to Opposer’s
product on Applicant’s shelves as alleged in Paragraph 20 of the Notice of Opposition.
Answering further, Applicant denies that it intends to market its WAL-ZYR product ‘in
Opposer’s in-store display units; as alleged in Paragraph 20 of the Notice of Opposition.”
(emphasis added).
Opposition No. 91184978

13

Conditions of Sale
Applicant argues that consumers of OTC drugs are more careful than an
ordinary purchaser of a low-cost item and take care in their decisions by, for
example, reading packages prior to purchase. There is evidence to suggest that
consumers do read labels of OTC products.24 Nonetheless, the OTC purchasers are
ordinary consumers with no special knowledge or expertise and the fact that
consumers spend time confirming the uses for a particular product does not indicate
that they are immune from source or sponsorship confusion. In re Pellerin Milnor
Corp, 221 USPQ 558, 560 (TTAB 1983). Therefore, we conclude that the conditions
of purchase in this case would not diminish the likelihood of confusion. However,
the goods also are not impulse items such that the conditions of purchase would
increase a likelihood of confusion. We find that this factor is neutral in this case.

24 Applicant also argues that consumers make their purchasing decision “with a knowledge
of the private label or store brand marketing scheme.” App. Br. p. 34. Applicant cites to
observations made in a case involving trade dress infringement. Conopco, Inc. v. May
Department Stores Co., 32 USPQ2d 1225, 1231 (Fed. Cir. 1994) (“This is a case in which a
retailer markets a national brand product and at the same time markets its own private
label product in direct competition. The retailer packages its product in a manner to make
it clear to the consumer that the product is similar to the national brand, and is intended
for the same purposes. At the same time, the retailer clearly marks its product with its
private logo, and expressly invites the consumer to compare its product with that of the
national brand, by name. With the rise of regional and national discount retailers with
established names and logos, retailers who market both national brands and their own
private label brands in direct competition, this form of competition has become
commonplace and well-known in the marketplace. When such packaging is clearly labeled
and differentiated – as was the case here, ...we are unwilling to attribute to the Eighth
Circuit ... a rule that would make such competition presumptively unlawful.”). The
observations in that case were not made in connection with the circumstances presented
here where the private label product mark includes a portion of the national brand name
and registration is sought for that mark. More importantly, there is no evidence in the
record to support applicant’s contention. We further note that opposer’s testimony is not
sufficient to prove the opposite.

Opposition No. 91184978

14

Similarity/Dissimilarity of the Marks
We turn then to consider the similarities and dissimilarities of the marks in
terms of their appearance, sound, connotation and overall commercial impression.25
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at
567. In making this finding, the focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Further, because the goods here are commercially identical, we keep in mind that
“when marks would appear on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely confusion declines.” Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed Cir. 1992).
There is no dispute that applicant’s mark purposefully incorporates the first
half of opposer’s mark ZYRTEC, rather than the generic ingredient name.26
Applicant contends that the name is “intended to convey equivalence to the
ZYRTEC product, not a connection.” App. Br. p. 11. Opposer counters that it
conveys an association or connection with the ZYRTEC brand. Opp. Br. p. 17.

25 There was a good deal of argument in the briefs regarding the trade dress employed by
both parties. However, for purposes of this factor we note that applicant seeks registration
of a standard character word mark. Applicant’s standard character mark is not limited to
any particular display, but can be used in any stylization, including that identical to
opposer’s. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1258-59 (Fed. Cir. 2011).

26 See Tompkin’s Disc. Dep., Opp. Exh. 107, at 62, 140-141, Exh. 5.

Opposition No. 91184978

15

Applicant’s mark combines the first portion, WAL, of its house mark WALGREENS
with the distinctive first portion, ZYR, of opposer’s fanciful mark ZYRTEC.
Certainly, if the ZYR portion is recognized as referring to ZYRTEC, as applicant
intends, an appreciable number of consumers could believe some sort of sponsorship
or affiliation exists between the two sources where they have taken the first and
most prominent portion of the respective marks to create a combined mark
identifying both of them.27 Whatever applicant’s intent was, such affiliation goes
beyond merely “calling to mind” a prior user’s mark. See Am. Express Co. v.
Payless Cashways, Inc., 222 USPQ 907 (TTAB 1984); Jacobs v. Int’l Multifoods
Corp., 212 USPQ 641 (CCPA 1982). We find that because ZYRTEC is a strong
mark, applicant’s incorporation of the distinctive first portion of the mark creates a
substantially similar mark to opposer’s previously-used mark. In general, the
addition of other matter, to another’s mark is not sufficient to dispel likely
confusion.28 In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed Cir.
2010); Palm Bay, 73 USPQ2d 1689; and Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 ((Fed. Cir. 2002).

27 Much of applicant’s arguments go to the issue of fair use in informing consumers about
their product. However, this case is not about use of a designation to inform consumers;
rather, it is about registering and obtaining exclusive rights to a trademark. Applicant has
cited no authority suggesting that the fair use doctrine affords a competitor the right to
register a mark which is likely to cause confusion.

28 The exceptions to this general rule, where the common matter is merely descriptive or
diluted, are not present here. See Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350 (Fed. Cir. 2004); Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d
1645 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011).
Opposition No. 91184978

16

In view of the above, we find that the similarities in appearance, sound,
connotation and overall commercial impression outweigh the dissimilarities.
Survey
Survey results can be used to show likelihood or no likelihood of confusion.
The level of confusion found to support a determination of likely confusion varies
from case to case. Even a survey report indicating only 8.5 percent of respondents
to be confused was considered to support a finding of likelihood of confusion.
Grotian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp.
707, 716, 180 USPQ 506, 513 (SDNY 1973), modified, 523 F.2d 1331, 186 USPQ 436
(2d Cir. 1975). By contrast, where survey results have a low percentage of confused
respondents, such results may support the ultimate conclusion of no likely
confusion. Henri’s Food Products Co. v. Kraft, Inc., 717 F.2d 352, 220 USPQ 386,
391 (7th Cir. 1983). Whatever the survey results, they must be weighed based on
their probative value and in the context of the totality of the evidence as we weigh
the various du Pont factors. See Miles Laboratories Inc. v. Naturally Vitamin
Supplements Inc., 1 USPQ2d 1445, 1457 (TTAB 1986) (survey results may be
corroborative of likelihood of confusion holdings).
As to the “flaws” asserted by opposer, the survey overall comports with the
Ever-Ready survey structure.29 The survey questions are set forth below:

29 Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 188 USPQ 623 (7th Cir. 1976).
We do note that the control WAL-ZEE may be somewhat flawed in that as Dr. Simonson’s
report states “control stimulus shown to a control group should be similar to the test
stimulus but absent the alleged infringing elements” and here the hyphenated prefix/suffix
with the suffix beginning with Z may, in fact, include “infringing elements” to the extent
that the Z in ZYRTEC is highlighted in opposer’s advertising, putting it in consumers’
Opposition No. 91184978

17

Q1a: Though you may or may not have seen or heard of this specific
brand name before, do you have an opinion as to what company makes
or puts out the products using the name shown on this card?

Q1b: What company?

Q1c: What makes you say that?

Q2a: Do you believe that the company that makes or puts out the
products using the name shown on this card makes or puts out any
other products or brands, or not?

Q2b: What products or brands?

Q2c: What makes you say [respondent’s answer]?

Q3a: Do you believe that the company that makes or puts out the
products using the name shown on this card is affiliated with or
authorized by any other company or brand, or not affiliated with or
authorized by any other company or brand?

Q3b: What company or brand?

Q3c: What makes you say that?

We find the survey to be proper in form, but considering the goods and marks
in question here find that the questions do not expose the full potential for
confusion. The record shows that applicant incorporated the first part of opposer’s
mark ZYRTEC in its WAL-ZYR mark because it conveyed equivalence with
ZYRTEC.30 Although the survey included an “affiliation” question, the answers
were less than illuminating. In most instances there is no response. In many
instances the response is the same company in answer to the first question as to
source. In some cases the respondent lists a brand name (e.g., Claritin, ZYRTEC,

minds, and this would impact both the questions regarding who makes or puts out the
product and whether there is an affiliated company.

30 Opp. NOR Exh. 107 (Tompkins Disc. Dep. pp. 66-70, Exh. 5)
Opposition No. 91184978

18

etc.), pointing at least to either an awareness of the link between private label and
brand name products or assuming WAL-ZYR is a brand name product. This is also
revealed by respondents who do not answer question 1 (who makes it) or 3 (who is
affiliated), but in response to question 2 (do they make another product) they
respond with a name brand. These responses were not counted as confused.
Essentially, if the response did not name ZYRTEC, McNeil or Johnson & Johnson,
it was not counted as confusion. However, because consumers often do not know
the name of the source, a response like this could indicate, at a minimum, that the
consumer views WAL-ZYR as originating from a brand pharmaceutical source
rather than a store brand. See Trademark Act § 45, 15 U.S.C. § 1127 (trademark is
used to “identify and distinguish [a person’s] goods ... and to indicate the source of
the goods, even if that source is unknown.” (emphasis added)).
In addition, the results rely on assumptions as to how respondents would
interpret the questions regarding the affiliation aspect. For example, Dr. Simonson
assumes that respondents would, in answering question 3, include in the category of
affiliation the circumstance where WAL-ZYR and ZYRTEC contain ingredients from
the same supplier.31 However, the results of the survey do not specifically reflect
that understanding.
The survey report indicated a 3 - 3.5 percent rate of confusion among
participants. Even considering opposer’s re-interpretation of the responses, the
highest confusion rate, without discounting the potentially problematic WAL-ZEE
control group, is 6.9 percent. While this number is low, given the circumstances of

31 Simonson Test. p. 82.
Opposition No. 91184978

19

this case, where confusion is more focused on the sponsorship/affiliation aspect or
the possible perception of potential consumers that the ingredients come from the
same manufacturer, we do not find the results of this survey to be particularly
probative. Moreover, a review of the actual responses revealed more a lack of
knowledge about sources of OTC drugs in general, rather than clearly showing a
lack of confusion.32 Finally, in these circumstances, where the goods are drugs,
there is a heightened need to better understand consumer perception to guard
against likely confusion. Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306
(TTAB 2004), citing, Glenwood Lab., Inc. v. Am. Home Pro. Corp., 455 F.2d 1384,
173 USPQ 19 (CCPA 1972) (“[W]here the marks are used on pharmaceuticals and
confusion as to source can lead to serious consequences, it is extremely important to
avoid that which will cause confusion.”)
Actual Confusion
Applicant argues that the lack of evidence of actual confusion strongly
supports a determination that confusion is not likely. As of the close of plaintiff’s
testimony period, January 24, 2011, the goods have been sold side by side in
applicant’s stores for approximately 3 years. It has frequently been observed that
evidence of actual confusion is difficult to come by, in particular with relatively
inexpensive items. General Mills, Inc. v. General Mills IP Holdings II, LLC v. Fage
Dairy Processing Industry S.A., 101 USPQ2d 1584 (TTAB 2011). See also Lebanon
Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826 (TTAB 2012).

32 In fact, many of the responses point to a third party, Walmart, as the source. Simonson
Aff. Survey Report at 11-12.
Opposition No. 91184978

20

Moreover, because customer confusion often comes to light when fielding complaints
about the parties’ branded products, a lack of evidence of actual confusion may
reflect little more than that both parties’ goods are of acceptable quality. We have
carefully considered this factor in the context of the parties’ use of their respective
marks, and find that the absence of evidence of actual confusion is not significant in
this case.33 A showing of actual confusion would of course be highly probative, if not
conclusive, of a likelihood of confusion. The opposite is not true, however. The lack
of evidence of actual confusion carries little weight. J.C. Hall Co. v. Hallmark
Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). Moreover, as often
stated, proof of actual confusion is not necessary to establish likelihood of confusion.
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396
(Fed. Cir. 1983).
Accordingly, the eighth du Pont factor of the length of time during and
conditions under which there has been contemporaneous use without evidence of
actual confusion is considered neutral.
Intent
Opposer contends that:
[Applicant] intended to create a close association with [opposer’s]
ZYRTEC product and thereby appropriate the goodwill built up in the
ZYRTEC mark when it co-opted for its own product the ‘ZYR’ portion of
[opposer’s] mark; Walgreens has repeatedly admitted as much.
Walgreens did not need to take the most prominent portion of the
brand name product, ‘ZYR,’ in order to compete successfully with
[opposer]; no other retailer of which [opposer] is aware has found it

33 We have considered the compilation of consumer comments received by applicant,
discussing the WAL-ZYR and ZYRTEC products, and do not find them sufficiently
probative on the question of likely confusion, so as to tilt this factor in applicant’s favor.
Opposition No. 91184978

21

necessary to copy the ZYRTEC mark in this manner in connection with
a cetirizine HCI product. The fact that it chose, among the unlimited
options available to it, to take the dominant portion of the ZYRTEC
mark speaks volumes about its intentions.

Opp. Br. 39-40.
In further support of its position, opposer points to applicant’s similar trade
dress, e.g., employing the color green in its packaging.
Applicant responds that in choosing its mark, its intent was “not to confuse
but rather to assist consumers in making their own purchasing decisions and to
assist consumers in understanding the options available to them.” App. Br. p. 41.
The WAL-ZYR mark “assists consumers in identifying the origin of the product
(WALGREENS) and the name brand equivalent (ZYRTEC) while ensuring that
consumers who view the mark will not be confused and will instead understand
that this is the value-priced alternative to the ZYRTEC product.” Id.
Bad faith, or intent to confuse, falls under the thirteenth du Pont factor “any
other established fact probative of the effect of use.” L.C. Licensing Inc. v. Berman,
86 USPQ 1883, 1890 (TTAB 2008). “[A] party which knowingly adopts a mark
similar to one used by another for related goods should not be surprised to find
scrutiny of the filer’s motive.” L’Oreal S.A. and L’Oreal USA, Inc. v. Robert Victor
Marcon, 102 USPQ2d 1434, 1442 (TTAB 2012). “[W]hen there is evidence of an
applicant’s intent to adopt a mark that suggests to purchasers a successful mark
already in use by another, the Board may, and ought to, take into account that
intent when resolving the issue of likelihood of confusion when that issue is not free
from doubt.” First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628,
Opposition No. 91184978

22

1633 (TTAB 1988). However, “an inference of ‘bad faith’ requires something more
than mere knowledge of a prior similar mark.” Sweats Fashions, Inc. v. Pannill
Knitting Co., Inc., 833 F.2d 1560, 1565, 4 USPQ2d 1793 (Fed. Cir. 1987). A finding
of bad faith must be supported by evidence of an intent to confuse, rather than mere
knowledge of another’s mark or even an intent to copy. E.g., Starbucks Corp. v.
Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1782 (2d Cir. 2009)
(“[T]he ‘only relevant intent is intent to confuse. There is a considerable difference
between an intent to copy and an intent to deceive.’” (quoting J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 23:113 (4th ed. 2012))); see
Restatement (Third) of Unfair Competition § 22 (“A likelihood of confusion should
not be inferred from proof that the actor intentionally copied the other’s designation
if the actor acted in good faith under circumstances that do not otherwise indicate
an intent to cause confusion or to deceive.”).
Essentially the arguments and evidence presented here come down to
determining whether applicant’s intent was to confuse or inform consumers. Intent
is difficult to prove and on this record we find the evidence to be inconclusive. In
view thereof, we find this factor to be neutral.
Balancing the Factors
We have carefully considered all of the evidence pertaining to the relevant du
Pont factors, as well as the parties’ arguments with respect thereto (including any
evidence and arguments not specifically discussed in this opinion). In balancing the
relevant factors, we conclude that because opposer’s mark is strong, the goods are
Opposition No. 91184978

23

identical, the channels of trade and classes of customers are identical, the
purchasing decision does not involve a high level of sophistication and the marks
are similar, there is a likelihood of confusion.
In view thereof, opposer has proven its claim under Section 2(d) of the
Trademark Act. Finally, to the extent we have any doubt we resolve it, as we must,
in favor of the prior user. See Hewlett-Packard Co., 281 USPQ2d at 1003; Hard
Rock Cafe, 56 USPQ2d at 1514 and W. R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308, 311 (TTAB 1976).
In view of our decision on the claim of likelihood of confusion we do not reach
the dilution claim. See Miss Universe L.P. v. Cmty. Mktg. Inc., 82 USPQ2d 1562,
1572 (TTAB 2007).
Decision: The opposition is sustained under Section 2(d).