Vertex Pharmaceuticals Inc.v.Hercules Brand Corp.

Trademark Trial and Appeal Board

May 19, 2015

No. 91205803 (T.T.A.B. May. 19, 2015)

Mailed: May 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Vertex Phamaceuticals Inc.
v.
Hercules Brand Corp.
_____

Opposition No. 91205803
_____

Sharona H. Sternberg, Lisa M. Tittemore, and Steven A. Abreu of Sunstein
Kann Murphy & Timbers LLP, for Vertex Pharmaceuticals Inc.

Hercules Brand Corp., in pro per.1
_____

Before Kuhlke, Wellington, and Ritchie, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On December 28, 2011, Hercules Brand Corp. (“Applicant”) applied to
register VERTOX, in standard character form, for “multi-vitamin
preparations; vitamin and mineral supplements; vitamins,” in International
Class 5.”2 On June 27, 2012, Vertex Pharmaceuticals Inc. (“Opposer”), filed

1 Documents were filed by various officers of Hercules Brand Corporation.
2 Application Serial No. 85505191 was originally filed under Section 1(b). On
February 22, 2012, Applicant filed an Amendment to Allege Use (AAU) , alleging
dates of first use on October 24, 2011, and first use in commerce on February 16,
2012.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91205803
2
an opposition to the registration of Applicant’s mark on the ground that
Applicant’s mark is likely to cause confusion with Opposer’s marks. Opposer
asserted in its Notice of Opposition, as amended, that it owns the mark
VERTEX, in typed drawing format3 for “house mark for pharmaceutical
preparations,”4 and for “pharmaceutical research”5 as well as the mark
VERTEX, and design, as shown below, for “house mark for pharmaceutical
preparations”6 and for “pharmaceutical preparations for the diagnosis,
treatment or prevention of hepatitis-C, autoimmune diseases, and HIV
infection and AIDS” 7:

Opposer further asserted that Applicant did not have a bona fide intent to
use its VERTOX mark in commerce in connection with the applied-for goods

3 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’
drawings. The mark on a typed drawing was required to be typed entirely in capital
letters. A typed mark is the legal equivalent of a standard character mark.” TMEP
§ 807.03(i) (April 2014).
4 Registration No. 2704913, Registered April 8, 2003 in International Class 5.
Sections 8 and 15 affidavit accepted and acknowledged. Renewed.
5 Registration No. 1630448, Registered January 1, 1991 in International Class 42.
Sections 8 and 15 affidavit accepted and acknowledged. Renewed twice.
6 Registration No. 3531356, Registered November 11, 2008 in International Class 5.
Section 8 affidavit accepted.
7 Registration No. 2578974, Registered June 11, 2002 in International Class 5.
Sections 8 and 15 affidavit accepted and acknowledged. Renewed.
Opposition No. 91205803
3
at the time the application was signed, that Applicant did not use its
VERTOX mark in connection with the applied-for goods as of the filing date
of the AAU and that, therefore, the application is void ab initio for lack of
bona fide intent to use and nonuse.
In its Answer, Applicant denied the salient allegations of the amended
Notice of Opposition. Both parties filed briefs, and Opposer filed a reply brief.
The Record and Evidentiary Issues
The record consists of the pleadings; the file of the involved application;
and Opposer’s Notice of Reliance Exhibits A through O, dated March 31,
2014, which includes, inter alia, printouts from the USPTO TSDR
(Trademark Status and Document Retrieval) database consisting of copies of
Opposer’s pleaded registrations showing their current status and title, as
well as Opposer’s submission of the trial testimony of Virginia Carnahan,
Opposer’s Vice President, Global Marketing, dated March 28, 2014. The
record further consists of two Notices of Reliance submitted by Applicant,
dated May 30, 2014 (Exhibits A through Q) and October 3, 2014 (Exhibits A
though H).
In its trial brief, Applicant referred to what it considers the appropriate
characterization of a “multivitamin” pursuant to “NIH (National Institute of
Health, Office of Dietary Supplements). Multivitamin/mineral Supplements
Fact Sheet for Health Professional. January 2013.” 45 TTABVUE 17.8 In its

8 Citations to TTABVUE are references to the Board’s online case file database.
Opposition No. 91205803
4
reply brief, Opposer objected to this reference, as the fact sheet is not of
record. Since Applicant did not identify the referenced fact sheet in either of
its two notices of reliance, and since the fact sheet does not appear to be of
record, the objection is sustained.9
Priority and Standing
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading]."). To establish standing in an
opposition, opposer must show both “a real interest in the proceedings as well
as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
As a result of Opposer’s submission of status and title copies of its
Registration Nos. 2704913 (VERTEX), 1630448 (VERTEX), 2578974
(VERTEX, and design) and 3531356 (VERTEX, and design), as well as the
testimony by Ms. Carnahan in reference thereto, Opposer has established its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000). Likewise, in view of these pleaded and proven

9 We note, nonetheless, that consideration of the reference would not affect our
decision.
Opposition No. 91205803
5
registrations priority is not in issue with respect to the marks and the goods
and services set out in the registrations. King Candy Co. v. Eunice King’s
Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record related to a likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks.”). We
discuss the du Pont factors for which there is relevant argument and
evidence. For purposes of our likelihood of confusion analysis, we focus on the
most relevant pleaded registration, Registration No. 2704913 (VERTEX).
We find this mark to be the most relevant of Opposer’s pleaded registrations
for our du Pont analysis. Accordingly, if we find a likelihood of confusion as to
Opposition No. 91205803
6
this pleaded registration, we need not find it as to the others. On the other
hand, if we don’t reach that conclusion, we would not find it as to the other
pleaded registrations either. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
The Marks
We consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
1692. In comparing the marks, we are mindful that the test is not whether
the marks can be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of the goods offered
under the respective marks is likely to result. San Fernando 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 unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average consumer, who retains a
general rather than specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The mark in Opposer’s Registration No. 2704913 is VERTEX. Applicant’s
mark is VERTOX, which differs only by its penultimate letter. The
Opposition No. 91205803
7
pronunciation of the marks is likely to be highly similar. As for the
commercial impression, both marks appear to be arbitrary for their
respective goods or services. Opposer’s witness testified in this regard. See
Carnahan depo.
Q: Does the name Vertex have a special meaning in the pharmaceutical
industry?
A: No, it does not have an innate meaning in the pharmaceutical industry
except as Vertex the pharmaceutical company.
38 TTABVUE 14.
We find therefore, that the marks are highly similar in sight, sound and
commercial impression, and the first du Pont factor weighs in favor of finding
likelihood of confusion.
The Goods and Channels of Trade
The identification of goods covered by Opposer’s Registration No. 2704913
for VERTEX includes “house mark for pharmaceutical preparations,” while
Applicant’s mark identifies “multi-vitamin preparations; vitamin and mineral
supplements; vitamins.” We begin by observing that Opposer’s identification
is broadly worded and encompasses pharmaceutical preparations to treat any
type of condition, including vitamin deficiencies. The identification
“pharmaceutical preparations” could include prescription vitamin
supplements. See S.S. Kresge Co. v. J-Mart Industries, Inc., 178 USPQ 124
(TTAB 1973) (sustaining opposition by K MART for pharmaceutical
Opposition No. 91205803
8
preparations and vitamins against J-MART for medicines and
pharmaceutical preparations, namely, ear drops and sleeping capsules).
Ms. Carnahan testified as to the use of Vertex’s products as follows:
Q: What kinds of products does Vertex currently sell?
A: We sell pharmaceuticals, drug therapies for specific diseases.
38 TTABVUE 20
She further testified that besides other conditions for which it is or may be
used, Vertex is currently used in connection with “HIV, hepatitis C, as well
as cystic fibrosis.” Id. at 16.10 Opposer further submitted a number of articles
showing that vitamin supplements are also used to treat these same
conditions, as Exhibit 12 to the Carnahan deposition and as Exhibit D to its
notice of reliance. In this regard, Ms. Carnahan testified as follows:
Q: Would people suffering from conditions treated by Vertex also take
vitamins?
A: Yes. I’d say an overall consumer trend is healthy living, so they take
vitamins, supplements.
38 TTABVUE 49
Some excerpts from the submitted articles include the following:
NDNR: Hepatitis C: An Update on Comprehensive Assessment
and Treatment Protocols; By Lyn Patrick, ND
Vitamin D3 deficiency is a serious problem in liver disease, and
vitamin D deficiency in HCV infection can reduce the chance of
responding to standard treatment, as well as increase the risk
for fibrosis. Vitamin D has been shown to suppress hepatitis C
viral replication in vitro, and supplementation with 2000 IU/d of

10 These conditions are mentioned in Registration No. 2578974.
Opposition No. 91205803
9
vitamin D resulted in a dramatic increase in the response to
standard therapy in all genotypes.
Ndnr.com
40 TTABVUE 38-40

Journal of Hepatology: Clinical Application of Basic Science:
Vitamin D for your patients with chronic hepatitis C?
By Adeeb H. Rahman, Andrea D. Branch;
Vitamin D is increasingly becoming recognized as an important
physiological regulator with pleiotropic functions outside of its
classic role in skeletal homeostatiss. A growing body of clinical
evidence highlights the prevalence and risks of vitamin D
deficiency in patients suffering from chronic hepatitis C
infection, and vitamin D supplementation has been proposed as
an adjunct to current standards of care.
40 TTABVUE 44

Los Angeles Times: Promising cancer therapy treatment:
Vitamin C: Feb. 5, 2014 By Monte Morin
New research suggests that vitamin C might make cancer drugs
more effective. But past discredited claims about the vitamin’s
effectiveness in treating cancer are likely to hinder further
study.
http://articles.latimes.com
31 TTABVUE 74

Ms. Carnahan further testified that various companies that sell
pharmaceutical preparations also sell vitamins.
Q: Based on your years of experience working in the pharmaceutical
industry, are you aware of any pharmaceutical companies that also sell
vitamins?
A: Yes, most of the – many of the large pharmaceutical companies, Pfizer
or Bayer, sell vitamins.
Opposition No. 91205803
10
When you look at it, they’re both distributed through pharmacies, so from
a distribution model that people have set up, they’re in the same place,
such as like a Target or a Walgreens.
38 TTABVUE 78-79.
Opposer submitted as Exhibit E to its notice of reliance evidence that
pharmaceutical companies also sell vitamins. Some excerpts include the
following:
Fox News.com: Many Vitamins, Supplements Made by Big
Pharmaceutical Companies: Some of the same companies that
mass-produce drugs in huge chemical labs also churn out
vitamin and herbal pills sold in bottles with rainbows, sunrises
and flowers on their labels.
31 TTABVUE 77

HealthUncut:the antidote to poor health advice: The big Lie-The
Pharmaecutical and Nutritional Supplement industry Divide:
November 23, 2012; But, here’s what we don’t hear being
banded about, those supplements you buy, there’s every chance
the company is simply a subsidiary of the vast drug industry,
and your money is going straight into their coffers. Just this
week the pharmaceutical company Reckitt outbid Bayer to
purchase Schiff nutrition for $1.4 billion. This marks the third
large acquisition of its type this year.
31 TTABVUE 79

The Wall Street Business: By Serena Ng and Jonathan D.
Rockoff March 31, 2013
Like a lot of aging Americans, consumer products and drug
companies are hoping vitamins will give them an energy boost.
Proctor & Gamble Co., drug maker Pfizer Inc. and Arm &
Hammer owner Church & Dwight Co. all acquired makers of
dietary supplements last year. More deals are expected as
companies bet baby boomers and rising health care costs will
drive demand for products that promise health in a bottle.
Online.wsj.com
31 TTABVUE 81

Opposition No. 91205803
11
Applicant argues that vitamins are unrelated to pharmaceutical
preparations since, even if they are both carried by a pharmacy,11 vitamins
are not given out by the pharmacist. However, this is not the legal test, and
indeed the evidence and case law indicate that vitamins may be prescribed,
even if they are also over-the-counter items not dispensed by a pharmacist. In
view of Opposer’s broadly worded identification, we find that the goods are
closely related and that they are likely to travel in the same channels of
trade. These factors also weigh in favor of finding a likelihood of confusion.
Conditions of Sale
Applicant urges us to consider the consumer sophistication and degree of
purchaser care likely to be exercised for the goods at issue in this proceeding,
arguing that consumers of its vitamins and Opposer’s pharmaceutical
preparations are likely to be more sophisticated. However, there is nothing in
the identification of goods that would limit the goods of either from being sold
to the general public, as noted by Applicant’s officer, Mr. Cheatham:
Q: Who do you sell the product to?
A: We sell the product to consumers and we also sell the product to
retailers.
Q: What kind of consumers?
A: Adults.
Q: So just the general population adults?

11 Applicant testified that its customer list includes several pharmacies. See
Cheatham depo. 31 TTABVUE 130-136, and Exhibit 23 thereto.
Opposition No. 91205803
12
A: That’s right.
31 TTABVUE 110-111.
To the extent pharmaceutical preparations may be dispensed by
prescription, our case law has noted that confusion may be found where, as
here, the marks are highly similar and the goods are related. See Alfacell
Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306 (TTAB 2004):
We acknowledge that such persons are sophisticated and are not
prone to carelessness. Nonetheless, we find that confusion is
likely, even among these healthcare professionals, where these
similar goods are marketed under the similar marks involved
herein; there is no reason to believe that medical expertise as to
pharmaceuticals will ensure that there will be no likelihood of
confusion.

The decision further aptly notes that we must consider the least
sophisticated consumer, and that pharmaceutical preparations are
increasingly marketed to the general public. Id.; quoting KOS
Pharmaceuticals Inc., 369 F.3d 700, 70 USPQ2d 1874 (3d Cir. 2004) (“Court
have noted that drugs are increasingly marketed directly to potential
patients through, for example ‘ask-your-doctor-about-Brand-X’ style
advertising.” [citations omitted])
As pointed out by Opposer, our precedent dictates that concerns of public
safety also weigh in favor of finding likelihood of confusion where medical
goods are concerned. Id.; citing Blansett Pharmacal Co. V. Carmrick Labs.
Inc., 25 USPQ2d 1473, 1477 (TTAB 1992) (“We note also that where the
marks are used on pharmaceuticals and confusion can lead to serious
Opposition No. 91205803
13
consequences, it is even more important to avoid that which will cause such
confusion. [cites omitted]”). See also Clifton v. Plough, Inc., 341 F.2d 934, 144
USPQ 599, 600 (CCPA 1965) (Although finding that “[t]he products of the
parties are sold over the counter to the general public and either may be
purchased without a doctor’s prescription,” the Court further noted, “[a]s
stated by the board, it is necessary, for obvious reasons, to avoid confusion in
the dispensing of pharmaceuticals.”).
We find the conditions of sale to weigh in favor of finding likelihood of
confusion.
Conclusion
Considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, in comparing applicant’s VERTOX mark to the
mark VERTEX in Opposer’s Registration No. 2704913, we conclude that the
marks are highly similar, the goods are related, and are likely to be marketed
through similar channels of trade to consumers that include the general
population. We also take into account in this regard the issues of public
safety inherent in the identified goods. Specifically, we must consider the
possibility that consumers in need of Opposer’s pharmaceutical preparations
may purchase Applicant’s vitamins mistakenly believing them to be
complementary or achieving the same results. On the balance, we find a
likelihood of confusion between Applicant’s mark VERTOX and Opposer’s
mark VERTEX.
Opposition No. 91205803
14
DECISION: The opposition is sustained on the ground of likelihood of
confusion.12

12 In light of our conclusion, we do not find it necessary to address Opposer’s other
pleaded grounds of lack of bona fide intent to use the mark and nonuse of the mark.