Sigma-Tau Industrie Farmaceutiche Riunite S.p.A.v.SigmaPharm Laboratories, LLCDownload PDFTrademark Trial and Appeal BoardFeb 9, 2015No. 91196802 (T.T.A.B. Feb. 9, 2015) Copy Citation 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, Opposition No. 91196802 Opposition No. 91196807 2 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). Opposition No. 91196802 Opposition No. 91196807 3 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. Opposition No. 91196802 Opposition No. 91196807 4 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. Opposition No. 91196802 Opposition No. 91196807 5 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. Opposition No. 91196802 Opposition No. 91196807 6 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 Opposition No. 91196802 Opposition No. 91196807 7 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. Opposition No. 91196802 Opposition No. 91196807 8 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. Opposition No. 91196802 Opposition No. 91196807 9 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. Opposition No. 91196802 Opposition No. 91196807 10 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. Opposition No. 91196802 Opposition No. 91196807 11 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. Opposition No. 91196802 Opposition No. 91196807 12 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. Opposition No. 91196802 Opposition No. 91196807 13 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 Opposition No. 91196802 Opposition No. 91196807 14 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). Opposition No. 91196802 Opposition No. 91196807 15 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. Opposition No. 91196802 Opposition No. 91196807 16 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. Opposition No. 91196802 Opposition No. 91196807 17 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. Opposition No. 91196802 Opposition No. 91196807 18 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. Opposition No. 91196802 Opposition No. 91196807 19 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. Opposition No. 91196802 Opposition No. 91196807 20 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. Opposition No. 91196802 Opposition No. 91196807 21 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 Opposition No. 91196802 Opposition No. 91196807 22 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. Opposition No. 91196802 Opposition No. 91196807 23 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. Opposition No. 91196802 Opposition No. 91196807 24 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. Opposition No. 91196802 Opposition No. 91196807 25 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 Opposition No. 91196802 Opposition No. 91196807 26 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. Opposition No. 91196802 Opposition No. 91196807 27 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. Opposition No. 91196802 Opposition No. 91196807 28 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.”). Opposition No. 91196802 Opposition No. 91196807 29 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. Opposition No. 91196802 Opposition No. 91196807 30 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. Opposition No. 91196802 Opposition No. 91196807 31 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. Opposition No. 91196802 Opposition No. 91196807 32 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. Opposition No. 91196802 Opposition No. 91196807 33 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. Opposition No. 91196802 Opposition No. 91196807 34 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. Opposition No. 91196802 Opposition No. 91196807 35 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. Opposition No. 91196802 Opposition No. 91196807 36 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. Opposition No. 91196802 Opposition No. 91196807 37 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. Opposition No. 91196802 Opposition No. 91196807 38 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. Opposition No. 91196802 Opposition No. 91196807 39 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 Opposition No. 91196802 Opposition No. 91196807 40 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). Opposition No. 91196802 Opposition No. 91196807 41 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). Opposition No. 91196802 Opposition No. 91196807 42 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. Opposition No. 91196802 Opposition No. 91196807 43 “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. Opposition No. 91196802 Opposition No. 91196807 44 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. Opposition No. 91196802 Opposition No. 91196807 45 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. Opposition No. 91196802 Opposition No. 91196807 46 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. Opposition No. 91196802 Opposition No. 91196807 47 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. Opposition No. 91196802 Opposition No. 91196807 48 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). Opposition No. 91196802 Opposition No. 91196807 49 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. Opposition No. 91196802 Opposition No. 91196807 50 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. Opposition No. 91196802 Opposition No. 91196807 51 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. Opposition No. 91196802 Opposition No. 91196807 52 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 Opposition No. 91196802 Opposition No. 91196807 53 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). Opposition No. 91196802 Opposition No. 91196807 54 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) Opposition No. 91196802 Opposition No. 91196807 55 (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. Opposition No. 91196802 Opposition No. 91196807 56 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, Opposition No. 91196802 Opposition No. 91196807 57 318 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: Opposition No. 91196802 Opposition No. 91196807 58 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 Opposition No. 91196802 Opposition No. 91196807 59 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 Opposition No. 91196802 Opposition No. 91196807 60 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. Opposition No. 91196802 Opposition No. 91196807 61 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. Opposition No. 91196802 Opposition No. 91196807 62 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. Opposition No. 91196802 Opposition No. 91196807 63 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. Opposition No. 91196802 Opposition No. 91196807 64 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 Opposition No. 91196802 Opposition No. 91196807 65 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. Opposition No. 91196802 Opposition No. 91196807 66 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. Opposition No. 91196802 Opposition No. 91196807 67 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. Copy with citationCopy as parenthetical citation