Mylan, Inc.v.Beaufort County Allergy

Trademark Trial and Appeal Board

Jun 19, 2013

No. 91195868 (T.T.A.B. Jun. 19, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: June 19, 2013
Oral Hearing: June 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Mylan, Inc.
v.
Beaufort County Allergy
_____

Opposition No. 91195868
to application Serial No. 77936427
_____

Harvey Freedenberg of McNees Wallace Nurick LLC for Mylan,
Inc.

Anthony M. Verna III of Kravitz Verna LLC for Beaufort
County Allergy.
______

Before Seeherman, Zervas and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Beaufort County Allergy applied to register in standard
characters on the Principal Register the mark EPI-KEY based
upon an allegation of a bona fide intent to use the mark in
commerce for “medical devices for treating patients with
allergies who are at risk of experiencing anaphylaxis” in
International Class 10.1

1 Application Serial No. 77936427 was filed on February 16, 2010.
Opposition No. 91195868
2
Registration has been opposed by Mylan, Inc.
(“opposer”). In its notice of opposition, as amended,
opposer asserts that “since at least as early as 1978,
opposer, through it and its predecessors, has been, and is
now, using the EPIPEN mark throughout the United States in
connection with auto-injectors and injectable
pharmaceuticals for treatment of anaphylactic reactions”;
that it is the owner of several registrations and
applications for EPI-formative marks; that its registered
EPIPEN mark, in particular, is famous and acquired such fame
prior to the filing date of the application; that
“applicant’s EPI-KEY mark is confusingly similar to
[opposer’s] EPIPEN mark”; that “applicant’s medical devices
for treatment of anaphylaxis are identical to Opposer’s
medical devices used in the treatment of anaphylactic
reactions” and will be offered to the same consumers in the
same trade channels; and, in view of the above, “applicant’s
use of the [EPI-KEY] mark is likely to cause confusion, to
cause mistake or to deceive the consuming public as to the
source, sponsorship or affiliation of [the] goods.”2
Opposer submitted with its notice of opposition, thereby

2 Opposer also asserted a second claim of “dilution by blurring”;
however, it did not pursue this claim at trial or argue it in its
appeal brief. At oral hearing, opposer confirmed that it does
not rely on this ground. Accordingly, the claim is considered
waived has not been given further consideration. For the same
reasons, opposer’s allegation that it has a “family” of marks has
been deemed to be waived.
Opposition No. 91195868
3
making them of record, Office electronic database copies of
its pleaded registrations, including:
EPIPEN (Reg. No. 1124454) for “hypodermic injectors”
in International Class 10;3 and

EPIPEN (Reg. No. 1479294) for “injectable
pharmaceuticals for treatment of anaphylactic reactions
to insect stings” in International Class 5.4

Applicant's answer to the notice of opposition, as
amended, contains admissions with respect to opposer’s
ownership of the asserted registrations and applications,
including the incontestability of opposer’s EPIPEN
registrations. Otherwise, applicant denies or states it is
without sufficient information to admit or deny the
remaining pertinent allegations of the opposition.
Description of the Record
The record in this case consists of the pleadings and
the file of the involved application.
Opposer submitted the testimony, with corresponding
exhibits, of: Lauren Kashtan, Senior Manager of
Communications for Mylan Specialty (a subsidiary of
opposer); Jeffrey B. Drews, Senior Director of Accounting
for opposer; and Thomas Hadley, Executive Director of Global
Marketing for Mylan Specialty.

3 Issued on August 28, 1979; Section 8 and 15 affidavits accepted
and received, respectively; registration renewed twice.
4 Issued on March 8, 1988; Section 8 and 15 affidavits
respectively accepted and received; renewed.
Opposition No. 91195868
4
Also, during its assigned testimony period, opposer
filed a notice of reliance upon the following: Office
database copies of its pleaded registrations (for marks
EPIPEN, EPIPEN JR. 2-PAK, EPIPEN 2-PAK) and applications
(for marks EPIPEN-READY, EPIPEN-PREPARED, EPI-PREPARED,
EPIPEN-PREPARED, EPI-SET, and EPICARD); portions of
testimony from the Rule 30(b)(6) discovery deposition taken
of applicant through its designated witness, Thomas C.
Beller, M.D., and certain exhibits; various internet
materials, including dictionary definitions and other
references, news articles, and informational website
columns; “expert reports” from five physicians for purposes
of “refut[ing] applicant’s claim that the term ‘Epipen’ has
become generic for epinephrine autoinjectors and to support
[opposer’s] contention that the mark has become famous”;5
copies of Office database prosecution docket history sheets
for seven Board proceedings involving opposer and third
parties; a copy of a third party’s stipulation to amend the
identification of goods in two of its applications that were
subject to an opposition proceeding brought by opposer
herein; and copies of applicant’s responses to opposer’s
interrogatories.

5 These reports generally may not be properly introduced via
notice of reliance. See TBMP Section 704.20 et seq. However,
the parties stipulated to their introduction in lieu of expert
testimony (stipulation filed September 21, 2012). Accordingly,
we have considered these reports.
Opposition No. 91195868
5
Applicant did not take testimony or offer any other
evidence during its assigned testimony period.
Both opposer and applicant filed trial briefs and an
oral hearing took place on June 12, 2013.
Opposer’s Standing
Because opposer has properly made its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). In addition, through the testimony of
Ms. Kashtan and its other witnesses, opposer has established
that it is a large pharmaceutical company and uses the
EPIPEN mark in connection with epinephrine auto-injectors.
We turn then to opposer’s claim of priority and
likelihood of confusion.
Priority of Use
Because opposer’s pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks and goods covered thereby. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Opposition No. 91195868
6
We note, however, that the aforementioned registrations
for the mark EPIPEN cover the goods “hypodermic injectors”
and “injectable pharmaceuticals for treatment of
anaphylactic reactions to insect stings,” but do not cover
goods constituting the combination of these goods. In other
words, the registrations are not for an auto-injector which
actually contains pharmaceuticals for the treatment of
anaphylactic reactions to insect stings (or other causes).
In spite of the registrations not covering goods that
combine the auto-injectors with pharmaceuticals for
treatment of allergic reactions, opposer has established
through the testimony of Ms. Kashtan, with accompanying
exhibits, that it began using the mark EPIPEN on epinephrine
auto-injectors since 1987, and therefore has established its
common law rights in this mark for these goods since that
date. Kashtan 39:11-17. For priority purposes in this
proceeding, the earliest date that applicant can rely upon
is the filing date of its application, February 16, 2010.
Accordingly, opposer has established prior rights in the
mark EPIPEN on epinephrine auto-injectors.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Opposition No. 91195868
7
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
For purposes of our likelihood of confusion
determination, we will concentrate our discussion on
opposer’s established common law rights in the mark EPIPEN
on epinephrine-containing auto-injectors. Of opposer’s
rights in various marks, through its pleaded registrations
and acquired common law rights, the EPIPEN mark being used
on such goods bears the closest resemblance to the mark and
goods in the subject application.
Fame of Opposer’s EPIPEN Mark
We begin our likelihood of confusion analysis with the
fifth du Pont factor, which requires us to consider evidence
of the fame of opposer’s mark and to give great weight to
such evidence if it exists. See Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894
(Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
Opposition No. 91195868
8
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.”

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Upon careful review of the record in this case, we are
not persuaded that opposer’s mark is truly famous for
likelihood of confusion purposes, but it must be regarded,
at the very least, as a very strong mark. Opposer has
marketed and sold its EPIPEN epinephrine auto-injectors for
nearly thirty years, both to medical professionals who
prescribe the devices and to consumers purchasing the goods.
Opposer has used various media outlets, including television
and major print magazines, to advertise its EPIPEN mark.
The Hadley testimony divulging sales and advertising figures
for opposer’s EPIPEN epinephrine auto-injectors has been
designated as confidential; however, we can characterize
them as quite impressive. Opposer’s EPIPEN mark has
received unsolicited coverage or referencing in trade
journals and publications as well as newspapers and
magazines in general circulation. Perhaps most important,
opposer’s sales and advertising efforts are given context
Opposition No. 91195868
9
through the testimony of Mr. Hadley who testified that
opposer’s EPIPEN epinephrine auto-injector enjoys a market
share of 95% or better.6
On this record, we find that EPIPEN has achieved a high
degree of recognition and is, at a minimum, a very strong
mark for purposes of our likelihood of confusion
determination. Although we decline to find the mark famous,
it is entitled to a broad scope of protection.
In addition, we further note that the record is devoid
of any evidence showing use of similar EPI-formative marks
in connection with similar products. Rather, opposer
introduced evidence reflecting its efforts in policing
against any perceived third-party attempts to register what
opposer believes were similar EPI-formative marks.
The Goods
We turn then to our consideration of the similarities
or dissimilarities between the parties’ goods. The issue
remains, of course, not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion
as to the source thereof. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
Here, applicant’s identification of goods, “medical

6 In his testimony, Mr. Hadley actually states that opposer
possesses a “99 percent or greater” market share. Hadley 7:2.
In its brief, opposer states 95 percent market share. Brief, p.
18.

Opposition No. 91195868
10
devices for treating patients with allergies who are at risk
of experiencing anaphylaxis,” encompasses opposer’s EPIPEN-
branded epinephrine auto-injectors. Opposer’s witnesses
have testified that the EPIPEN is “a prescription drug
product” more specifically described as “an epinephrine
auto-injector that’s administered into the thigh when
someone goes into anaphylaxis.” Kashtan 7:24-24 and 8:4-6.
At oral hearing, counsel for applicant conceded the parties’
goods may both be described as epinephrine auto-injectors
used to treat anaphylaxis.
Because of the identity of the goods, this du Pont
factor weighs heavily in favor of a finding of likelihood of
confusion.
Channels of Trade and Classes of Purchasers
Because the parties’ goods are proven and conceded by
applicant to be identical, we must presume that the channels
of trade and classes of purchasers are the same. See In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”). Applicant’s
identification of goods is not limited in these respects;
thus, any possible trade channels or classes of purchasers
for applicant’s goods must be deemed to be the same as the
Opposition No. 91195868
11
established consumer classes and trade channels of opposer’s
EPIPEN goods.
Thus, the du Pont factors involving trade channels and
classes of purchasers also favor a finding of likelihood of
confusion.
The Marks
We turn then to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s mark are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
See Palm Bay Imports, Inc. v. Veuve Clicquot, supra. 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. Further, "[w]hen
marks would appear on virtually identical ... [goods or]
services, the degree of similarity [of the marks] necessary
to support a conclusion of likely confusion declines." See
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506
U.S. 1034 (1994). See also ECI Division of E-Systems, Inc.
v. Environmental Communications Inc., 207 USPQ 443, 449
(TTAB 1980).
Opposition No. 91195868
12
In this case, opposer’s EPIPEN mark is very similar to
applicant’s EPI-KEY mark in that both share the identical
prefix EPI, following by a single-syllable term describing
the shape of the product.7 While the prefix EPI will likely
be understood by consumers as suggestive of epinephrine,
there is no evidence showing that this term is merely
descriptive, such that we should give more weight to the
portion of the mark that indicates the shape of the
respective product. Rather, because both marks employ a
common syntax (EPI followed a by a term describing the shape
of the goods), they create a very similar commercial
impression. When both marks are viewed in their entireties
in the context of auto-injectors for treating anaphylaxis,
they both, in a similar manner, suggest goods containing
epinephrine which are in the shape of a small pocket-size
item, namely, a pen or a key.
In sum, the marks are more similar than dissimilar for
purposes of our likelihood of confusion determination. This
du Pont factor also favors a finding of likelihood of
confusion.
Conditions of Purchase and Sophistication of Consumers
At oral hearing, counsel for applicant argued that
confusion is unlikely because opposer’s goods are sold by

7 The record shows that opposer’s auto-injectors are shaped, more
or less, like a pen. At oral hearing, applicant conceded that
Opposition No. 91195868
13
prescription, not over the counter, and applicant’s goods
would be sold in the same manner. Counsel argued that it
would therefore be very unlikely for the person receiving a
prescribed epinephrine auto-injector to receive the goods of
the other party. Applicant also argued in its brief that
“both [applicant’s and opposer’s] products are or will be
governed by prescriptions (state and Federal laws), so that
consumers will not receive the product that is unwanted.”
Brief, p. 16.
We initially note that applicant has not submitted any
evidence supporting its aforementioned arguments. The
parties are in agreement, however, that their respective
goods are (or will be) sold only with a physician’s
prescription. Thus, we find that the goods will be
distributed to the end-user in an environment in which an
above-normal degree of care will presumably be exercised.
Nevertheless, this certainly does not negate the likelihood
of confusion. Courts have acknowledged the role of the
patient in choosing prescription medication, stating that
“[w]hile doctors and pharmacists play a gate-keeping role
between patients and prescription drugs, they are not the
ultimate consumers. Patients are. Courts have noted that
drugs are increasingly marketed directly to potential
patients through, for example, ‘ask-your-doctor-about-Brand-

the term “key” is intended as being suggestive of the shape of
Opposition No. 91195868
14
X’ style advertising.” Kos Pharmaceuticals Inc. v. Andrx
Corp., 369 F.3d 700, 70 USPQ2d 1874 (3d Cir. 2004). And,
“[w]here both professionals and the general public are
relevant consumers, ‘the standard of care to be exercised …
will be equal to that of the least sophisticated consumer in
the class.”’ Id. at 716. The record in this proceeding
corroborates the type of marketing contemplated in Kos
Pharmaceuticals; opposer has demonstrated that it markets
its EPIPEN epinephrine auto-injectors to both the physicians
prescribing the goods as well as to the persons purchasing
the goods at pharmacies. Opposer’s proposed scenario of “a
consumer might visit her physician and request a
prescription for a specific auto-injector, based on an
advertisement she encountered” is certainly plausible.
Brief, p. 13. Given the similarities of the marks, the fact
that there is no evidence of third-party use of EPI-
formative marks, and the extent of advertising and sales of
opposer’s EPIPEN auto-injectors, the patients (or parents of
minor patients) may mistakenly request a prescription for
the wrong auto-injector; for the same reasons, it is also
likely that consumers may mistakenly believe that EPI-KEY
auto-injectors originate from the same company that makes
EPI-PEN auto-injectors. As far as the prescribing doctors
are concerned, and to the extent they are considered

applicant’s goods.
Opposition No. 91195868
15
sophisticated consumers in the selection of different
branded auto-injectors, they too may assume a connection in
source, i.e., that EPI-KEY auto-injectors originate from the
same company that makes EPI-PEN auto-injectors.
Sophisticated purchasers are not immune from source
confusion, especially in cases such as the instant one
involving similar marks and identical goods. Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000). See In re Research Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers...are not infallible.”). Finally,
we keep in mind the obvious necessity to avoid confusion
when it comes to the dispensing of prescription medications
and that greater care should be taken in the use and
registration of trademarks to assure that no harmful
confusion results. See, e.g., Glenwood Laboratories, Inc.
v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19
(CCPA 1972); Blansett Pharmacal Co. Inc. v. Carmrick
Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992); and Schering
Corporation v. Alza Corporation, 207 USPQ 504 (TTAB 1980).
In sum, in the absence of evidence supporting
applicant’s arguments, we cannot say that the prescription-
only condition of purchase avoids the likelihood of
Opposition No. 91195868
16
confusion. Thus, although the fact that care will be
exercised in the purchase of the goods, this is not
sufficient to outweigh the other factors which favor opposer
and a finding of likelihood of confusion.
Summary
In view of the foregoing, we find that opposer has
established its standing to bring this proceeding; its
priority of use; that its EPIPEN mark is strong and entitled
to a broad scope of protection; that the parties’ respective
goods are identical in that they both include epinephrine
auto-injectors; and that consumers familiar with opposer’s
EPIPEN goods, who then encounter applicant’s EPI-KEY mark
being used on identical goods, are likely to be confused as
to the source of the goods.
DECISION: The opposition is sustained on the ground of
priority and likelihood of confusion, and registration to
applicant is refused.