Parnell Technologies Pty Ltd

Trademark Trial and Appeal Board

May 22, 2013

No. 79087045 (T.T.A.B. May. 22, 2013)

Mailed:
May 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Parnell Technologies Pty Ltd
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Serial No. 79087045
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Patrick C. Woolley and Carla M. Lee of Polsinelli Shughart
PC for Parnell Technologies Pty Ltd.

Florentina Blandu, Trademark Examining Attorney, Law Office
117 (Brett J. Golden, Managing Attorney).
_______

Before Seeherman, Taylor and Kuczma, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Parnell Technologies Pty Ltd has applied to register
the trademark GLYDE, in standard characters, for, as
subsequently amended:
veterinary preparations and pharmaceuticals,
namely, preparations for horses and dogs that
sustain cartilage synthesis and reduce
inflammation, none of the aforementioned being
lubricant; veterinary foods which have a health
giving property, namely, preparations for horses
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79087045
2
and dogs that sustain cartilage synthesis and
reduce inflammation.1

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion. Specifically, the examining
attorney asserts that applicant’s mark GLYDE so resembles
the mark GLIDE PHARMA, with PHARMA disclaimed, registered
for, inter alia, the following goods, that, if applicant
were to use its mark with its identified goods, it is
likely to cause confusion or mistake or to deceive:
Pharmaceutical and veterinary preparations and
substances for the diagnosis of, treatment of or
protection against infectious diseases, pain,
inflammation and obesity; pharmaceutical and
veterinary preparations and substances for the
diagnosis of, treatment of or protection against
viral, metabolic, musculoskeletal, central
nervous system, endocrinological, immunological,
oncological, neurological, hormonal,
dermatological and psychiatric related diseases
and disorders; pharmaceutical and veterinary
preparations and substances for skin and tissue
repair; prophylactic pharmaceutical and
veterinary preparations and substances; vaccines,
prophylactic vaccines, therapeutic vaccines;
contraceptive preparations and substances; all
the aforesaid being in solid dosage form (Class
5).2

1 Application Serial No. 79087045, filed August 5, 2010, under
Section 66(A) of the Trademark Act, as a request for extension of
protection of International Registration No. 1050296, issued
August 5, 2010.
2 Registration No. 3779916, issued April 27, 2010. The
registration also includes goods in Class 10 and services in
Class 42. The examining attorney has concentrated her arguments
on the likelihood of confusion with the Class 5 goods, and we
therefore have done the same.
Ser. No. 79087045
3
Applicant has appealed. We affirm the refusal of
registration.
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).
Turning first to the goods, applicant’s identified
goods include non-lubricant veterinary preparations for
horses and dogs that sustain cartilage synthesis and reduce
inflammation. The cited registration includes veterinary
preparations for the treatment of or protection against
inflammation. Because these veterinary preparations as
identified in the registration encompass the veterinary
preparations identified in the application, based on the
Ser. No. 79087045
4
identifications alone, applicant’s goods must be considered
to be in part legally identical to the registrant’s goods.
Although applicant did not even address the du Pont
factor of the similarity of the goods in its appeal brief,
in its reply brief it argued that “horse and dog health
care products are different from general substances for the
treatment of infectious diseases, psychiatric related
diseases and disorders, and contraceptive preparations and
substances,” and that “Applicant’s horse and dog health
care products come in paste or powder formulations, while
Registrant’s goods are all in a solid dosage form similar
to a liquid delivered via syringe.” p. 7.
We are not persuaded by these arguments. As noted,
the registrant’s identification of goods includes not only
general substances for the treatment of infectious
diseases, psychiatric related diseases and disorders and
contraceptive preparations and substances, but also
includes veterinary preparations for the treatment of or
protection against inflammation. As for applicant’s point
about the physical form of the preparations, applicant’s
identification contains no limitation, and therefore could
be sold in “solid dosage form”; further, there is no
evidence that the “solid dosage form” referenced in the
registration restricts the registrant’s goods to liquids
Ser. No. 79087045
5
delivered via syringe. On the contrary, the wording “solid
dosage form” would encompass pills and other non-liquid
preparations.
Because the goods are in part legally identical, the
du Pont factor of the similarity of the goods favors a
finding of likelihood of confusion. See Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981) (likelihood of confusion must be found
if there is likely to be confusion with respect to any item
that comes within the identification of goods in the
application). Moreover, we must presume that the legally
identical goods travel in the same channels of trade. In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). This du
Pont factor, too, favors a finding of likelihood of
confusion.
We turn next to the du Pont factor of the similarity
of the marks, keeping 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, 1700
(Fed. Cir. 1992). Applicant’s mark is GLYDE, the cited
mark is GLIDE PHARMA. It is a well-established principle
that, in articulating reasons for reaching a conclusion on
Ser. No. 79087045
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the issue of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Because PHARMA is descriptive, if not generic,
for veterinary and pharmaceutical products, the presence of
this word in the cited mark does not serve to distinguish
the marks. It is the word GLIDE in the cited mark that has
the source-indicating significance, and is therefore the
portion of the mark that consumers will look to and
remember. As a result, it deserves the greater weight in
our comparison of the marks. GLIDE, of course, is
identical to GLYDE in pronunciation and virtually identical
in appearance. Although applicant argues that the Y in
GLYDE creates an unusual spelling, consumers will readily
understand that GLYDE is merely a misspelling of GLIDE, and
will view the words as being equivalents. Further, because
the marks are used on identical goods, they have the same
connotation.3 Overall, despite the additional word PHARMA

3 Applicant contends that GLIDE in the cited registration
suggests “the smooth, effortless method of moving pharmaceutical
preparations into the body,” brief, p. 10. Applicant does not
indicate a meaning for its mark GLYDE, and has not provided any
Ser. No. 79087045
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in the registered mark, the marks convey the same
commercial impression.
Applicant argues that the cited registration is
entitled to a narrow scope of protection, asserting that “a
search of the USPTO TESS database discloses 57 active
records incorporating the letter string ‘glid’ in Class 5.”
Request for reconsideration filed July 20, 2012. Although
search summary results are not sufficient to make
registrations of record, in this case applicant did not
even submit the summary. It did, however, submit five
third-party registrations for marks that include the
element GLIDE, and these are of record, as is a sixth
registration that we deem to have been stipulated into the
record.4 Third-party registrations may be used in the
manner of dictionary definitions, to show that a term has a

evidence that the mark would have a different meaning from GLIDE
PHARMA.
4 Registration No. 3594808 for BODYGLIDE for medicated skin care
preparations and analgesics; Registration No. 3610893 for
HYALOGLIDE for, inter alia, pharmaceutical and medical
preparations for use in general surgery; Registration No. 4029479
for PRO-GLIDE for flea and tick insecticides for pets sold in
plastic applicator tubes; and Registration No. 3528941 for
FENOGLIDE and Registration No. 3091590 for TRIGLIDE, both for
pharmaceutical products, namely, lipid and triglyceride reducing
agents. The sixth registration, No. 3987719, is for WATERGLIDE
and design for, inter alia, pharmaceutical preparations for
sexual health and personal hygiene purposes. Applicant referred
to this registration in its request for reconsideration, but did
not make it of record. However, the examining attorney discussed
this registration in her brief, along with the other third-party
registrations that were properly made of record, and therefore we
deem it to be stipulated into the record.
Ser. No. 79087045
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particular meaning or significance in an industry. In this
case, it is not clear from the third-party registrations
that GLIDE has the same significance in each mark. In any
event, even assuming that registrant’s mark has a
suggestive meaning, because applicant’s and the
registrant’s goods are legally identical, both marks would
have the same meaning. Thus, even if we treat the
registrant’s mark as suggestive, the scope of protection to
which it is entitled would still extend to prevent the
registration of a virtually identical mark (differing only
in the omission of a descriptive or generic term, and in
the substitution of a “Y” for an “I”) for legally identical
goods.
Applicant also asserts that, because of the third-
party registrations, even small differences in the marks
are sufficient to allow consumers to distinguish among the
sources of the goods bearing various GLIDE marks. First,
we point out that third-party registrations are not
evidence of use of the marks. Therefore, the registrations
submitted by applicant do not go to the du Pont factor of
the number and nature of similar marks in use on similar
goods. Moreover, even if there were evidence of such use,
the differences between these third-party marks and goods
are greater than the difference between applicant’s mark
Ser. No. 79087045
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GLYDE and the cited registration for GLIDE PHARMA for
legally identical goods. For example, unlike applican’ts
mark, none of the third-party marks begin with the word
“glide.” Thus, even if consumers were able to distinguish
between other GLIDE-formative marks for goods that are
generally in the pharmaceutical field, that would not show
that they would distinguish between GLYDE and GLIDE PHARMA
for identical goods.
Applicant has also argued that the du Pont factor of
the conditions of purchase favor a finding that confusion
is not likely, because both applicant’s and the
registrant’s goods “are offered to highly trained
veterinarians and animal health care specialists who have
received specialized scientific and technological training
and are keenly aware of the source of the goods.” Reply
brief, p. 8. To the extent that applicant suggests that
purchasers of the goods would look behind the trademarks to
learn the source of the goods, that argument is unavailing.
Likelihood of confusion must be determined on the basis of
the trademarks involved, not on whether the purchasers
would otherwise know the source of the goods. Further, the
goods, as identified, are not limited to purchase by
veterinarians and animal health care specialists. Thus, an
ordinary pet-owning member of the general public who has
Ser. No. 79087045
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administered GLIDE PHARMA preparation for an inflammation
problem for a pet dog, upon encountering GLYDE preparation
for reducing inflammation in a dog, is likely to assume
that the goods come from the same source. Even
veterinarians and other animal health care specialists are
likely, because of the strong similarities in the marks, to
believe that these marks identify a single source when the
marks are used on legally identical goods.
Thus, even though discriminating purchasers would be a
factor that would favor a finding of no likelihood of
confusion, in this case it does not outweigh the
similarities of the marks, and the identity of the goods
and trade channels. Nor does any suggestiveness of the
term GLIDE result in the cited registration being entitled
to such a limited scope of protection that it would not
extend to prevent the registration of GLYDE for legally
identical goods. To the extent that any other du Pont
factors are relevant, we treat them as neutral. After
considering all the evidence and the du Pont factors, we
find that applicant’s mark for its identified goods is
likely to cause confusion with the cited registration.
Decision: The refusal of registration is affirmed.