Sigma-Tau Industrie Farmaceutiche Riunite S.p.A.v.SigmaPharm Laboratories, LLC

Trademark Trial and Appeal Board

Feb 9, 2015

No. 91196807 (T.T.A.B. Feb. 9, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
November 12, 2014 February 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sigma-Tau Industrie Farmaceutiche Riunite S.p.A.
v.
SigmaPharm Laboratories, LLC
_____

Opposition No. 91196802
Opposition No. 91196807
_____

Paola A. Strino of Lucas & Mercanti LLP for Sigma-Tau Industrie Farmaceutiche
Riunite S.p.A.

Jeffrey P. Weingart and Susan Schlesinger of Meister Seelig & Fein LLP for
SigmaPharm Laboratories, LLC.
_____

Before Rogers, Chief Administrative Trademark Judge, and Bergsman and Shaw,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On April 13, 2009, Sigma Pharm Laboratories (“Applicant”) filed four intent-
to-use applications and two use-based applications, for three marks: SigmaPharm,
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in standard characters,1 SigmaPharm Laboratories, in standard characters,2 and
SigmaPharm Laboratories and design (below).3

Applicant seeks registration of each of the three marks for the goods and services
set forth below. The two applications based on a claim of use are the service mark
applications for the SigmaPharm Laboratories mark and the SigmaPharm
Laboratories and design mark. Each of these two applications claims a date of
first use of the mark, for the identified services, as of January 1, 2006.
Pharmaceutical preparations, namely, a drug delivery
system comprising solid dosage delivery agents and a
wide variety of therapeutic agents in molecular or
amorphous state, in the form of tablets, capsules and
powder dosage forms, prepared using company’s patented
technology platforms which will result into more
bioavailable and stable dosage forms of therapeutic
agents for the treatment of hypertension,
hypercholesterolemia, depression, atherosclerosis, thyroid
deficiency syndrome, organ rejection, hepatitis and, HIV
and fungal infections, in International Class 5; and
Research and development of pharmaceutical products
and preparations for the treatment of hypertension,
hypercholesterolemia, depression, atherosclerosis, thyroid
deficiency syndrome, organ rejection, hepatitis and, HIV
and fungal infections, in International Class 42.

1 Serial Nos. 77712535 and 77712553.
2 Serial Nos. 77712545 and 77712558 (the use-based, services application).
3 Serial Nos. 77712521 and 77712565 (the use-based, services application).
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In the four relevant applications, Applicant disclaimed the exclusive right to
use the word “Laboratories.” In the applications featuring the design element,
Applicant included a description of the mark stating: “[t]he logo depicts the Greek
character ‘phi’ inside the Greek character ‘sigma.’”
Sigma-Tau Industrie Farmaceutiche Reunite S.p.A. (“Opposer”) filed Notices
of Opposition against the registration of Applicant’s marks on the grounds of
likelihood of confusion pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. § 1052(d), and that Applicant’s marks consist of matter that falsely suggest a
connection with Opposer pursuant to Section 2(a) of the Trademark Act of 1946, 15
U.S.C. § 1052(a). Opposer pleaded ownership of the two registrations listed below
both for “pharmaceutical products for use in the treatment of carnitine deficiency
and cardiovascular disease,” in International Class 5:
1. Registration No. 1663145 for the mark SIGMA-TAU
PHARMACEUTICALS, INC., in typed drawing form.4 Opposer disclaimed the
exclusive right to use the term “Pharmaceuticals, Inc.”; and
2. Registration No. 1666394 for the mark comprising the lower case
Greek letter “sigma,” shown below.5

4 Issued November 5, 1991; second renewal.
5 Issued December 3, 1991; second renewal.
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I. Preliminary Issues
A. Improper designation of confidential testimony and evidence as confidential.
On September 25, 2012, the parties filed a “Stipulated Protective Agreement”
restricting the dissemination of “information that a Producing Party claims to be
proprietary business information or technical information relating to a trade secret
or other confidential research, development, financial, intellectual property,
marketing, or commercial information within the meaning of Fed.R.Civ.P. 26(c).”6
Fed.R.Civ.P. 26(c)(7) protects confidential, trade secret, and commercially sensitive
information by allowing a party to limit the access to such information or by
permitting the information to be revealed only in a designated way. The Board
approved the stipulated protective agreement in an order dated September 26, 2012
and reminded the parties “that only confidential or trade secret information should
be filed pursuant to a stipulated protective agreement.”7
Based on our review of the entire record, very little, if any, of the testimony
and evidence introduced into evidence is proprietary business information or
technical information relating to trade secrets or truly confidential matters.
Nevertheless, the parties improperly designated testimony and evidence as
confidential that is not. For example, the parties designated the identity of the
three major wholesalers in the pharmaceutical industry as confidential even though

6 27 TTABVUE 4. All citations to the record will be to TTABVUE, the docketing system for
the Trademark Trial and Appeal Board, from Opposition No. 91196802. See Turdin v.
Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
7 28 TTABVUE 1.
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they are the well-known in the industry. Also, the parties designated the identity of
retailers who sell Opposer’s over-the-counter products as confidential even though
one of Opposer’s publicly available webpages lists the retailers where Opposer’s
products may be purchased.8
Because of the improper designation of testimony and evidence by the parties
as confidential, it is clear to us that much of what is designated “confidential,” is
not. Therefore, in rendering our decision, we will not be bound by the parties’
designations. The filings and orders in Board proceedings are intended to be
publicly available and the improper designation of materials as confidential thwarts
that intention. Further, it is more difficult to make findings of fact, apply the facts
to the law, and write decisions that are comprehensible to readers unfamiliar with
the evidence when certain facts may not be discussed. The Board needs to discuss
the evidence of record, unless there is an overriding need for confidentiality, so that
the parties and a reviewing court will know the basis of the Board’s decisions.
Therefore, in this opinion, we will treat as confidential only testimony and evidence
that is clearly so.
B. Objections.
The parties have lodged numerous [evidentiary?] objections. None of the
evidence sought to be excluded is outcome determinative. Moreover, the Board is
capable of assessing the relevance, and strength or weakness of, the objected-to
testimony and evidence, including any inherent limitations, and this precludes the

8 58 TTABVUE 51. At the oral hearing, the Opposer withdrew the confidentiality
designation as to the identity of the wholesalers and retailers. Applicant did not object.
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need to strike the objected-to testimony and evidence. Given these facts, coupled
with the number of objections, we see no compelling reason to discuss the specific
objections. As necessary and appropriate, we will point out any limitations applied
to the evidence or otherwise note that the evidence cannot be relied upon in the
manner sought. Absent such stated limitations, we have considered all of the
testimony and evidence introduced into the record. In doing so, we have kept in
mind the various objections raised by the parties and we have accorded the subject
testimony and evidence whatever probative value it merits.
C. Voluminous record.
The record in these proceedings is large and most of the testimony and
evidence is more appropriate for a trademark infringement action than a trademark
opposition which is more limited in scope. Suffice it to say, we have carefully
considered all of the testimony and evidence, as noted above, introduced into the
record and all of the arguments presented by the parties. If testimony, evidence or
argument is not specifically discussed in the decision, we have not found it to be
persuasive.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), Applicant’s application files. Opposer attached to its
Notices of Opposition printouts from the electronic database records of the USPTO
showing current status and title of Opposer’s pleaded registrations, thereby making
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them of record. Trademark Rule 2.122(d)(1), 37 CFR § 2.122(d)(1). In addition, the
parties introduced the following testimony and evidence:
A. Opposer’s testimony and evidence.
1. Opposer’s first notice of reliance comprising certified copies of its
pleaded registrations showing the current status and title to Opposer’s pleaded
registrations;9
2. Opposer’s second notice of reliance on the following items:10
a. Applicant’s responses to Opposer’s Interrogatory Nos. 3, 8 and
12;11 and
b. Excerpts from the discovery deposition of Spiro Spireas, Ph.D.,
Applicant’s Chairman and CEO;12
3. Opposer’s third notice of reliance on excerpts from Applicant’s website
pursuant to Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB
2010) (“if a document obtained from the Internet identifies its date of publication or

9 54 TTABVUE. As noted above, Opposer’s pleaded registrations were made of record as
exhibits to the Notices of Opposition and, therefore, it was not necessary to introduce them
a second time through the notice of reliance.
10 Opposer also included Applicant’s responses to Opposer’s request for production of
documents. 56 TTABVUE 34 – 41. See also 59 TTABVUE 34. Trademark Rule
2.120(j)(3)(ii), 37 CFR § 2.120(j)(3)(ii), provides that “[a] party that has obtained documents
from another party through disclosure or under Rule 34 of the Federal Rules of Civil
Procedure may not make the documents of record by notice of reliance alone.” In view
thereof, we have not considered the documents attached to Applicant’s responses to
Opposer’s request for production of documents.
11 56 TTABVUE 5 – 10.
12 55 TTABVUE 12 – 34 and 56 TTABVUE 11 – 33. The testimony was designated “highly
confidential,” but it did not include any testimony that falls within the penumbra of
confidential, trade secret, or commercially sensitive.
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date that it was accessed and printed, and its source (e.g., the URL), it may be
admitted into evidence pursuant to a notice of reliance in the same manner as a
printed publication in general circulation in accordance with Trademark Rule
2.122(e).”);13
4. Opposer’s fourth notice of reliance on documents retrieved from the
Internet pursuant to Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d at 1039;14
5. Opposer’s fifth notice of reliance on documents retrieved from the
Internet;15
6. Testimony deposition of Dr. Gianfranco Fornasini, Opposer’s Senior
Vice President of Scientific Affairs, with attached exhibits;16
7. Testimony deposition of Nichol M. Muzrim, former employee of
Opposer who was Opposer’s Northeast Regional Sales Manager, Senior Manager for
the Oncology Portfolio, and Interim Vice President of Commercial Operations, with
attached exhibits;17 and
8. Opposer’s rebuttal notice of reliance on the following items:

13 57 TTABVUE 5-14.
14 58 TTABVUE. The Board, in Safer, explained that Internet documents introduced
through Trademark Rule 2.122(e) “are admissible only to show what has been printed, not
the truth of what has been printed.” Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d at
1040. Thus, for example, the evidence regarding Opposer’s revenues in the United States
derived from the consolidated financial statements (58 TTABVUE 6 – 21) is hearsay. The
probative value of the evidence in the consolidated financial statements is discussed more
fully in the fame analysis below.
15 59 TTABVUE 6 – 33.
16 63 TTABVUE 4 – 273.
17 64 TTABVUE 4 – 226.
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a. Documents retrieved from the Internet;18
b. Documents which Opposer purports to be USPTO records;19
c. Additional excerpts from the discovery deposition of Spiro Spireas,
Ph.D.;20
d. Excerpts from the discovery deposition of Nichol M. Muzrim introduced
into evidence pursuant to Trademark Rule 2.120(j)(4), 37 CFR § 2.120(j)(4),
purportedly “to make not misleading what was offered by [Applicant]”;21 and
e. Excerpts from the discovery deposition of Dr. Giancarlo Fornasini
introduced into evidence pursuant to Trademark Rule 2.120(j)(4), 37 CFR
§ 2.120(j)(4), purportedly “to make not misleading what was offered by
[Applicant].”22
B. Applicant’s testimony and evidence.
1. Applicant’s first notice of reliance on copies of Opposer’s registrations
for the marks CARNITOR (Reg. No. 1439777), MATULANE (Reg. No. 0897704),
and PROXEED (Reg. No. 2420415);23
2. Applicant’s second notice of reliance on the following items;
a. Copies of Opposer’s registrations for ABECELT (Reg. No.
1974363), ADAGEN (Reg. No. 1717411), CYSTARAN (Reg. No. 4407365),

18 77 TTABVUE 10 – 47.
19 77 TTABVUE 48 – 72.
20 76 TTABVUE 73 – 76. This portion of the transcript was designated as confidential.
21 77 TTABVUE 77 – 101.
22 77 TTABVUE 102 – 130.
23 66 TTABVUE 5 – 20.
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DEPOCYT (Reg. No. 2390316), ONCASPAR (Reg. No. 1809883), and VSL#3 (Reg.
No. 2653252);24
b. Copies of third-party registrations for marks with the term
“Sigma”;25
3. Applicant’s third notice of reliance on documents retrieved from the
Internet;26
4. Applicant’s fourth notice of reliance on Opposer’s responses to
Interrogatory Nos. 9, 15, and 23;27
5. Applicant’s fifth notice of reliance on excerpts from the discovery
deposition of Nichol M. Muzrim;28
6. Applicant’s sixth notice of reliance on excerpts from the discovery
deposition of Spiro Spireas, Ph.D., which should be considered in fairness so as not
to make misleading what was offered by Opposer;29 and
7. Testimony deposition of Spiro Spireas, Ph.D., with attached exhibits.30

24 67 TTABVUE 8 – 44.
25 67 TTABVUE 46 – 131.
26 68 TTABVUE 12 – 223.
27 69 TTABVUE 2 – 12.
28 71 TTABVUE is the publicly available transcript and 70 TTABVUE is the transcript that
contains what the parties designated as confidential testimony.
29 73 TTABVUE is the publicly available transcript and 72 TTABVUE is the transcript that
contains what the parties designated as confidential testimony.
30 75 TTABVUE is the publicly available transcript and 74 TTABVUE is the transcript that
contains what the parties designated as confidential testimony.
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III. Standing
Because Opposer has properly made of record its pleaded registrations,
Opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
IV. Priority
Because Opposer has properly made of record its pleaded registrations,
Section 2(d) priority is not an issue in the opposition as to the mark and the goods
covered by the pleaded registrations. King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). However, Opposer has also alleged
“proprietary trademark rights under common law, through the long and exclusive
use of Opposer’s trademarks on a wide variety of pharmaceutical preparations and
related services.”31 (emphasis added). Opposer did not further identify the services
in the Notice of Opposition or in its brief.
In a case involving asserted common-law rights, “the decision as to priority is
made in accordance with the preponderance of the evidence.” Hydro-Dynamics Inc.
v. George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir.
1987). As indicated above, Applicant filed its applications on April 13, 2009 and,
therefore, Opposer must prove that it used its mark on “pharmaceutical
preparations and related services” prior to that date unless Applicant can prove
earlier dates of first use. Zirco Corp. v. American Telephone and Telegraph Co., 21

31 1 TTABVUE 8.
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USPQ2d 1542, 1544 (TTAB 1991) (allegations of common law rights after the filing
date of applicant’s application are inadequate to support the ground of priority of
use and likelihood of confusion and, therefore, fail to state a claim upon which relief
can be granted). See also Embarcadero Technologies Inc. v. RStudio Inc., 105
USPQ2d 1825, 1833-84 (TTAB 2013). The April 13, 2009 filing date corresponds to
Applicant’s testimony and other evidence regarding the first use of its marks in
connection with pharmaceutical preparations. For example, Applicant’s website
lists April 2009 as the date Applicant launched its first product, Amiloride HCl
Tablets through its distributor Rising Pharmaceuticals, Inc.;32 Spiro Spireas
testified that Applicant’s distributor first started marketing Applicant’s products in
2009;33 and Applicant’s response to Opposer’s Interrogatory No. 12 identifying April
4, 2009 as the date Applicant commenced national sales through a wholesale
distributor.34
Based on the testimony of Spiro Spireas, which we characterize as definite,
consistent and without contradiction, see B.R. Baker Co. v. Lebow Bros., 150 F.2d
580, 66 USPQ 232, 236 (CCPA 1945) (oral testimony directed to establishing
priority “is obviously strengthened by corroborative documentary evidence, and it
should not be characterized by contradictions, inconsistencies, and indefiniteness
but should carry with it conviction of its accuracy and applicability”), we find that
Applicant began using its marks even earlier than its filing dates in connection with

32 68 TTABVUE 20 – 21.
33 75 TTABVUE 152 – 153.
34 56 TTABVUE 10.
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research and development services for other pharmaceutical companies, specifically,
in “the beginning of 2006.”
In the beginning of 2006, I believe, there were contracts
between [Applicant] and services that [Applicant] was
offering to other companies - - other pharmaceutical
companies.
So I would put it around the beginning of 2006, for sure,
that the logo and the name was used in papers, and in
invoices, and this kind of stuff - - with full collaboration
with other pharmaceutical companies - - in developing
products with them.35
There was no other testimony or evidence regarding Applicant’s first use of its
marks in connection with pharmaceutical preparations. Therefore, Applicant’s date
of first use for its marks in connection with pharmaceutical preparations is the
filing date of its applications, April 13, 2009.
The testimony that applicant began using its marks for services in the
beginning of 2006 requires further consideration. We note that Applicant’s
application to register SigmaPharm for services is based on intent to use but
Applicant’s applications to register the two SigmaPharm Laboratories marks for
services claim January 1, 2006 as a date of first use. The testimony thus is
consistent with two of the three applications. Applicant has not attempted to prove
dates earlier than those claimed in these two applications, so there is no
requirement that its proof of use be “clear and convincing.”36 On the other hand, a

35 75 TTABVUE 58 – 59.
36 Martahus v. Video Duplication Services, Inc., 3 F.3d 417, 27 USPQ2d 1846, 1852 n.7 (Fed.
Cir. 1993) (registrant who seeks to prove first use prior to the alleged date of first use has
“the burden of establishing that use by clear and convincing evidence instead of mere
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date of first use claimed in an application is not proof of first use and use must be
proven by competent evidence. While we find the Spireas testimony consistent with
asserted dates of use and competent evidence to establish Applicant’s use of the
SigmaPharm Laboratories marks for services as of “the beginning of 2006” we
cannot equate this testimony with a date of January 1, 2006. Pursuant to our
precedent, we interpret a phrase such as “the beginning of 2006” to be the last day
of that period.37 In the absence of more definite testimony as to the first use of the
SigmaPharm Laboratories marks for services, we consider the testimony
sufficient to establish use as of June 30, 2006. Certainly many would consider “the
beginning” of a year to mean the first week, month or quarter, but since we look to
the last day of an indefinite period, the most we can conclude is that applicant used
these two marks for services in the first half of the year, as the second half would no
longer be considered “the beginning” of a year.
The testimony and evidence establishes that Opposer has used and continues
to use its marks SIGMA-TAU PHARMACEUTICALS, INC. and the sigma logo on

preponderance of the evidence.”); Rockwood Chocolate Co. v. Hoffman Candy Co., 372 F.2d
552, 152 USPQ 599, 600 (CCPA 1967) (plaintiff’s assertion of a date of first use prior that
asserted in its application for registration, requires that “proof of such earlier date must be
clear and convincing and oral testimony given long after the date sought to be proved must
be carefully scrutinized.”).
37 See Bass Pro Trademarks LLC v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1856
(TTAB 2008) (“even if we used the February/March, 1995 date of respondent’s first use …
respondent’s date of first use can be no earlier than March 31, 1995, the last day of the
specified time period.”); Osage Oil & Transportation, Inc. v. Standard Oil Co., 226 USPQ
905, 911 n.22 (TTAB 1985) (evidence established first use in 1968-1969, therefore December
31, 1969 is date of first use); EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 213 USPQ
597, 598 n.5 (TTAB 1982) (documentary evidence showed first use in 1977, the month and
day were unknown, therefore, the Board could not presume any date earlier than the last
day of the proved period).
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all of its products. With respect to “pharmaceutical preparations,” Dr. Fornasini
testified as follows.38
Q. Now, based on your experience with [Opposer], does
[Opposer] use the sigma logo and the company
name in connection with its products and services?
* * *
A. Yes.
Q. How does it use that?
A. The name of the company and the logo in the label
of the products, in the box of the product and in the
package insert of the product, and we also have
official cover letters that contain name of the
company and logos that we are using for
communicating externally with other company,
other agency.39
Ms. Muzrim corroborates Opposer’s use of the name Sigma-Tau Pharmaceuticals,
Inc. with the sigma logo. Ms. Muzrim identified an invoice for VSL#3 dated
February 28, 2007 displaying both of the marks in Opposer’s pleaded
registrations.40 Ms. Muzrim also identified an invoice for MATULANE dated June
15, 2007 displaying both of the marks in Opposer’s pleaded registrations.41 Further,
Nichol Muzrim testified that all of Opposer’s marketing materials feature the
marks in Opposer’s pleaded registrations.42
The record also establishes the following facts:

38 63 TTABVUE 25.
39 63 TTABVUE 25.
40 70 TTABVUE 21 – 22 and 44.
41 70 TTABVUE 21 – 22 and 45.
42 64 TTABVUE 66.
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1. Opposer began selling CARNITOR for the treatment of carnitine
deficiency in 1985;43
2. Opposer began distributing MATULANE for the treatment of
Hodgkin’s lymphoma in 2000;44
3. Opposer has been selling VSL#3 since 2005.45 VSL#3 is not a
prescription drug.46 VSL#3 is “medical food” used to treat irritable bowel syndrome
and ulcerative colitis;47 and
4. Opposer has been selling ProXeed, a dietary supplement to improve
sperm quality, since 2000.48
Because we find that Opposer has used its marks SIGMA TAU
PHARMACEUTICALS, INC. and the sigma logo on all of its products, Opposer has
established common law rights in the two marks displayed in its pleaded
registrations, as those marks are used for Opposer’s VSL#3, a medical food for the
treatment of irritable bowel syndrome and ulcerative colitis, for Opposer’s
MUTALANE used to treat Hodgkin’s lymphoma, and for Opposer’s ProXeed, a
dietary supplement to improve sperm control.49

43 63 TTABVUE 44 and 70 TTABVUE 33.
44 63 TTABVUE 50 and 52 and 70 TTABVUE 33.
45 70 TTABVUE 34.
46 64 TTABVUE 107 and 70 TTABVUE 57 and 62.
47 58 TTABVUE 51, 63 TTABVUE 41, 48, 64 TTABVUE 50, and 70 TTABVUE 70.
48 70 TTABVUE 34 and 70 and 76 TTABVUE 96.
49 Opposer’s common law use of CARNITOR to treat carnitine deficiency is cumulative
because it is covered by its pleaded registrations which include pharmaceutical products to
treat carnitine deficiency.
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On the other hand, the testimony and evidence regarding the Opposer’s first
use of its marks for services is not as clear as the evidence and testimony for the
pharmaceutical products. Nichol Muzrim testified that Opposer offers a patient
assistance program “to help providers and their patients through resources such as
reimbursement support, patient assistance program, or co-pay assistance.”50
However, Ms. Muzrim did not testify as to when Opposer began offering those
services.
Dr. Fornasini testified about Opposer’s research and development of
pharmaceuticals. When asked what Opposer does to put a product on the market,
Dr. Fornasini testified that Opposer “is involved in the research and development
activity, which means that we design, study in animal and later in human being
and patients to generate information to establish the safety and efficacy of the
investigational product that could eventually one day be approved by Food and
Drug Administration.”51
When asked what kind of products and services Opposer provides, Dr.
Fornasini testified that Opposer “provide [sic] drug products for the treatment of
different diseases, and we also provide nonprescription product, like dietary
supplement or medical foods for direct consumer distribution.”52 He did not provide

50 64 TTABVUE 35 – 36.
51 63 TTABVUE 57.
52 63 TTABVUE 28. See also 63 TTABVUE 30 – 33 and 40 – 41 where Dr. Fornasini
identified specific drugs as examples of products or service used in connection with various
diseases.
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any specific testimony about services. The following questions and answers are
representative of the testimony from Dr. Fornasini:
Q. Earlier in your testimony you said that Sigma-Tau
Pharmaceuticals, Inc. provides products and
services in connection with supplements?
A. Yes.
Q. Okay. And what condition does Sigma Tau
Pharmaceuticals, Inc. provide supplements for?
A. So the dietary supplement [sic] are not used for
treat any disease, so are helping to restore
biological function or provide additional important
biological component for the wellbeing of a subject.
…53
Based on the testimony and evidence, Opposer conducts research and
development services to create new drugs for its own portfolio of pharmaceuticals;
that is, the research and development services are primarily for the benefit of
Opposer. The evidence in the record bearing on whether Opposer conducts research
and development services on a commercial basis for others is limited.54 See for
example, an undated press release from the Department of the Army, discussed in
more detail below, reporting that Opposer “will help finalize the research and
development of a new and promising treatment for severe malaria. … [Opposer] will
complete the research studies and prepare submission to the U.S. Food and Drug
Administration (FDA) for marketing clearance.”55

53 63 TTABVUE 34 – 35.
54 Dr. Fornasini testified that Opposer often collaborates with others to expedite the
development of a drug. 63 TTABVUE 57 – 59.
55 59 TTABVUE 10. See also 59 TTABVUE 26.
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Research and development is a normally expected and routine activity in
connection with manufacturing pharmaceuticals. It is not what the USPTO would
consider a registrable service. Cf. In re Dr. Pepper Co., 836 F.2d 508, 509, 5 USPQ2d
1207, 1208 (Fed. Cir. 1987) (“[I]t has become a settled principle that the rendering
of a service which is normally ‘expected or routine’ in connection with the sale of
one’s own goods is not a registrable service whether denominated by the same or a
different name from the trademark for its product.”); In re Landmark Commc’ns,
Inc., 204 USPQ 692, 695 (TTAB 1979) (noting that “to be separately recognizable, as
services, an applicant’s activity must be qualitatively different from anything
necessarily done in connection with the sale of goods”).
The above-noted Army press release was the basis of a news story in the
April 2007 issue of “The Point,” “a newsletter for and about the people of the U.S.
Army Medical Research and Material Command.”56 Subsequently, Opposer issued
an April 7, 2009 press release announcing that Opposer and Danisco BioActives
were developing a biologic drug to prevent necrotizing enterocolitis.57 Thus, even if
we assume that Opposer’s collaboration with the U.S. Army Medical Research and
Material Command to develop and then market a drug to treat malaria and a
partnership with another company to develop a drug to prevent necrotizing
enterocolitis constitute research and development services that create trademark
rights, April 2007 appears to be the earliest date on which Opposer conceivably

56 59 TTABVUE 12 – 13.
57 59 TTABVUE 25.
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could rely for its claim of priority based on services, rather than pharmaceutical
products.
Though extensive testimony was taken of Dr. Fornasini, that testimony did
not specifically address when Opposer first started using Opposer’s marks to
identify these asserted research and development activities. Dr. Fornasini testified
that when he joined Opposer in 1996, Opposer was using Sigma-Tau
Pharmaceuticals, Inc. for the name of the company and that he believed that the
name was used since 1987 in connection with Opposer’s products and services.58 He
also testified that he believed Opposer was using the “sigma logo” at the same time
it used the name Sigma-Tau Pharmaceuticals in connection with Opposer’s products
and services.59 Dr. Fornasini testified that “I cannot with certainty remember
whether this was 1987, 1988, but surely much earlier than the time I joined
[Opposer].”60
The testimony of Dr. Fornasini regarding the first use of marks for Opposer’s
services does not have the specificity necessary to establish when Opposer first used
its marks in connection with research and development services. There is no
testimony to the effect that as of a specific date, Opposer began using the marks in
its pleaded registrations to render research and development services in the field of
pharmaceutical preparations.

58 63 TTABVUE 22.
59 63 TTABVUE 23-24.
60 63 TTABVUE 26-27.
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Moreover, because there is no documentary evidence to corroborate Dr.
Fornasini’s testimony, such testimony “should carry with it conviction of its
accuracy and applicability.” B.R. Baker Co. v. Lebow Bros., 66 USPQ at 236 (“When,
in cases like the one at bar, the oral testimony of a single witness, testifying long
after the events happened, is relied upon to prove priority, such testimony, while
entitled to consideration, should be most carefully scrutinized.”). Dr. Fornasini’s
testimony does not establish Opposer’s first use of its marks in connection with
research and development services because he does not know when Opposer first
started using the SIGMA marks in connection with research and development
services. Significantly, even though he started to work for Opposer in 1996, Dr.
Fornasini did not testify that Opposer was rendering research and development
services at least as early as then.
It was incumbent for Opposer to have a witness testify from personal
knowledge as to the date of first use of Opposer’s marks in connection with research
and development services. If no such person is employed by Opposer, Opposer could
have attempted to prove its date of first use by authenticating business records kept
in the ordinary course of business which proves such use. Nat’l Blank Book Co. v.
Leather Crafted Products, 218 USPQ 827, 828 (TTAB 1983).
Since April 2007 therefore is the earliest date on which Opposer may rely in
connection with its research and development services, Opposer failed to prove prior
common law use of its marks in connection with any services. Therefore, the issue of
likelihood of confusion vis-à-vis Applicant’s services requires Opposer to prove that
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Applicant’s use of its marks in connection with the research and development
services is likely to cause confusion with the marks in Opposer’s pleaded
registrations used in connection with pharmaceutical products, for Opposer’s
evidence of prior use of its SIGMA marks for services is lacking.
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The fame of Opposer’s marks.
Opposer contends that the marks in its pleaded registrations are famous.61
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis
because famous marks enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v.
M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed.
Cir. 1992).
Fame may be measured indirectly by the volume of sales of and advertising
expenditures for the goods and services identified by the marks at issue, “the length

61 81 TTABVUE 7 – 8.
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of time those indicia of commercial awareness have been evident,” widespread
critical assessments and through notice by independent sources of the products
identified by the marks, as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and
1309. Although raw numbers of product sales and advertising expenses may have
sufficed in the past to prove fame of a mark, raw numbers alone may be misleading.
Some context in which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309.
Finally, because of the extreme deference that we accord a famous mark in
terms of the wide latitude of legal protection it receives, and the dominant role fame
plays in the likelihood of confusion analysis, it is the duty of the party asserting
that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW
Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
In its brief, Opposer argues that its marks are famous for the following
reasons:
1. “Opposer submits that its marks have been used in U.S. commerce
consecutively for at least twenty-five years.”;62

62 81 TTABVUE 37. As noted above, Opposer has been selling CARNITOR, a drug for
treating carnitine deficiency, with labels that display the marks in Opposer’s pleaded
registrations since 1985. Further, Nichol Muzrim testified that all of Opposer’s marketing
materials feature the marks in Opposer’s pleaded registrations. 64 TTABVUE 66.
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2. “U.S. sales of Opposer’s products have been substantial, generating for
example, in 2012 alone, more than one hundred million dollars in revenues, and
several hundred [sic] of millions in sales in previous years.”;63
3. “The current annual budget for marketing and advertising of products
bearing Opposer’s Marks is four million dollars, without including the cost of
marketing activities performed directly by Opposer’s employees.”;64
4. “Opposer’s Marks have been heavily advertised in numerous types of
media, including in print, point-of-sale displays, specialized newspaper, internet
websites, brochures, etc.”;65
5. “Every year, Opposer participates in at least 40 conferences, directed
at medical professionals, distributors, patient associations, etc.”;66
6. “Opposer is recognized by industry leaders as a prominent
pharmaceutical company and a main provider of related research and development
services.”;67

63 81 TTABVUE 37. This evidence was derived from Opposer’s consolidated financial
statements which, as noted above, is hearsay. Dr. Fornasini could not authenticate the
consolidated financial statements, which were prepared by others, 63 TTABVUE 87 – 100,
although he knew what they were and what they were supposed to represent. 63 TTABVUE
88. Likewise, Nichol Muzrim testified that she did not have any personal knowledge
regarding the revenue figures set forth in the consolidated financial statements. 64
TTABVUE 83.
64 81 TTABVUE 37. Nichol Muzrim testified that in 2012, Opposer’s marketing budget was
over $4 million. 64 TTABVUE 65.
65 81 TTABVUE 37.
66 81 TTABVUE 37. Nichol Muzrim testified that she “conducted and coordinated between
30 and 40 conferences a year. These conferences took place all over the United States. They
varied in size. Some could be as small as 50 attendees; some were as large as 15,000
attendees.” 64 TTABVUE 66 – 67.
67 81 TTABVUE 38.
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7. “Opposer has often been the recipient of industry awards for its
commitment to the research and manufacturing of life-saving and life-enhancing
medication.”;68 and
8. “Opposer has been prominently featured in mainstream media as well
as specialized publications, in connection with certain large, news-worthy financial
operations.”69
The underlying premise of Opposer’s claim to fame is that the marks in
Opposer’s pleaded registrations “are the company’s main source identifiers and they
appear on virtually all Opposer’s products and product packaging sold in the United
States, as well as in product inserts, on websites, press releases, marketing
materials [sic].”70 However, this premise is not supported by the evidence of record.
The marks in Opposer’s pleaded registrations are house marks that appear
on containers, packaging and advertising along with product marks such as
CARNITOR, MUTALANE, VSL#3, etc.71 Shown below is a package for Opposer’s
CARNITOR brand levocarnitine.72

68 81 TTABVUE 39.
69 81 TTABVUE 39.
70 81 TTABVUE 37.
71 68 TTABVUE 23 – 29.
72 63 TTABVUE 263 and 265
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Below is “an advertisement for Carnitor” from a print campaign.73

73 63 TTABVUE 69 and 253. The medical inserts also prominently feature the marks in
Opposer’s pleaded registrations. See 58 TTABVUE 22.
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Shown below is a print advertisement for VSL#3, an over-the-counter,
nonprescription medical food. “On this ad, you see the product, the description of
the product, as well as the fact that it is [Opposer’s] product.”74

74 64 TTABVUE 32.
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While the marks in Opposer’s pleaded registrations may appear on the
packaging and advertisements, the product name is the dominant element that
appears on packaging and advertising. This is because consumers focus on the
brand name or the generic name of the pharmaceutical products. In his discovery
deposition, Spiro Spireas testified that “[e]verybody buys products by name of the
product, either the brand name of the product or the generic name of the product.”75
“[W]hen a purchaser buys amiloride tablets, they buy it as the generic equivalent to

75 56 TTABVUE 13. The discovery deposition of Spiro Spireas was introduced into evidence
by Opposer. See also, 72 TTABVUE 9 (“the patient or the pharmacist or the doctor are not
driven by who makes it or sells it. … They don’t care about that. They care about Antabuse
or disulfiram, branded or generic.”).
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the brand product that I don’t remember the name of, and they don’t care where
they buy it from, because whatever they buy from, or whatever product they buy is
approved by the FDA.”76
The whole thing is driven by uniqueness of the product
and price of the product as compared to other products,
generic products, so that differentiating factors here are
not who manufactures the product. The differentiating
factors are the name of the brand name product.77
* * *
People are not taking your product because it’s
[Opposer’s]. People are taking your product because it’s
whatever, and the doctors who have prescribed the
product who have been educated by your sales force say
that this product is good for you.78
Dr. Fornasini testified that Opposer markets its pharmaceuticals by the
brand name.79 “[T]he practice of almost all pharmaceutical companies” is to “show
the product name in larger font as compared to other information that would appear
on the bottle.”80 Doctors prescribe pharmaceuticals using the brand name.81 Doctors
do not use the manufacturer’s name.82 Nichol Muzrim concurred that
pharmaceuticals are marketed and prescribed by their brand name.83

76 56 TTABVUE 15 – 16.
77 56 TTABVUE 16.
78 56 TTABVUE 17.
79 63 TTABVUE 126. See also 70 TTABVUE 59 (Q: So is this product known as Carnitor or
Sigma-Tau Pharmaceuticals, Inc.? A: It’s Carnitor SF.”).
80 63 TTABVUE 132 – 133.
81 63 TTABVUE 136 – 137 and 164.
82 63 TTABVUE 164.
83 64 TTABVUE 117 – 118 and 142.
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We find that Opposer is a successful company in the field of pharmaceutical
preparations specializing in pharmaceutical products for rare diseases. In addition,
Opposer sells a medical food product to treat ulcerative colitis and irritable bowel
syndrome and a dietary supplement to improve sperm quality. The evidence,
however, does not support finding that the marks in Opposer’s pleaded registrations
are famous. The testimony and evidence establishes that marketing of
pharmaceutical products and the revenues raised by their sale are based on
promotion of the products by their product names or generic names, not house
marks, such as those displayed in Opposer’s pleaded registrations.
In proving that a product mark used in connection with a famous house mark
was famous in its own right, the Federal Circuit made the following observation:
If a product mark used in tandem with a famous house
mark … has independent trademark significance, it
should not be a great burden to substantiate the point. …
[C]onsumer awareness of the product mark apart from
the fame of the associated house mark, whether
demonstrated directly or indirectly, is a reliable test of the
independence of the product mark.
Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1308. Likewise, if house
marks used in tandem with product marks have independent trademark
significance, it should not be a great burden for Opposer to prove the marketplace
strength of its house marks. In these consolidated proceedings, unlike Bose, there is
no evidence that the house marks (i.e., the marks displayed in Opposer’s pleaded
registrations) are recognized independently from their product marks.
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The record fails to show that the marks in Opposer’s pleaded registrations
have been “heavily advertised” and there is no evidence regarding the renown or
consumer awareness of the marks in Opposer’s pleaded registrations.84 For
example,
1. Though Opposer points to it as evidence of fame, in the PhRMA 2008
Annual Report, the photograph of Opposer’s COO is buried in the excerpt made of
record as one of many members of the PhRMA Board of Directors;85
2. Opposer introduced an excerpt from “The Point,” “a newsletter for and
about the people of the U.S. Army Medical Research and Material Command.”86 The
excerpt was a news article derived from a press release87 announcing that Opposer
was going to collaborate with the U.S. Army Medical Research and Material
Development Command to develop a new treatment for malaria. The author of the
article did not note anything about the reputation of Opposer, let alone the renown
of its marks. There is no evidence regarding the distribution of this newsletter and
how many people may have seen the news article.; and

84 Opposer introduced Internet evidence to show the “strength and historical use of
Opposer’s mark, and to show extensive third parties’ references to Opposer’s name and
trademarks in multiple publications, and in close association with the name of major
pharmaceuticals.” 59 TTABVUE 4.
85 59 TTABVUE 6 – 9. Moreover, as an industry publication, this has not been shown to be
the type of report that consumers of Opposer’s products, or even physicians prescribing
Opposer’s products, would be expected to see.
86 59 TTABVUE 12 – 13.
87 59 TTABVUE 10 – 11.
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3. An excerpt from the ASTMH website (astmh.org) touting the success of
that organization’s 57th annual meeting in December 2009.88 ASTMH thanked
Opposer as one on a list of 12 supporters.
This evidence shows that Opposer is an active member of the pharmaceutical
industry, not that the marks in its pleaded registrations are well known. In this
regard, Ms. Muzrim, Opposer’s witness, testified that, after 12 years in the
pharmaceutical industry,89 the first time she heard of Opposer was in the middle of
2009 when Opposer was attempting to acquire ONCASPAR, DepoCyt, ADAGEN,
and ABELCET from Enzon Pharmaceuticals.
We find that the evidence and testimony of record is insufficient to find that
the marks in Opposer’s pleaded registrations are famous or even well-known.
B. The number and nature of similar marks in use on similar goods and
services.

Applicant contends that “[n]ot only are there a substantial number of valid
and co-existing trademark registrations for trademarks that include the word
“SIGMA” in connection with pharmaceutical and other medical goods and related
services, but, such trademarks are actually in use.”90 Opposer, on the other hand,
points out that there is no evidence of any third-party use of the small Greek letter
“sigma” or that any of the third-party marks have any consumer recognition.91

88 59 TTABVUE 15 – 16.
89 70 TTABVUE 36 – 37.
90 83 TTABVUE 22.
91 81 TTABVUE 45 – 46.
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At the outset of the analysis of this du Pont likelihood of confusion factor, we
note that Sigma Chemical Company, a third party, filed a request for an extension
of time to oppose Opposer’s application to register the mark SIGMA-TAU.92 Sigma
Chemical Company owns Registration No. 0671723 for the mark SIGMA for
“biochemical and organic medicinal preparations.”93 Pursuant to agreement
between Opposer and Sigma Chemical Company, Opposer sought to amend the
drawing of its mark to SIGMA-TAU PHARMACEUTICALS, INC. from SIGMA-
TAU.94 The USPTO subsequently registered Opposer’s mark SIGMA-TAU
PHARMACEUTICALS, INC.
Although Opposer’s actions during prosecution of its application to resolve a
potential opposition are neither an “admission” nor a substitute for the Board
reaching its own ultimate conclusion as to likelihood of confusion, we find it to be a
fact “illuminative of shade and tone in the total picture confronting the decision
maker.” See Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198
USPQ 151, 154 (CCPA 1978). See also Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Stabilisierungsfonds fur Wein v. Zimmermann-Graeff KG, 209 USPQ 434, 436
(TTAB 1980) (finding opposer’s contrary opinions in prosecution while opposition
was pending “strongly illuminate the shade and tone of the total picture”).

92 70 TTABVUE 116.
93 67 TTABVUE 52.
94 70 TTABVUE 116.
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Applicant introduced the third-party registrations listed below:95
Mark Reg. No. Goods/Services
SIGMA
PHARMACEUTICALS
3621388 Wholesale distributorship services in the
fields of ophthalmic pharmaceuticals and
products
SIGMA 2069249 Ophthalmoscopes
SIGMA 0671728 Biochemical and organic medicinal
preparations
SIGMA-ALDRICH 3341087 Chemical compounds for use in the
manufacture of pharmaceutical
preparations; apparatus and instruments
for scientific laboratory research in the
chemical and biochemical fields; custom
manufacture of chemicals for use in the
manufacture of research pharmaceuticals;
product development, namely, development
of chemicals, compounds and ingredients
for pharmaceuticals96

4011310 Laboratory apparatus, namely, centrifuges
and components therefor, namely, angle
rotors, swing-out rotors with and without
windshield, buckets, lids, adapter or tubes
and bottles

95 67 TTABVUE 46 – 131. We normally would not consider 3590136 for the mark
SIGMACARE and design for medical treatment mattresses and other medical furniture
used for treating patients, Registration No. 3915422 for the mark SIGMACEPTOR for
pharmaceutical research services, or Registration No. 3018061 for the mark COMPACT
SIGMA for shock wave therapy apparatus because they were based on Section 44 of the
Trademark Act and not use in commerce. However, because applicant has also submitted
evidence of use of these marks, we have considered the marks in our analysis of third-party
use.
96 This third party also owns Registration No. 3443059 for the mark SIGMA-ALDRICH and
design for the above-noted services.
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Mark Reg.
No.
Goods/Services
SIGMAX 3846586 Orthopedic materials and articles, namely,
support bandages and bands for ankles, calves,
knees, thighs, backs, shoulders, elbows, fingers
and wrists; braces for limbs and joints for
orthopedic use; support bandages for protecting
muscles; elastic tubular bandages;
nonmedicated compresses; elastic bandages97
SIGMA 3184359 Orthopaedic joint implants; surgical
instruments for use with orthopaedic joint
implants
SIGMASPECTRUM 4087520 Computer software for database management
of drug catalogs and data logging for an
electronic medical device

3255569 Electronic storage of clinical data for remote
consultation by healthcare professionals in the
care of patients; software used by healthcare
professionals in the care of patients98
COMPACT SIGMA 3018061 Shock wave therapy apparatus, namely,
lithotripters

3590136 Therapeutic medical beds, mattresses, and
mattress overlays; medical stretchers; medical
examination tables for patients; medical
patient treatment chairs, namely, commode
chairs for medical patients
SIGMACEPTOR 3915422 Pharmaceutical and biopharmaceutical
discovery, research and development services,
namely, the discovery, research and product
development of pharmaceuticals and biologic
agents for the prevention and treatment of
cancer and human neurological and
neurodegenerative disorder

97 This third party also owns Registration 3839315 for the mark SIGMAX and design for
the same goods noted above.
98 This third party also owns Registration No. 355568 for the mark SIGMA POINT and the
upper case Greek letter SIGMA design, Registration No. 3345730 for the mark
SIGMACARE, and Registration No. 3255567 for the mark SIGMA HEALTH and the upper
case Greek letter Sigma, all registered for the same services noted above.
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Applicant confirmed that the marks in the listed third-party registrations,
including the marks registered under Section 44 of the Trademark Act 15 U.S.C.
§ 1126, are in use by introducing excerpts from the third-party websites listed
below:
1. Sigma Pharmaceuticals (sigmapharmaceuticals.com) advertising the
sale of “a full line of ophthalmic products.”99
2. Sigma-Aldrich (sigma-aldrich.com) featuring inter alia chemicals in
the field of life sciences.100 The Sigma-Aldrich website also advertises
“PharmaGrade” chemicals for biopharmaceutical manufacturing, including amino
acids and buffers.101
3. The Heine website (heine.com) promoting HEINE SIGMA 150
ophthalmoscopes for measuring pupil size.102
4. The DePuy website (depuy.com) promoting SIGMA knee implant
systems.103
5. The Sigma Zentifugen GmbH website (sigma-zentrifugen.de)
promoting that company’s laboratory centrifuges with applications for
biotechnology, life-science, medical diagnostics and pharmacological technology.104

99 68 TTABVUE 78.
100 68 TTABVUE 80.
101 68 TTABVUE 82 – 86.
102 68 TTABVUE 88 – 89.
103 68 TTABVUE 91 – 93.
104 68 TTABVUE 95 – 101.
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Although the website has a German URL, it provides contact information for the
company’s U.S. representative.105
6. The eHealth Solutions, Inc. website (sigmacare.com) advertising
medical records software and data management under the mark SigmaCare and
SigmaCare with an upper case Greek letter “sigma.”106
7. The Sigma-Care Development Co., Ltd. website (sigmabed.com)
advertising the sale of SIGMA-CARE hospital beds, emergency stretchers, overbed
tables and a shower trolley.107 While Sigma-Care Development Co. is a Taiwanese
company, the website indicates that it has a webpage for the United States and that
the company displayed its products at the FIME trade show in Miami, Florida,
August 8 – 10, 2012.
8. The Nippon Sigma Co., Ltd. website (sigmax.co.jp) advertising
SIGMAX splints, casting tape, support belts, knee, ankle and wrist supports,
cervical collars, compression devices, and knee braces.108 Although Nippon Sigma
Co. is a Japanese company using a Japanese URL, the website identifies Sigmax
America located in Newport Beach, California as the company’s contact in the
United States.

105 68 TTABVUE 101.
106 68 TTABVUE 103 – 106.
107 68 TTABVUE 108.
108 68 TTABVUE 110 – 116.
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9. The Anavex Life Sciences Corporation website (anavex.com) promoting
the SIGMACEPTOR discovery platform for drug development.109
The compounds emanating from the SIGMACEPTOR
Discovery Platform act through sigma receptors, a
relatively new class of receptors that is able to activate
multiple pathways and provide treatment solutions in
many types of diseases. We are at an appropriate stage to
evaluate the potential of compounds (ligands) that
activate these receptors to effective dosing, safety and
efficacy.110
10. The Baxter International, Inc. website (sigmapumps.com) advertising
the SIGMA Spectrum Infusion System for the use and maintenance of a drug
library for the application of medications.111
11. The Dornier MedTech website (dornier.com) advertising the
COMPACT SIGMA modular lithotripter “with a multi-functional patient table and
X-ray C-arm to create the complete solution for lithotripsy and endourological
procedures.”112
While the third-party registrations introduced by Applicant are not evidence
that those marks have been used, or that consumers have been exposed to them,
Applicant introduced evidence demonstrating that the marks are in use. The
Internet websites are of limited probative value because they give no indication as
to actual sales, when the mark was first used, and customer familiarity, Sports
Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001),

109 68 TTABVUE 118.
110 Id.
111 68 TTABVUE 121
112 68 TTABVUE 123.
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nonetheless, those websites “show that the public may have been exposed to those
internet websites and therefore may be aware of the advertisements contained
therein.” Rocket Trademarks Pty Ltd., v. Phard S.p.A., 98 USPQ2d 1066, 1072
(TTAB 2011).
While the term SIGMA is inherently distinctive when used in connection
with pharmaceutical products, the term SIGMA has been used and registered
numerous times by third parties for pharmaceutical products and other products in
the medical field serving to suggest that the term SIGMA is weak or not unique in
the field. See Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d at
1798 (TTAB 2001); Bost Bakery, Inc. v. Roland Industries, Inc., 216 USPQ 799, 801
n.6 (TTAB 1982); In re Sien Equipment Co., 189 USPQ 586, 588 (TTAB 1975) (the
suggestive meaning of the word “Brute” in connection with material handling
equipment explains the numerous third-party registrations incorporating that word
with other wording or material no matter how little additional significance they
may add to the word “Brute” per se); In re J. R. Carlson Laboratories, Inc. 183
USPQ 509, 510 (TTAB 1974).
C. The similarity or dissimilarity and nature of the goods and services.
As indicated above, Applicant is seeking to register its mark for the goods
and services set forth below:
Pharmaceutical preparations, namely, a drug delivery
system comprising solid dosage delivery agents and a
wide variety of therapeutic agents in molecular or
amorphous state, in the form of tablets, capsules and
powder dosage forms, prepared using company’s patented
technology platforms which will result into more
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bioavailable and stable dosage forms of therapeutic
agents for the treatment of hypertension,
hypercholesterolemia, depression, atherosclerosis, thyroid
deficiency syndrome, organ rejection, hepatitis and, HIV
and fungal infections, in International Class 5; and
Research and development of pharmaceutical products
and preparations for the treatment of hypertension,
hypercholesterolemia, depression, atherosclerosis, thyroid
deficiency syndrome, organ rejection, hepatitis and, HIV
and fungal infections, in International Class 42.
1. Pharmaceutical preparations/products.
The description of goods in Opposer’s pleaded registrations is
“pharmaceutical products for use in the treatment of carnitine deficiency and
cardiovascular disease,” in International Class 5.
Where, as here, likelihood of confusion is asserted with registered marks, the
issue is resolved on the basis of the goods named in the registrations and the goods
and services named in the applications at issue. Facts relative to the marks’ actual
use that Applicant may argue prevent likelihood of confusion cannot be taken into
consideration unless set forth in its application
The authority is legion that the question of registrability
of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.
Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
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As the Court of Customs and Patent Appeals, the predecessor of our primary
reviewing court, stated in Tuxedo Monopoly
Here, appellant seeks to register the word MONOPOLY
as its mark without any restrictions reflecting the facts in
its actual use which it argues on this appeal prevent
likelihood of confusion. We cannot take such facts into
consideration unless set forth in its application. Toro Co.
v. Hardigg Industries, Inc., 549 F.2d 785, 790, 193 USPQ
149, 155 (CCPA 1977.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981).
The goods of the parties, as defined by the description of goods in the
applications and registrations, are “pharmaceutical preparations” and
“pharmaceutical products” for the treatment of various conditions. “Pharmaceutical”
is a noun defined as “a drug or medicine.”113
A “drug” is defined as a “[t]herapeutic agent; any substance, other than food,
used in the prevention, diagnosis, alleviation, treatment, or cure of disease.”114
Opposer’s description of goods are pharmaceutical products (i.e., drugs or
medicine) used to treat inter alia cardiovascular disease. “Cardiovascular disease” is
defined as “any disease of the heart or blood vessels, including atherosclerosis,

113 Merriam-Webster online (Merriam-webster.com). 68 TTABVUE 12.
114 STEDMAN’S MEDICAL DICTIONARY, p. 585 (28th ed. 2006). The Board may take
judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
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cardiomyopathy, coronary artery disease, peripheral vascular disease, and
others.”115
Applicant’s description of goods are pharmaceutical preparations (i.e., drugs
or medicine) used to treat inter alia hypertension, hypercholesterolemia, and
atherosclerosis.
“Hypertension” is defined as “high blood pressure; transitory or sustained
elevation of systemic arterial blood pressure to a level likely to induce
cardiovascular damage of other adverse consequences.”116 The entry in STEDMAN’S
MEDICAL DICTIONARY also explains that “[b]ecause of its wide prevalence and its
impact on cardiovascular health, [hypertension] is recognized as a major cause of
disease and death in industrialized societies.” Hypertension is listed as type of
cardiovascular disease in the MANUAL OF CARDIOVASCULAR MEDICINE, p. 514
(3rd ed. undated) (“Unless promptly recognized and treated, hypertensive crisis can
lead to cardiovascular, renal, and central nervous system [CNS] organ disease and
death.”).117

115 TABER’S CYCLOPEDIC MEDICAL DICTIONARY, p. 395 (22nd ed. 2013). See also
STEDMAN’S MEDICAL DICTIONARY, p. 314 (cardiovascular).
116 STEDMAN’S MEDICAL DICTIONARY, p. 927. See also TABER’S CYCLOPEDIC MEDICAL
DICTIONARY, p. 1171 (“Hypertension is one of the major risk factors for coronary artery
disease, heart failure, stroke, peripheral vascular disease, kidney failure, and retinopathy.
… controlling [hypertension] … helps to prevent cardiovascular illnesses.”).
117 58 TTABVUE 29 – 30.
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“Atherosclerosis” is “characterized by irregularly distributed lipid deposits in
the intima of large and medium-sized arteries, causing narrowing of arterial lumens
and proceeding eventually to fibrosis and calcification.”118
“Hypercholesterolemia” is defined as “the presence of an abnormally large
amount of cholesterol in the blood.”119 Hypercholesterolemia is discussed as a type
of cardiovascular disease in the TEXTBOOK OF CARDIOVASCULAR MEDICINE, p.
514 (3rd ed. undated) (“[Hypercholesterolemia] is characterized by elevated L.D.L.-
C levels … with normal triglycerides and a family of hypercholesterolemia or
premature cardiovascular disease.”).120
We find that the term “cardiovascular disease” set forth in the description of
goods in Opposer’s pleaded registrations encompasses hypertension,
hypercholesterolemia, and atherosclerosis set forth in Applicant’s Class 5
description of goods and, therefore, Applicant’s description of goods in Class 5 which
includes “pharmaceutical preparations … for the treatment of … hypertension,
hypercholesterolemia, … atherosclerosis …” is in part legally identical to Opposer’s
description of goods comprising “pharmaceutical products for use in the treatment
of … cardiovascular disease.”

118 STEDMAN’S MEDICAL DICTIONARY, p. 174. See also TABER’S CYCLOPEDIC MEDICAL
DICTIONARY, p. 224 (“The most common form of arteriosclerosis, marked by cholesterol-
lipid-calcium deposits in the walls of arteries that may restrict blood flow. … If a plaque
within a blood vessel suddenly ruptures, the blood vessel may close and organs or tissues
may infarct.”
119 STEDMAN’S MEDICAL DICTIONARY, p. 918. See also TABER’S CYCLOPEDIC MEDICAL
DICTIONARY, p. 1162.
120 58 TTABVUE 32 – 334.
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2. Research and development services.
As indicated above, Opposer failed to prove that its common law use of the
marks in its pleaded registrations were used in connection with research and
development services prior to Applicant’s first use (at least as early as June 30,
2006), since April 2007 is the earliest date on which Opposer might conceivably rely.
Therefore, we analyze whether Applicant’s “research and development of
pharmaceutical products and preparations for the treatment of hypertension,
hypercholesterolemia, … [and] atherosclerosis” is related to Opposer’s
“pharmaceutical products for use in the treatment of … cardiovascular disease.”
Both parties conduct research and development for pharmaceutical products
and preparations, as well as, manufacturing such products.
Opposer introduced an excerpt from the PhRMA 2008 Annual Report.121
PhRMA is an acronym for the Pharmaceutical Research and Manufacturers of
America. Thus, PhRMA is an organization of pharmaceutical researchers and
manufacturers.
Also, Opposer introduced an excerpt from its website announcing its
acquisition of ONCASPAR, ADAGEN, DepoCyt, and ABELCET from Enzon
Pharmaceutical.122 The announcement described Enzon Pharmaceutical as “a
pharmaceutical company that has successfully conducted its own research, studying
new molecules for the treatment of rare diseases in the oncological field. The drugs

121 59 TTABVUE 6 – 9.
122 77 TTABVUE 41.
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acquired by [Opposer] are, in fact, indicated for the treatment of patients who fail to
respond to treatment with traditional drugs.” But this is a reference to research by
the acquired company to develop its own products. This evidence does not prove
that research services, as a separate marketable service for others, come from the
same source as pharmaceutical products.
In the record is Registration No. 3443059 for the mark SIGMA-ALDRICH
and design, owned by Sigma-Aldrich Biotechnology L.P., a third party, for
manufacturing chemicals for research pharmaceuticals and for the development of
chemicals for use in pharmaceuticals. The specific services are set forth below:
Custom manufacture of chemicals for use in the
manufacture of research pharmaceuticals and for use in
pharmaceutical research, in Class 40; and
Chemical and scientific research for others; product
development of chemicals, compounds and ingredients for
use in manufacture, pharmaceuticals, research and
scientific purposes, in Class 42.123
This evidence shows two different types of services are related; not that
pharmaceutical products are related to research and development services.
In view of the foregoing, we find the evidence of record is insufficient to prove
that Applicant’s “research and development of pharmaceutical products and
preparations for the treatment of hypertension, hypercholesterolemia, … [and]
atherosclerosis” is related to Opposer’s “pharmaceutical products for use in the
treatment of … cardiovascular disease.”124

123 67 TTABVUE 64.
124 This finding of fact is based on all the facts and circumstances made of record.
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D. Established, likely-to-continue channels of trade and classes of consumers.
1. Pharmaceutical products and preparations.
Because Applicant’s pharmaceutical preparations described in the
applications are in part legally identical to Opposer’s pharmaceutical products
described in Opposer’s pleaded registrations, we must presume that the channels of
trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
2. Research and development services.
There is no testimony, evidence or argument specifically directed to how
either party markets its research and development services. Because Opposer has
the burden of proof and Opposer failed to introduce any evidence regarding the
channels of trade or classes of consumers relating to pharmaceutical research and
development services, Opposer failed to meet its burden and the record is
insufficient to find that the Applicant’s research and development services move in
the same channels of trade and are directed to the same classes of consumers as
Opposer’s pharmaceutical products.
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E. Degree of care.
Section 20 cmt. h of the RESTATEMENT [THIRD] OF UNFAIR COMPETITION
(1995) provides the following explanation about the standard of consumer care:
The care expected of purchasers against which the
likelihood of confusion is measured is determined by the
marketing environment in which the goods or services are
ordinarily bought or sold. Some factors to be considered
are the manner in which the goods are purchased … the
manner in which the goods are marketed … and the class
of prospective purchasers.
Opposer has argued that even though consumers of pharmaceuticals (i.e.,
“hospitals, urgent care centers, other providers of medical services, and the
patients”) may exercise a high degree of care, that high degree of care does not
preclude them from mistaking one trademark for another.125 In addition, Opposer
has argued that because of the concern for the safety of consumers of
pharmaceutical products, the Board must guard against the possibility of a general
consumer mistakenly choosing the wrong product because of the mark used
thereon.126 In other words, we must assume a lesser degree of care so as to provide
better protection for a general consumer of a pharmaceutical product. However, as
discussed earlier in our analysis of whether the marks in Opposer’s pleaded
registrations are famous, the marketing of pharmaceuticals is based on the product
mark or generic name of the drug, not the house mark of the manufacturer. There is
no evidence or testimony that any of the ultimate consumers of pharmaceutical

125 81 TTABVUE 42.
126 81 TTABVUE 43.
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products consider the manufacturer of the drug in their purchasing decision or
when filling a prescription. Thus, the house marks at issue in these consolidated
proceedings have little if any effect on the degree of care exercised when purchasing
decisions are being made or prescriptions are being filled for the pharmaceutical
products in Class 5. The house marks at issue in this case may or may not be more
likely to be familiar to, and perhaps used by, professionals in the pharmaceutical or
medical fields. These consumers will be expected to exercise a greater degree of
care; and they need not be protected from possible harm in the same way that
ultimate consumers might need to be, when product marks are involved.
Further, even though there is no evidence or testimony regarding the
marketing of the research and development services, the house marks must play a
greater role in the marketing of research and development services than in the sale
of pharmaceuticals because the product names or generic drug names would not be
part of the marketing efforts in connection with the research and development
services.
Dr. Fornasini testified that Opposer develops products independently or
partners with other pharmaceutical companies or institutions such as the National
Institute of Health or universities.127 Presumably, pharmaceutical companies and

127 63 TTABVUE 57. See also 59 TTABVUE 10 (Department of Army press release
announcing that the U.S. Army Medical Material Development Activity Command was
partnering with Opposer to develop a drug to treat malaria – undated), 59 TTABVUE 25
(An April 7, 2009 press release announcing that Opposer and Danisco BioActives are
developing a biologic drug to prevent necrotizing enterocolitis), 59 TTABVUE 26 (an
announcement posted on the BioSpace website (biospace.com) that Dyax Corp. and Opposer
have partnered to develop and commercialize a drug for the treatment of hereditary
angioedema).
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research institutions and universities exercise a high degree of care when selecting
research partners. Accordingly, we find that in connection with research and
development services, the relevant consumers exercise a high degree of care.
F. The nature and extent of any reported instances of actual confusion.
As noted in the priority discussion, Applicant began using its marks in
connection with research and development services for other pharmaceutical
companies in 2006 and Applicant’s constructive date of first use for its marks in
connection with pharmaceutical preparations is the filing date of its applications,
April 13, 2009. Opposer began selling its CARNITOR pharmaceutical for the
treatment of carnitine deficiency in 1985. There have been no reported instances of
confusion.
Applicant asserts that “Opposer’s Marks and Applicant’s Marks have been co-
existing for approximately eight years (related to services offered) and for at least
five years (related to goods offered) being in the marketplace” without any instances
of confusion and this weighs against finding that there is a likelihood of
confusion.128 In response, Opposer contends that Applicant’s evidence of its first use
and continuous use of its marks is “for lack of better words, unclear and
ambiguous.”129

128 83 TTABVUE 51.
129 86 TTABVUE 23; 87 TTABVUE 23 (confidential submission although none of the
redacted information is confidential). We disagree with Opposer’s contention regarding the
credibility of Applicant’s witness Spiro Spireas regarding Applicant’s first use of its mark.
We find that his testimony is consistent with his interrogatory answers (56 TTABVUE 10).
Moreover, Opposer extensively cross-examined Dr. Spireas.
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The absence of any reported instances of confusion is meaningful only if the
record indicates appreciable and continuous use by Applicant of its marks for a
significant period of time in the same markets as those served by Opposer under its
marks. Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1660
(TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words,
for the absence of actual confusion to be probative, there must have been a
reasonable opportunity for confusion to have occurred. Barbara’s Bakery Inc. v.
Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the
absence of actual confusion depends upon there being a significant opportunity for
actual confusion to have occurred); Red Carpet Corp. v. Johnstown American
Enterprises Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v.
North American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of
actual confusion over a reasonable period of time might well suggest that the
likelihood of confusion is only a remote possibility with little probability of
occurring”).
The parties are not direct competitors.130 Opposer’s goods and services focus
on orphan drugs for diseases that afflict no more than 200,000 people.131 However,
Opposer also sells the over-the-counter products VSL#3, a medical food, and

130 63 TTABVUE 119.
131 63 TTABVUE 119.
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ProXeed, a dietary supplement.132 Opposer sells “to health care providers, which
may include physicians, nurses, nurse practitioners, pharmacist, directors of
pharmacy, hospital administrators, wholesalers, patients.”133 Opposer’s wholesalers
include McKesson Pharmacy Systems, Cardinal Healthy, Accredo and
Amerisourcebergen.134 VSL#3 is sold through physicians and retail chains.135 Those
retail chains include, inter alia, CVS, Walgreens, and Walmart.136
Applicant’s goods and services focus on generic pharmaceutical products.137 A
generic pharmaceutical is a biochemical equivalent to a branded product.138
Applicant sells its products through distributors, wholesalers, drug chains, and
group purchasing organizations, but not directly to patients.139 Group purchasing
organizations include independent pharmacies and hospitals who buy together to
reduce costs.140 Applicant’s wholesalers include Cardinal Health, McKesson and
Amerisourcebergen.141 Applicant also sells to drug chains such as CVS, Rite Aide,
Walgreens, and Walmart.142

132 70 TTABVUE 70 and 89; 63 TTABVUE 62.
133 64 TTABVUE 60 – 61 and 63; 69 TTABVUE 9.
134 64 TTABVUE 61 – 62; 63 TTABVUE 134 – 135.
135 64 TTABVUE 62.
136 58 TTABVUE 51.
137 75 TTABVUE 16.
138 75 TTABVUE 17.
139 75 TTABVUE 72, and 87 – 88.
140 75 TTABVUE 87 – 88.
141 75 TTABVUE 87.
142 75 TTABVUE 73 and 87.
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Based on this evidence, we find that there has been reasonable opportunity
for confusion to have occurred because the parties sell through the same
wholesalers and through some of the same retailers and that, therefore, the lack of
any reported instances of confusion weighs against finding that there is a likelihood
of confusion.
G. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, meaning, and commercial impression.

With the evidence discussed above in regard to the various du Pont factors in
mind, particularly the role of the marks in the sales process, the number of and
nature of similar marks in use on similar goods and services, and the lack of any
reported instances of confusion, we turn to the du Pont likelihood of confusion factor
focusing on the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. In re E. I. du Pont De
Nemours & Co., 177 USPQ at 567. In a particular case, “finding of similarity as to
any one factor (sight, sound or meaning) alone ‘may be sufficient to support a
holding that the marks are confusingly similar.’” In re White Swan Ltd., 8 USPQ2d
1534, 1535 (TTAB 1988) (citations omitted). See also In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that
“[t]he proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). See also San Fernando
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Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992).
1. Opposer’s mark SIGMA-TAU PHARMACEUTICALS, INC.
One of the marks in Opposer’s pleaded registrations is SIGMA-TAU
PHARMACEUTICALS, INC., in typed drawing format. Opposer disclaimed the
exclusive right to use “Pharmaceuticals, Inc.”
Applicant’s marks include SigmaPharm (standard character form),
SigmaPharm Laboratories (standard character form), and SigmaPharm
Laboratories and design shown below.143

Applicant disclaimed the exclusive right to use the word “Laboratories” where it
appears in the marks.
With respect to Applicant’s mark SigmaPharm Laboratories and design,
while we must consider the mark in its entirety, we recognize that it is
SigmaPharm Laboratories that is likely to be impressed upon the purchaser’s
memory because it is the words that they will remember and use. In re Viterra Inc.,
671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 and 1911 (Fed. Cir. 2012) (citing CBS

143 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP
§ 807.03(i) (April 2014).
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Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983));
Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218
USPQ 390 (Fed. Cir. 1983); Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107
USPQ2d 1424, 1431 (TTAB 2013).
While the marks cannot be dissected and considered piecemeal, 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). See also Stone Lion Capital Partners, 110
USPQ2d at 1161.
Because Opposer disclaimed the exclusive right to use the descriptive term
“Pharmaceuticals, Inc.” and Applicant disclaimed the exclusive right to use the
descriptive term “Laboratories,” the term SIGMA-TAU is the dominant element of
Opposer’s mark and the term SigmaPharm is the dominant element of Applicant’s
marks. It is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser
Golf, 55 USPQ2d at 1846, quoting, In re National Data Corp., 224 USPQ at 752
(“Regarding descriptive terms, this court has noted that the descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
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(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
Our analysis, therefore, ultimately focuses on the similarity or dissimilarity
of SIGMA-TAU as part of Opposer’s mark SIGMA-TAU PHARMACEUTICALS,
INC. and SigmaPharm as part of Applicant’s marks SigmaPharm, SigmaPharm
Laboratories and SigmaPharm Laboratories and design. The marks obviously
are somewhat similar in terms of sight, sound, connotation and commercial
impression because both parties’ marks include the word SIGMA. Just as obviously,
the marks are dissimilar in terms of sight, sound, connotation and commercial
impression because Opposer uses “Tau” as a suffix attached to the word “Sigma”,
while Applicant uses the abbreviation “Pharm” as a suffix.
Where, as here, there are multiple users of the term “Sigma” in the
pharmaceutical and medical field, it is very important that the marks be considered
in their entireties. Opposer’s use of TAU as a suffix attached to the word “Sigma” is
significant because it serves to indicate a different origin from Applicant’s
SigmaPharm marks which use “Pharm” as a suffix.
In none of the marks of the parties, is the common term “Sigma” set out
separately or emphasized as the most prominent element of the marks.144 A
comparison of the marks does not give that impression that the term “Sigma” is
being emphasized over any other part of the marks. Thus, to the extent that a

144 We disagree with Opposer’s argument that word “Sigma” is the most prominent element
of the marks because it is the first part of the marks. 81 TTABVUE 29. “The issue of
whether a portion of a mark is dominant turns on the facts of each case,” Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 695 (CCPA 915), not as a matter of law.
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doctor, patient, distributor, or retailer of pharmaceuticals looks to the source of a
pharmaceutical or to a house mark of the parties in making purchasing decisions,
the purchasers focus on the entire mark and, in such cases, the difference between
SIGMA-TAU and SigmaPharm is significant. The lack of any reported instances of
confusion after a reasonable opportunity of confusion to have occurred supports this
finding of fact.
In considering the marks (SIGMA-TAU PHARMACEUTICALS, INC. versus
SigmaPharm, SigmaPharm Laboratories, and SigmaPharm Laboratories
and design) in their entireties, we find that the dissimilarities in appearance,
sound, connotation and commercial impression outweigh the similarities.
2. Opposer’s design mark
This leaves the comparison of Opposer’s design mark , which is
described in the registration as the Greek letter “sigma,” with Applicant’s marks
SigmaPharm, SigmaPharm Laboratories, and Applicant’s composite mark
shown below which is described as “the Greek character ‘phi’ inside the Greek
character ‘sigma’”:

A word and the symbol therefor are legal equivalents and must be regarded
as having the identical significance in determining the question of likelihood of
confusion. Shunk Manufacturing Company v. Tarrant Manufacturing Company,
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318 F.2d 323, 137 USPQ 881, 883 (CCPA, 1963); Squirrel Brand Co. v. Green Gables
Investment Co., 223 USPQ 154, 155 (TTAB 1984); In re Endevco Corp., 144 USPQ
362, 365 (TTAB 1964).
As noted above, Opposer registered its lower case Greek letter “sigma” mark
with knowledge that Sigma Chemical Company owned a registration and uses the
mark SIGMA for “biochemical and organic medicinal preparations,” thus, indicating
that at least as of the time of registration, Opposer believed that its lower case
Greek letter “sigma” mark for “pharmaceutical products for use in the treatment of
carnitine deficiency and cardiovascular disease” was not likely to cause confusion
with the mark SIGMA for “biochemical and organic medicinal preparations.” Cf.
Plus Products v. Natural Organics, Inc., 204 USPQ 773, 779 (TTAB 1979) (“A
number of different trademark owners have believed, over a long interval of time,
that various PLUS marks can be used and registered side by side without causing
confusion provided there are minimal differences between the marks.”); Jerrold
Electronics Corp. v. The Magnavox Company, 199 USPQ 751, 758 (TTAB 1978)
(third-party registrations “reflect a belief, at least by the registrants, who would be
most concerned about avoiding confusion and mistake, that various ‘STAR’ marks
can coexist provided that there is a difference.”). In this regard, the Federal Circuit
has often admonished that those in the industry know better than Examining
Attorneys and judges the conditions in the market. See Amalgamated Bank of New
York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308
(Fed. Cir. 1988), quoting du Pont, 177 USPQ at 568:
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Decisions of men who stand to lose if wrong are normally
more reliable than those of examiners and judges.
and
It can safely be taken as fundamental that reputable
businessmen-users of valuable trademarks have no
interest in causing public confusion.
See also Bongrain International (American) Corp. v. Delice de France Inc., 811 F.2d
1479, 1 USPQ2d 1775, 1778 (Fed. Cir. 1987) (“[I]n trademark cases involving
agreements reflecting parties’ views on the likelihood of confusion in the
marketplace, that [parties] are in a much better position to know the real life
situation than bureaucrats or judges and therefore such [consent] agreements may,
depending on the circumstances, carry great weight.”).
Having already found that Applicant’s word marks SigmaPharm and
Sigma Pharm Laboratories are not so similar to Opposer’s word mark SIGMA-
TAU PHARMACEUTICALS, INC. as to support a conclusion that confusion is
likely, and having found that Opposer’s word mark SIGMA-TAU
PHARMACEUTICALS, INC. is closer to Applicant’s word marks than Opposer’s
design mark, we likewise find that Applicant’s marks SigmaPharm and
SigmaPharm Laboratories are not similar enough to Opposer’s design mark to
support a conclusion that confusion is likely.
This leaves Applicant’s composite mark. While we noted above that in the
case of a composite mark containing both words and a design, the word portion is
normally accorded greater weight because purchasers will use the literal portion to
request the goods or services, this does not mean that the design portion of the
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mark may be ignored. We assess the similarity of any two marks on a case-by-case
basis. In re Viterra, 101 USPQ2d at 1910. In this case, that assessment necessarily
takes into account that we are comparing design elements, as well as the term
SigmaPharm Laboratories. Here, the design portion of Applicant’s mark creates
a commercial impression that is distinct from the literal portion of the mark.
The purchasers and prospective purchasers who know the Greek alphabet
will recognize Opposer’s mark as the Greek letter “sigma” and Applicant’s mark as
the Greek letters “sigma phi” used in connection with SigmaPharm Laboratories.
Since the Greek letters are the legal equivalents of the terms they represent, to
consumers who recognize the Greek alphabet, the term “sigma” is not particularly
unique or distinctive in connection with pharmaceuticals and other medical
equipment, because of the demonstrated prevalence of SIGMA marks. In view
thereof, these consumers would not perceive the marks to be similar.
On the other hand, to purchasers and prospective purchasers who are not
familiar with the Greek alphabet, the designs are simply logos acting as indicia of
origin for the respective goods or services. In this situation, we focus on the
recollection of the average purchaser of the good involved, who normally retains a
general rather than a specific impression of trademarks. See L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012). “In this regard, consideration must be given
to the fact that a person’s recollection of design marks is often imprecise and of a
vague or hazy nature.” Freedom Federal Savings and Loan Association v. Heritage
Federal Savings and Loan Association, 210 USPQ 227, 231 (TTAB 1981). Under
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these circumstances, the analysis is determined on the basis of the visual similarity
of the marks.
Under this second scenario, Opposer’s mark is an oval with a horizontal line
extruding from the top (if the line is recognized) within a box. The design element of
Applicant’s mark is a concentric oval with a horizontal line extruding from the top
(if the line is recognized) with a vertical line through the center. In comparing the
marks, we find that the differences in the marks outweigh the similarities.
H. “Any other established fact probative of the effect of use.”
As noted throughout this decision, each case must be decided on its own
specific facts. “This final factor accommodates the need for flexibility in assessing
each unique set of facts.” In re Strategic Partners Inc., 102 USPQ2d 1397, 1399
(TTAB 2012). Opposer contends that in these proceedings “a lesser quantum of
confusing similarity is required because the products are drugs and medicinal
preparations.”145 Applicant argues to the contrary that the facts in this case do not
require a “greater care standard” because the marks at issue are house marks, not
trademarks for pharmaceutical products.146 The end users of pharmaceutical
products may need to be familiar with brand names and generic names for
particular drugs they may be prescribed but would not rely on house marks to
differentiate prescription products or guard against drug interactions. If such
product marks or generic drug names were here involved, the standard of care

145 81 TTABVUE 12 and 42 – 45.
146 83 TTABVUE 28 – 29.
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argued by Opposer to be applicable might be significant; but because we deal with
house marks, that are more likely to be significant to prescribing physicians and
health care providers, we find the test argued by Opposer to be inapplicable. The
test concerns itself with errors that may be made by ultimate consumers of
medicines and prescribers and health care providers would exercise a higher degree
of care.
Labels for pharmaceuticals must have inter alia the product name, the NDC
number recognized by the FDA, generic chemical name, and the name of the
manufacturer.147 Applicant’s witness Spiro Spireas provided the following testimony
about pharmaceutical labels:
Q. Is it the practice and requirement to have the
product name larger than any of the other
information on the pharmaceutical label?
A. That’s not only the practice, that’s also the law - -
both, the law and the practice - - that the biggest
name, and in the most obvious position, has to be
the name of the product contained in the container
that the label is affixed to.148
* * *
A. … But I must say this: It is the law, that the name
of the chemical - - the actual chemical name of the
product - - has to be written underneath the
branded product.
So I have knowledge - - and a pharmacist like
myself will have knowledge - - of what is the
chemical in this product immediately under the
branded name product - - the branded name.

147 75 TTABVUE 38.
148 75 TTABVUE 47.
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So the chemical is levocarnitine; and the branded
name is Carnitor®. So that’s established
nomenclature.149
* * *
A. Because the laws says that you have to put the
generic chemical name of the drug contained in the
tablets on the label in big letters - - big-size letters,
so people can see and they are not confused.
Anything else would be misbranding.
Q. Why doesn’t the name and logo for [Applicant]
appear on the front of the bottle?
A. Because the way the label is affixed, we are at the
bottom, because we are the manufacturers.
And so, when the label turns around, it goes in the
back of the bottle.150
* * *
Q. Are pharmaceutical companies, such as [Applicant],
required by law to indicate on the bottle what the
manufacturer is of the drugs?
A. Yes.
* * *
So if there is any problem with this product in the
future, they can reference directly and come to
us.151
The testimony of Opposer’s witnesses corroborates the testimony of Spiro
Spireas regarding labeling. Dr. Fornasini testified that pharmaceutical products are

149 75 TTABVUE 51 – 52. See the CARNITOR package in the fame analysis supra.
150 75 TTABVUE 63.
151 75 TTABVUE 63 – 64.
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marketed and sold under their brand names, not their manufacturer’s name,152 and
that the brand names such as ADAGEN or MATULANE prominently appear on
packaging.153
Nichol Muzrim testified that each of Opposer’s products include the product
name and the house mark.
Q. How did [Opposer] identify those products with the
company Sigma-Tau Pharmaceuticals?
A. Each commercial product had, whether it was in
print campaigns, digital campaigns, or the actual
product packaging, had the product name, its
generic name, as well as the Sigma-Tau
Pharmaceuticals logo and name.154
With respect to the standard of care or quantum of evidence required in
pharmaceutical cases, the purpose is to avoid mistaking one drug for another
because of the name.
And where, as here, the marks are used in connection
with pharmaceutical preparations and, in particular,
prescription items, the degree to which a subsequently
used mark may approach a previously used mark is
narrowly drawn to assure that a situation cannot arise
that could, because of the identity of the marks, lead
individuals to take one product in lieu of the desired or
prescribed product, with harmful or dangerous results.
Merck & Co. v. Abbot Laboratories, 210 USPQ 605 (TTAB 1981).

152 63 TTABVUE 125 – 126, 164.
153 63 TTABVUE 132.
154 64 TTABVUE 16.
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The cases in which the Board and our reviewing courts have applied a higher
standard of care involve product marks and not manufacturer’s house marks. For
example,
1. Glenwood Laboratories, Inc. v. American Home Products Corp., 455
F.2d 1384, 173 USPQ 19 (CCPA 1972).
American Home Products Corporation filed an application to register
MYOCHOLINE for a medicinal preparation for treatment of dysphagia, abdominal
distention, gastric retention, and urinary retention which was opposed by Glenwood
Laboratories, Inc. based on its mark MYSOLINE for an anti-convulsant drug.
2. Clifton v. Plough, Inc., 341 F.2d 934, 144 USPQ 599 (CCPA 1965).
C.L. Clifton, Sr. filed an application to register NUMOL for a pharmaceutical
product for the relief of coughs, colds and bronchial irritation which was opposed by
Plough, Inc. based on its mark NUJOL for mineral oil for chemical, medicinal and
pharmaceutical uses.
3. Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301 (TTAB 2004).
Anticancer, Inc. registered the mark ONCASE for therapeutic compositions
containing reagents for in vivo anticancer use which Alfacell Corporation petitioned
to cancel based on its mark ONCONASE for pharmaceuticals, namely, cancer-
treating drugs.
4. Merck & Co. v. Abbot Laboratories, 210 USPQ 605.
Abbot Laboratories filed an application for A-HYRODCORT for an anti-
inflammatory product which was opposed by Merck & Co. based on its mark
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HYDROCORTONE for a hormonal substance used in the treatment of collagen,
allergic and other diseases.
5. Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980).
Alza Corporation filed an application for CHRONOMER for medical grade
polymeric membrane being a biodegradable disposing medium and sold as an
inactive drug which was opposed by Schering Corporation based on its marks
CHRONOTAB and CHRONOSULE for timed release pharmaceutical preparations.
Accordingly, based on the facts and circumstances presented on this record,
any confusion that might arise from the use of the marks at issue in these cases will
not result in patients taking the wrong drugs. That being said, the Board takes
great care to review all of the evidence made of record and to consider all of the
arguments made by the parties to reach the correct decision.
I. Balancing the factors.
Despite finding the goods are in part identical and the presumption that they
move in the same channels of trade and are sold to the same classes of consumers,
because we find that the marks are not similar, there are multiple users of the term
“Sigma” in the relevant industry, and there have been no reported instances of
confusion even after a reasonable opportunity for confusion to have occurred, we
find that Applicant’s marks for the goods and services set forth therein are not
likely to cause confusion with the marks in Opposer’s pleaded registrations.
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VI. False Suggestion of a Connection
To prevail on its Section 2(a) claim for false suggestion of a connection,
Opposer must prove: (1) Applicant’s marks are the same as or a close approximation
of Opposer’s previously used name or identity; (2) Applicant’s mark would be
recognized as such by purchasers, in that the marks points uniquely and
unmistakably to Applicant; (3) Opposer is not connected with the goods and services
that are sold or will be sold by Applicant under its mark; and (4) that Opposer’s
name or identity is of sufficient fame or reputation that when Applicant’s marks are
used in connection with Applicants’ goods and services, a connection with Opposer
would be presumed. See Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).
See also Bd. of Trs. of Univ. of Ala. v. Pitts, 107 USPQ2d 2001, 2025 (TTAB 2013);
Boston Red Sox, 88 USPQ2d 1581, 1593 (TTAB 2008); Hornby v. TJX Companies
Inc., 87 USPQ2d 1411, 1424 (TTAB 2008); L. & J.G. Stickley Inc. v. Cosser, 81
USPQ2d 1956 (TTAB 2007).
Opposer’s name is Sigma-Tau Industrie Farmaceutiche Riunite S.p.A. It does
business in the United States through its subsidiary Sigma-Tau Pharmaceuticals,
Inc. which uses the marks in Opposer’s pleaded registrations.155 Thus, Opposer’s
identity in the United States is Sigma-Tau Pharmaceuticals, Inc.
The similarity required for a “close approximation” is akin to that required
for a likelihood of confusion under Section 2(d) and is more than merely “intended to
refer” or “intended to evoke.” The accused marks must do more than simply “bring

155 63 TTABVUE 18 and 25.
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to mind” Opposer’s identity. Bd. of Trs. of Univ. of Ala. v. Pitts, 107 USPQ2d at
2027. For the same reasons we found that Applicant’s marks are not similar to
Opposer’s marks for purposes of the likelihood of confusion analysis, we find here
that Applicant’s marks are not a close approximation of Opposer’s identity and,
therefore, it cannot be “unmistakably associated” with Opposer’s identity, nor do
they point uniquely to Opposer.
There is no real dispute in these cases as to the fact that Applicant is not
connected with the activities performed by Opposer under the marks.
For the reasons we found that Opposer’s marks are not famous and, in fact,
are not well-known in the pharmaceutical industry, we find that Opposer’s marks
are not of sufficient fame or reputation that when Applicant’s marks are used in
connection with Applicant’s goods and services a connection with Opposer will be
presumed.
After considering all of the evidence of record in connection with the Section
2(a) false suggestion of a connection factors, we find that Applicant’s marks do not
falsely suggest a connection with Opposer.
Decision: The oppositions are dismissed on the grounds of priority of use
and likelihood of confusion under Section 2(d) of the Trademark Act and on the
ground that Applicant’s marks falsely suggest a connection with Opposer under
Section 2(a) of the Trademark Act.