MerckKgaA

Trademark Trial and Appeal Board

Jun 13, 2006

No. 76354586 (T.T.A.B. Jun. 13, 2006)

Mailed: June 13, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In Merck KGaA
________

Serial No. 76354586
_______

H. John Campaign of Graham, Campaign P.C. for Merck KGaA

Kelley L. Wells, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______

Before Holtzman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Merck KGaA, applicant, has filed an application to
register the mark EMD LEXIGEN (standard character form) for
“pharmaceutical and biopharmaceutical products for the
treatment of cancer, MDS, genetic disorders and
immunological disorders; novel protein drugs for use in the
area of oncology, immune therapies and for the treatment of
metabolic disorders” in International Class 5 and
“scientific research and development in the area of
pharmacy, medicine, biology and genetics, developing
treatments for serious and life-threatening diseases as
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76354586
2
well as broad technology platforms that will lead to new
therapies” in International Class 42.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods and
services, so resembles the registered marks LEXGEN.COM (in
standard character form) for “providing an online computer
database in the field of genetic research” in International
Class 422 and LEXGEN (in standard character form) for
“providing access to a genomic database consisting of
molecular biology and genetic research information via a
global computer information network; computer services in
the nature of providing online publications, namely,
scientific journals and newsletters in the field of
molecular biology and genetic research; providing online
molecular biology and genetic research information and
resources to others via a global computer network;
collaborative research and development services in the

1 Application Serial No. 76354586 filed December 27, 2001. The
application was originally filed under Section 1(b) and Section
44 of the Trademark Act. 15 U.S.C. §§1051(b) and 1126. On
October 28, 2002, applicant deleted the Section 1(b) claim and
the application proceeded under Section 44(d) and (e).

2 Registration No. 2570600, issued May 21, 2002 to Lexicon
Genetics Inc.

Ser No. 76354586
3
field of molecular biology and genetics” in International
Class 42.3
When the refusal was made final, applicant appealed
and filed a request for reconsideration. After the
examining attorney denied the request for reconsideration,
the appeal was resumed. The appeal is fully briefed. No
oral hearing was requested. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion 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 & 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). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).

3 Registration No. 2689750, issued February 25, 2003 to Lexicon
Genetics Inc.
Ser No. 76354586
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We first consider whether applicant’s mark and
registrant’s marks are similar or dissimilar when compared
in their entireties in terms of appearance, sound,
connotation and commercial impression. We make this
determination in accordance with the following principles.
The test, under the first du Pont factor, is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
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). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Finally, the meaning or connotation of a mark must
be determined in relationship to the named goods or
Ser No. 76354586
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services. See In re Sears, Roebuck and Co., 2 USPQ2d 1312
(TTAB 1987).
LEXIGEN and LEXGEN, differ only by the addition of the
“I” in applicant’s mark. While applicant argues that the
pronunciation is different because the term LEXIGEN in its
mark consists of three syllables in comparison to LEXGEN in
registrant’s marks which consist of only two syllables, the
examining attorney argues that “the addition of the letter
‘I’ between LEX and GEN does not make the marks
sufficiently different in that the letter ‘I’ actually has
a soft sound in the word LEXIGEN” and the “visual and aural
difference in the basic words LEXGEN and LEXIGEN is
negligible.” Br. unnumbered p. 5. We agree with the
examining attorney that the ‘I’ in applicant’s mark is a
negligible difference. This highly similar element
comprises the entirety of registrant’s mark in Registration
No. 2689750 and the dominant portion of registrant’s mark
in Registration No. 2570600. The .COM in registrant’s mark
used in connection with the recited online computer
database services would be perceived as a top level domain
(TLD) indicator and thus has no meaningful source
identifying significance. See In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004); and In re
CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002). In
Ser No. 76354586
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this regard, we take judicial notice of the following
definition of the term TLD:4
“(Top–Level-Domain) The highest level domain
category in the Internet domain naming system.
There are two types: the generic top-level
domains, such as .com, .org, and .net and the
country codes, such as .ca, .uk and .jp.”

McGraw Hill Computer Desktop Encyclopedia 977 (9th ed.
2001).
With regard to applicant’s argument that the GEN part
of the marks is weak, applicant has submitted no evidence
to support that argument. Applicant’s mere reference in
its brief that “thirty seven registered or applied-for
marks for use in connection with genetic research contain
the GEN component” (br. p. 13) is unsupported by any copies
of the registrations and has no probative value. In
addition, applications serve only as evidence that the
applications were filed. In re Phillips Van Heusen Corp.,
63 USPQ2d 1047 (TTAB 2002). Moreover, GEN is not the only
point of similarity in the marks; rather, it is the
combination of the identical beginning, LEX, and ending,
GEN, that creates a similarity between the marks.

4 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983) (Board may take judicial notice of dictionary
definitions).
Ser No. 76354586
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While the appearance of applicant’s mark is slightly
different from the mark in the registrations due to the
presence of the letters “EMD” in applicant’s mark and the
.COM in one of registrant’s marks, we do not find these
differences sufficient to distinguish the marks. As noted
above, the .COM in registrant’s mark has no meaningful
source identifying significance. Further, we do not find
that the addition of the lettering EMD obviates the
similarity of the marks such that confusion would not be
likely. Applicant’s argument that EMD is its house mark
and thus would serve to distinguish the marks is not well
taken.5 However, even if we consider EMD to be a house
mark, generally, likelihood of confusion is not avoided by
the addition of a house mark to an otherwise confusingly
similar mark. “It is the general rule that the addition of
extra matter such as a house mark or trade name to one of
two otherwise confusingly similar marks will not serve to
avoid a likelihood of confusion between them.” In re
Dennison Mfg. Co., 229 USPQ 141, 146 (TTAB 1986), citing
Menendez v. Holt, 128 U.S. 514, 521 (1888). In certain
circumstances, a house mark may make a sufficient

5 We further note that the exhibits attached to applicant’s reply
brief consisting of material not previously made of record are
untimely and have not been considered. See Trademark Rule
2.142(d) (record in application should be complete prior to
filing an appeal).
Ser No. 76354586
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distinction if the marks in their entireties convey
significantly different commercial impressions or the
similar element is not likely to be perceived by purchasers
as a distinguishing source because it is merely descriptive
or weak. See Rockwood Chocolate Co. v. Hoffman Candy Co.,
372 F.2d 552, 152 USPQ 599 (CCPA 1967). Here, LEXIGEN and
LEXGEN present a similar commercial impression, and there
is no evidence of record to suggest that they are weak
terms. We are also not persuaded by applicant’s argument
that the lettering EMD dominates over the term LEXIGEN in
its mark. The applied-for mark is in standard character
form, therefore, in actual use EMD could appear in smaller
letters than LEXIGEN.
Further, as to connotation, we analyze the connotation
of the mark in relationship to the named goods. See In re
Sears, supra. There is nothing in the record to point to a
specific connotation for any of the marks, however, given
their similarity in appearance both beginning with LEX and
ending with GEN they would likely evoke a similar
connotation. Applicant’s argument that the derivation of
registrant’s marks stems from registrant’s name Lexicon
Genetics Inc. is speculation and, in any event, such
derivation would be lost on consumers when LEXGEN is seen
without Lexicon Genetics as we must presume given that the
Ser No. 76354586
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registered marks do not include Lexicon Genetics. The same
holds true for applicant’s mark in that the application is
for EMD LEXIGEN without reference to Lexigen
Pharmaceuticals Corporation, the company acquired by
applicant.
In view of the above, we find that the points of
similarity between applicant’s mark EMD LEXIGEN, and
registrant’s marks LEXGEN and LEXGEN.COM outweigh the
dissimilarities. Thus, the factor of the similarity of the
marks favors a finding of likelihood of confusion.
We turn now to a consideration of the goods and
services identified in the application and the cited
registrations. It is well settled that goods or services
need not be similar or competitive in nature to support a
finding of likelihood of confusion. The question is not
whether purchasers can differentiate the goods or services
themselves, but rather whether purchasers are likely to
confuse the source of the goods or services. See Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
(TTAB 1989). Further, we must consider the cited
registrant’s services as they are described in the
registrations and without limitations that are not
reflected therein. See Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Ser No. 76354586
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and Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the
cited registrations describe goods or services broadly, and
there is no limitation as to the nature, type, channels of
trade or class of purchasers, it is presumed that the
registration encompasses all goods or services of the type
described, that they move in all channels of trade normal
for these goods or services, and that they are available to
all classes of purchasers for the described goods or
services. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992).
The examining attorney argues that “The applicant and
registrant both use their marks in association with
research and development services in the field of biology
and genetics. In addition to these identical services the
applicant and registrant use their respective marks on
other related goods and services. The applicant uses its
mark on goods which are a product of biology and genetic
research and development. The registrant uses its mark on
services of providing databases, information and
publications featuring biology and genetic research and
development.” Br. unnumbered p. 7.
In support of her position that applicant’s
pharmaceuticals and scientific research services, and
Ser No. 76354586
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registrant’s online database and research services are
related, the examining attorney has submitted excerpts from
their respective websites. See, for example, registrant’s
website www.lexicon-genetics.com stating that:
Lexicon Genetics Incorporated today announced the
launch of Lexgen.com, a genomics Internet
exchange which contains a substantial portion of
Lexicon’s OmniBank® gene sequence database and
library of 60,000 knockout mouse clones for use
in determining the function of genes. Through
Lexgen.com, researchers at pharmaceutical and
biotechnology companies and academic institutions
throughout the world will be able to conduct Web-
based bioinformatics mining of genes at no
charge...The advent of genomics and upcoming
completion of the Human Genome Project represent
an opportunity for the development of drugs that
are more effective and have fewer side
effects...Lexicon Genetics is focused on the
discovery of breakthrough treatments for human
disease...We are working both independently and
through strategic collaborations and alliances to
accelerate the development and commercialization
of our discoveries.

See also applicant’s website www.emdlexigen.com
stating that:
We are a research-driven company focused on
developing new generations of therapies for
cancer and other serious and life-threatening
diseases.

As identified in the application, applicant’s
scientific research and development services in the area of
biology and genetics encompass registrant’s collaborative
research and development services in the field of molecular
biology and genetics in Registration No. 2689750. In
Ser No. 76354586
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addition, registrant’s research services are related to
applicant’s pharmaceuticals inasmuch as they are the types
of goods that emanate from registrant’s services. Further,
applicant’s pharmaceuticals and scientific research
services in the area of genetics are related to
registrant’s online database in the field of genetic
research in Registration No. 2570600 because
pharmaceuticals and genetics are the subject matter of
registrant’s database.
Thus, the similarity of the goods and services weighs
in favor of a finding of likelihood of confusion.
The identification of goods and services in the
application does not limit the channels of trade in any
way. We must presume they travel in the channels of trade
ordinary for these goods and services. Therefore, the
applicant’s and registrant’s channels of trade, including
registrant’s services specifically identified as being
provided online, overlap.
With regard to the class of potential customers, the
examining attorney argues that “applicant’s and
registrant’s goods and services are provided to or are of
interest to the same class of customer, i.e., those
interested in genetic research and in the development of
new drugs and drug therapy platforms.” Br. unnumbered p.
Ser No. 76354586
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8. The examining attorney supports her position by again
pointing to the excerpts from applicant’s and registrant’s
websites made of record. While the identification of goods
and services may not be restricted by extrinsic evidence,
In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986),
this evidence simply confirms what is apparent from the
identifications and is not disputed by applicant.
This evidence also underscores applicant’s argument
that the overlapping consumers are sophisticated and would
exercise great care in purchasing the respective goods and
services. Specifically, applicant argues that “It is hard
to imagine that scientists, doctors, researchers or
chemists would exercise anything less than a high degree of
care and caution when purchasing such different goods or
services as pharmaceutical and biopharmaceutical products
for the treatment of cancer, MDS, genetic
disorders...Clearly, the respective purchasers of
applicant’s goods and services and registrant’s services,
under the normally prevalent conditions of the marketplace
for such goods and services, exercise a high degree of care
and knowledge in the selection of a particular product for
the treatment of cancer, MDS, genetic disorders and
immunological disorders, or genetic database.” Br. p. 17.
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The examining attorney, citing In re Decombe, 9 USPQ2d
1812 (TTAB 1988), argues that even if the overlapping
consumers are sophisticated, confusion may occur because
sophistication in and knowledge of a particular field does
not automatically mean they are immune from source
confusion and further there is no evidence of record to
suggest otherwise. We find that based on the
identification of goods and services potential purchasers
would exercise a high degree of care and would necessarily
have some sophistication in the fields of biology and
genetics. Thus, this factor weighs against a finding of
likelihood of confusion.
However, despite the possible sophistication of
potential purchasers of the respective goods and services,
we find that because the marks are similar, the goods and
services are legally identical in part and otherwise
closely related, and the channels of trade are the same or
overlapping, confusion is likely between applicant’s mark
and the cited registrations. Finally, to the extent that
any of the points argued by applicant cast doubt on our
ultimate conclusion on the issue of likelihood of
confusion, we resolve that doubt, as we must, in favor of
the prior registrant. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Ser No. 76354586
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Decision: The refusal to register applied to
both International Classes in the application under
Section 2(d) is affirmed as to both registrations.