SmithKline Beecham Corp.v.Xechem, Inc.

Trademark Trial and Appeal Board

Dec 18, 1998

No. 91102846 (T.T.A.B. Dec. 18, 1998)

Paper No. 18
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 18, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
SmithKline Beecham Corporation
v.
Xechem, Inc.
_____
Opposition No. 102,846
to application Serial No. 75/000,905
filed on October 3, 1995
_____
Karol A. Kepchar of Panitch Schwarze Jacobs & Nadel, P.C.
for SmithKline Beecham Corporation
Joel E. Siegel of Dressler, Goldsmith, Shore & Milnamow,
Ltd. for Xechem, Inc.
______
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Xechem, Inc. to
register the mark PAXETOL for “pharmaceutical preparations
for use in the treatment of cancer”.1

1 Application Serial No. 75/000,905, was filed on October 3,
1995, based on an alleged bona fide intent to use the mark in
commerce.
Opposition No. 102846
2
SmithKline Beecham Corporation has opposed the
application, alleging that since February 1993 opposer has
continuously used the mark PAXIL for pharmaceuticals,
namely, antidepressants; that opposer’s mark PAXIL used on
antidepressants has become well known to the relevant public
and trade; that pharmaceutical companies “customarily market
and sell a variety of goods for the treatment of a variety
of illnesses and symptoms”; that patients receiving
treatment for cancer often require treatment for depression
as well, and therefore doctors may prescribe and patients
may take concurrently pharmaceuticals to treat cancer and
depression; and that applicant’s mark, if used on its goods,
would so resemble opposer’s previously used and registered
mark, PAXIL for “pharmaceuticals, namely, antidepressants”2,
as to be likely to cause confusion, mistake, or deception.
Applicant denied the salient allegations of the notice
of opposition.
The record consists of the pleadings; a status and
title copy of opposer’s pleaded registration submitted under
a notice of reliance; the testimony of Bonnie Rossello,
opposer’s product director - PAXIL; opposer’s notices of
reliance on certain of applicant’s answers to opposer’s
interrogatories and to opposer’s requests for admission; and
opposer’s notice of reliance on several printed publications

2 Reg. No. 1,821,952, issued February 15, 1994.
Opposition No. 102846
3
“as available on the Nexis database and/or the Internet.”3
Applicant submitted no testimony or other evidence. Opposer
filed a brief; applicant did not file a brief. No oral
hearing was requested.
In this case opposer has filed a status and title copy
of its pleaded registration. Because opposer owns a valid
and subsisting registration of its pleaded mark, the issue
of priority does not arise. See King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974); and Humana Inc. v. Humanomics Inc., 3 USPQ2d
1696 (TTAB 1987). Opposer’s priority is also clearly
established by the testimony and other evidence of record.
Thus, the only issue before the Board is likelihood of

3 The evidence submitted under Trademark Rule 2.122(e) consists
of photocopies of articles appearing in magazines and newspapers,
printouts from Nexis, and printouts from the Internet. (We note
that the notice of reliance under Trademark Rule 2.122(e) also
included a few pages of additional miscellaneous papers, which
were not referred to in the notice of reliance. Because these
materials were not referred to, the Board has not considered
them.)
The photocopies of newspaper and magazine articles and the
printouts from Nexis are acceptable under Trademark Rule
2.122(e). However, submissions of printouts from the Internet
are not generally considered printed publications under Trademark
Rule 2.122(e). See Racioppi v. Apogee Inc., 47 USPQ2d 1368 (TTAB
1998). A few of the materials submitted under the notice of
reliance were also submitted as exhibits to Ms. Rossello’s
testimony, and are therefore properly of record. (See, e.g.,
Exhibits 13 and 24). Further, one other Internet submission in
the notice of reliance (a photocopy of applicant’s Internet home
page) was authenticated through applicant’s answers to opposer’s
requests for admission Nos. 57 and 58. With regard to the
remaining Internet printouts submitted under this notice of
reliance, as they are not generally considered printed
publications, they will not be considered herein. See Hunt-
Wesson Foods, Inc. v. Riceland Foods, Inc., 201 USPQ 881 (TTAB
1979).
Opposition No. 102846
4
confusion. Based on the record before us in this case, we
find that confusion is likely.
The testimony of Bonnie Rossello, opposer’s product
director - PAXIL, establishes that opposer is a large
pharmaceutical company which manufactures and markets a wide
variety of prescription and over-the-counter
pharmaceuticals; that opposer has sold a prescription
antidepressant drug under the mark PAXIL since February
1993, shortly after opposer received FDA approval therefor;
that opposer’s involved product is a member of the class of
antidepressants called selective serotonin reuptake
inhibitors (which also includes drugs sold under the
trademarks PROZAC and ZOLOFT); that opposer’s involved drug
was approved by the FDA for treatment of panic disorder and
obsessive-compulsive disorder in May 1996; and that opposer
has extensively marketed and sold its PAXIL product for all
of these illnesses.
She further testified that opposer’s promotional and
advertising expenditures from 1993 to 1996 for its product
sold under the mark PAXIL were in excess of $100 million;
and that opposer’s sales of the product from 1993 to 1996
were in excess of $1.7 billion4. Opposer’s PAXIL product is

4 Opposer’s annual advertising and annual sales figures were
submitted as confidential under seal as a portion of the
deposition of Bonnie Rossello. However, opposer referred to
total figures in its brief (see pages i and 8). Therefore, the
Board has utilized these general figures.
Opposition No. 102846
5
ranked among the top ten most often prescribed drugs in the
Unites States, with 7 million prescriptions written for the
drug from January - August 1997; and it is ranked third in
sales among competing antidepressant pharmaceuticals after
PROZAC and ZOLOFT brand antidepressants.
Opposer’s PAXIL pharmaceutical is marketed to doctors
through direct mail campaigns (especially regarding the new
indications and uses of the PAXIL drug for panic attacks and
obsessive-compulsive disorder); through the process of
“sales force detailing”; and through “co-promotion” with
another company’s drug (a common practice in the industry),
whereby more than one company “details” their companies’
respective products to physicians and to nurses.
“Detailing” is a method of marketing pharmaceuticals to
physicians whereby the sales representative reviews features
and benefits of the product with the physician, generally
one on one; answers any questions; and leaves samples and
sales promotion and product information with the physician.
Opposer’s “detailing” sales force assigned to the PAXIL
product is 2000 people. (Rossello Dep., p. 17). Opposer
engages in “detailing” activities specifically directed to
oncologists. Opposer also distributes PAXIL promotional
items, including mini-massagers, pens, scratch pads, and
Swiss army knives. Opposer generally distributes such goods
at conferences, conventions, and trade shows which are
Opposition No. 102846
6
directed to psychiatric doctors, family practice doctors,
and physician assistant/nurse practitioners.
Opposer’s PAXIL product is advertised in professional
publications such as “The New England Journal of Medicine of
the American Medical Association”, “The American Journal of
Psychiatry”, and “The NIH Observer”. It is also advertised
to the general public through publications such as “Good
Housekeeping”, “People”, and “Better Homes & Gardens”, as
well as through opposer’s website. In addition, opposer’s
sales representatives offer a range of patient brochures to
physicians so that the doctors may distribute them to their
patients. Ms. Rossello further testified that opposer as
well as other pharmaceutical companies have increased their
directed consumer advertising for prescription drugs.
Opposer promotes its PAXIL drug to pharmacists through
trade publications, advertisements in publications, and
through opposer’s national accounts department, whose
personnel call on pharmacists as part of the “formulary
decision making process”.5 Opposer also promotes its PAXIL
product to drug wholesalers, hospitals and managed care
providers.
Ms. Rossello also testified that based on opposer’s
sales and advertising figures, the number of prescriptions

5 A “formulary” is a list of drugs compiled by an HMO to allow
doctors to understand which drugs that HMO prefers the doctor to
Opposition No. 102846
7
written for the PAXIL antidepressant, independent marketing
research surveys, and unsolicited press coverage, she
believes opposer’s mark PAXIL is well known among doctors,
pharmacists, and the general public.
Opposer has submitted evidence to show that persons
with chronic or terminal illness, such as cancer, are
susceptible to depression; and that the same doctors and
health care professionals may be “detailed” for both cancer
treatment and depression treatment drugs. For example,
opposer submitted evidence of a clinical trial study
“looking at the efficacy and safety of PAXIL in treating
depression in women with breast cancer” (Rossello Dep., p.
21, and Ex. 3).
Finally, Ms. Rossello testified that possible
“pharmacist error” is a factor in choosing a trademark for a
pharmaceutical product. That is, pharmacists may misread a
prescription due to the inability to interpret the
handwriting correctly, or a pharmacist may misunderstand a
call-in prescription from a doctor. (Dep., pp. 13-14).
Applicant has not submitted any testimony or any other
evidence in this case. Specifically, there is no evidence
regarding applicant itself, the anticancer drug applicant
intends to sell under the mark PAXETOL, any third-party uses
of any similar marks, and/or any evidence that the letters

prescribe. Opposer’s PAXIL product is on most major HMO
Opposition No. 102846
8
“PAX” have any significance such that purchasers will look
to other portions of the words to distinguish the marks.
Thus, the information we have regarding applicant is
essentially that submitted by opposer in the form of
applicant’s answers to certain of opposer’s interrogatories
and to certain of opposer’s requests for admission. From
applicant’s discovery responses, made of record herein, it
is clear that applicant intends to market a pharmaceutical
for the treatment of cancer under the mark PAXETOL; that
applicant conducted a preliminary trademark search which
revealed the existence of opposer’s mark PAXIL; that
applicant first made the mark known to the public through a
brochure sent out in late 1995; that applicant intends to
sell the drug to hospitals, hospital pharmacies, and to
overseas markets; that applicant intends to “co-promote” the
product with other pharmaceutical companies; and that
applicant intends to “detail” physicians regarding
applicant’s PAXETOL product, and to distribute samples of
the product to clinics, hospitals, and pharmacies.
It is well settled that goods need not be identical or
even competitive to support a finding of likelihood of
confusion; it being sufficient that the goods are related in
some manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by

formularies. (Rossello Dep., p. 34)
Opposition No. 102846
9
the same persons under circumstances that could give rise to
the mistaken belief that they emanate from or are associated
with the same source. See In re International Telephone and
Telegraph Corporation, 197 USPQ 910 (TTAB 1978); and In re
Peebles Inc., 23 USPQ2d 1795 (TTAB 1992).
In this case both parties’ products are
pharmaceuticals. Even though the parties’ respective drugs
may be used for different purposes, nonetheless the record
shows that such drugs may be prescribed for treatment of a
particular illness. Specifically, opposer’s antidepressant
product may be prescribed for and used by patients with
cancer who may also be treated with a cancer drug such as
applicant’s.
Moreover, both parties’ products can be marketed and
sold through the same channels of trade to the same groups
of consumers. Specifically, opposer advertises and promotes
its antidepressant drug to doctors, including oncologists,
who would most likely prescribe cancer treatment drugs.
Opposer’s product is sold to hospitals and retail
pharmacies; it is prescribed by doctors and sold to end
users through hospital and retail pharmacies; and it is
specifically promoted directly to the general public. In
addition, opposer “co-markets” its product with the products
of other pharmaceutical companies. Applicant has
acknowledged that it intends to target the same entities;
Opposition No. 102846
10
and that it will “co-market” its product sold under the mark
PAXETOL. Thus, the channels of trade, and the potential
purchasers are the same for both parties’ products.
Accordingly, we find the parties’ goods to be related.
With respect to the marks, they both begin with the
letters “PAX” and end with the letter “L”. We recognize
that the marks have different string letters in between, but
we do not find these internal differences sufficient to
distinguish these marks. These two marks still have a
similar appearance, and somewhat similar pronunciation, and
the chance of confusion is increased by the fact that
pharmacists are generally presented handwritten
prescriptions and telephoned orders.
Moreover, it has long been held that it is necessary,
for obvious reasons, to avoid confusion in the dispensing of
pharmaceuticals; and that where ethical goods are sold and
careless use is dangerous, greater care should be taken in
the use and registration of trademarks to assure that no
harmful confusion results. See Glenwood Laboratories, Inc.
v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19
(CCPA 1972); Blansett Pharmacal Co. Inc. v. Carmrick
Laboratories Inc., 25 USPQ2d 1473 (TTAB 1992); and Schering
Corporation v. Alza Corporation, 207 USPQ 504 (TTAB 1980).
We would also point out that, as shown by opposer’s
advertising and sales figures, and the numerous unsolicited
Opposition No. 102846
11
publications referencing opposer’s PAXIL products, that
opposer’s mark PAXIL for a pharmaceutical to treat
depression, panic attacks, and obsessive-compulsive disorder
is a strong mark entitled to a wide latitude of legal
protection. As indicated previously, defendant has not
provided any evidence of third-party use of PAX-prefixed
marks, or any information which would indicate that PAX has
a suggestive significance in the medical field. Thus, even
if doctors, pharmacists, and ordinary consumers note the
difference between PAXIL and PAXETOL, they may well believe
that applicant’s goods emanate from or are sponsored by the
same entity.
Finally, we would point out that applicant, as the
newcomer, had the obligation to select a mark which would
avoid confusion. See In re Hyper Shoppes (Ohio) Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); Hilson Research
Inc. v. Society for Human Resource Management, 27 USPQ2d
1423, at 1440 (TTAB 1993); and Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, at 1774 (TTAB 1992).
In conclusion, we find that applicant’s use of the mark
PAXETOL for a pharmaceutical for the treatment of cancer
would be likely to cause confusion, mistake, or deception
with opposer’s mark PAXIL for a pharmaceutical for the
treatment of depression, panic attacks, and obsessive-
compulsive disorder.
Opposition No. 102846
12
Decision: The opposition is sustained, and
registration to applicant is refused.
E. J. Seeherman
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal