Wyethv.Walgreen Co.

Trademark Trial and Appeal Board

Aug 5, 2008

No. 91165912 (T.T.A.B. Aug. 5, 2008)

Hearing: Mailed:
April 9, 2008 August 5, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Wyeth
v.
Walgreen Co.
_____

Opposition No. 91165912
to Application Serial No. 76594301
filed on 5/25/2004
_____

Bruce R. Ewing and Sandra Edelman of Dorsey & Whitney LLP
for Wyeth.

Mark J. Liss and Mark A. Nieds of Leydig Voit & Mayer for
Walgreen Co.
______

Before Drost, Walsh and Mermelstein, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Wyeth (opposer) has opposed the application by Walgreen
Co. (applicant) to register the mark WAL-VERT in standard
characters on the Principal Register for goods identified as
“antihistamines and allergy relief preparations” in
International Class 5. The application was filed on May 25,
2004, based on a claim of a bona fide intention to use the
mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91165912
2
Both parties filed briefs, and both parties took part
in an oral hearing in the case on April 9, 2008.
The Grounds
As grounds for the opposition opposer claims priority
and likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d).1 Specifically, opposer bases its
claim on its prior use of and registration of the mark in
Registration No. 2835071, a registration on the Principal
Register for the mark ALAVERT in standard characters for
goods identified as “pharmaceutical preparations, namely
allergy relief and antihistamine preparations” in
International Class 5. The registration issued on April 20,
2004, and states a date of first uses of the mark anywhere
and first use of the mark in commerce on December 20, 2002.
The Record
The record consists of the pleadings and the file of
the opposed application.
In addition, opposer submitted notices of reliance,
which include: a title and status copy of opposer’s ALAVERT
registration; publications regarding opposer’s ALAVERT
product; excerpts from the discovery depositions of
applicant’s officials, Richard Rinka (Rinka Disc.), Ronald

1 In the notice of opposition, opposer also asserted dilution as
a ground, but opposer has not maintained the dilution ground in
its trial briefs. Accordingly, we conclude that opposer has
abandoned the dilution ground.

Opposition No. 91165912
3
Belmonte (Belmonte Disc.), David Van Howe (Van Howe Disc.)
and Mark DiFillipo (DiFillipo Disc.) and related exhibits;
copies of certain trademark registrations owned by
applicant; and copies of USPTO records related to opposer’s
ALAVERT application and registration. Opposer also
submitted the testimonial deposition of Christopher
Marschall (Marschall Test.), one of its officials, with
related exhibits.
Applicant submitted notices of reliance, which include:
copies of discovery depositions of opposer’s officials,
Christopher Marschall (Marschall Disc.) and Roger Gravitte
(Gravitte Disc.). Applicant also submitted the testimonial
deposition of its official, David Van Howe (Van Howe Test.),
and the testimonial deposition of Barbara Deradorian, a
third-party witness (Deradorian Test.).
Both parties claim that a significant amount of the
evidence is confidential. Consequently, both parties also
have redacted passages in their briefs which refer to this
evidence. We find the claims generally reasonable.
Therefore, we will refrain from referring to evidence
designated as confidential in this opinion, except in
instances where the parties have discussed it in their
briefs without redaction or where the evidence is obviously
public. This will limit our ability to discuss some of the
evidence in detail.
Opposition No. 91165912
4
There is only one dispute regarding the evidence
remaining.2 Opposer objects to the admissibility of the
Deradorian survey report and related testimony. Schering-
Plough, a third-party competitor of opposer, commissioned
the survey to evaluate consumer perception of opposer’s
ALAVERT mark prior to opposer’s use of the ALAVERT mark.
Applicant made the report, which is designated confidential,
of record and attempts to use the report to show the
weakness of the ALAVERT mark. Opposer asserts that the
report should be excluded because it lacks objectivity,
because the questions were biased, because no control was
used and because the report is outdated. Applicant offers
counter arguments as to each of these points, and ultimately
concludes by arguing that opposer’s objections go to the
weight of this evidence not to its admissibility.
We agree with applicant’s ultimate argument regarding
admissibility. We conclude that the survey report, and the
related testimony, are minimally relevant and admissible.
The criticisms regarding matters, such as the design and
timing of the survey, go to the probative value or weight to

2 Opposer had also objected to our consideration of certain
search reports applicant submitted as exhibits to the Marschall
Discovery Deposition, but at the oral hearing applicant stated
that it was not relying on those search reports. Accordingly, we
have not considered those reports and consequently need not
consider opposer’s objection to their admissibility.

Opposition No. 91165912
5
be accorded this evidence. For reasons discussed below, we
conclude that this evidence has limited probative value.
Standing
Opposer has both asserted and established its interest
in the proceeding, and thereby satisfied the standing
requirement, by submission of a status and title copy of the
ALAVERT registration. Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999).
Priority
Furthermore, priority is not an issue in the proceeding
in view of opposer’s reliance on and submission of the
ALAVERT registration. See King Candy Co., Inc. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA
1974). In fact, applicant concedes opposer’s priority and
argues only that there is no likelihood of confusion.
Applicant’s Brief at 8.
Findings of Fact
We have already identified the most significant facts
in the case, namely: (1) opposer’s registration for the
ALAVERT mark in standard characters for goods identified as
“pharmaceutical preparations, namely allergy relief and
antihistamine preparations” in International Class 5; and
(2) the opposed application for the WAL-VERT mark in
standard characters for goods identified as “antihistamines
and allergy relief preparations” in International Class 5.
Opposition No. 91165912
6
Most importantly, both marks appear in standard characters
with no other elements, and the identifications of goods in
both the registration and application state no restrictions
as to trade channels or anything else.
Opposer
In December 2002, opposer, a pharmaceutical company,
launched a non-sedating, long-acting antihistamine with the
principal active ingredient of loratadine under the ALAVERT
mark. Marschall Disc. at 15-16. A competing pharmaceutical
company, Schering-Plough, sold the first product containing
loratadine by prescription under the CLARITIN mark. Just
prior to opposer’s launch, the loratadine patent expired,
and loratadine was approved for over-the-counter sales. Id.
at 15-16, 74. Opposer’s ALAVERT product is in the general
category of allergy medications, the subcategory of
antihistamines, and the more particular further subcategory
of non-sedating antihistamines.
Opposer sells the ALAVERT product over the counter but
it also competes with certain prescription allergy products.
Applicant has offered the ALAVERT product in a variety of
forms, including a limited version which also includes a
decongestant. It is also available in a quick-dissolve
form, a feature which opposer emphasized at the time of the
launch.
Opposition No. 91165912
7
Opposer has sold the ALAVERT product through all normal
trade channels for like products including food, grocery and
drug stores, chain drug stores, club stores, military
facilities and convenience stores. Marschall Test. at 24.
Opposer directs its sales of the ALAVERT product to “a wide
range of consumers with various demographic and
psychographic attributes” -- allergy sufferers, generally
ranging in age from 25 to 54. Marschall Disc. at 41. A
significant percentage of households purchase allergy
medications. Id. at 74.
Opposer has expended substantial funds and effort to
advertise and promote the ALAVERT mark and product
nationwide through all types of advertising media, as well
as through direct promotions to medical service providers,
physicians and potential purchasers. Marschall Test. at 29,
55. The promotional efforts included the distribution of
substantial numbers of product samples. Marschall Test. at
50. The promotional efforts have reached a substantial
percentage of U.S. households. Marschall Test. at 37. The
sales of the ALAVERT product have been substantial.
Marschall Test. at 19. The ALAVERT product has received
significant coverage in the print media. Opposer’s First
Notice of Reliance, Exhs. 2-63. ALAVERT is a leading brand
in the over-the-counter allergy medication category.
Marschall Test. at 23. A significant percentage of
Opposition No. 91165912
8
potential purchasers of allergy medications have purchased
opposer’s ALAVERT product. The ALAVERT product has achieved
an impressive rate of repeat purchasers. Marschall Test. at
56. Even applicant’s witnesses have acknowledged the
success of the ALAVERT product. Van Howe Test. at 16;
DiFillipo Disc. at 14, 26.
“AL” is also in use as a prefix in marks for other
over-the-counter and prescription allergy medications, for
example, ALEREST and ALEGRA and for ALEVE, an over-the-
counter fever and pain medication. Marschall Disc. at 154.
There is no evidence of any other mark used on relevant
products which includes “VERT” or “AVERT” as an element.
Marschall Disc. at 154; Gravitte Disc. at 30.
Opposer is not aware of any confusion between the
ALAVERT and WAL-VERT marks.
Applicant
Applicant operates a chain of 5500 drug stores. Van
Howe Test. At 6. Applicant offers a wide range of products
in its stores, including private-label versions of many
products. Applicant sells popular brands of over-the-
counter medications, including ALAVERT, as well as its own
private-label versions of many popular brands. In September
2004, applicant launched a private-label version of ALAVERT
under the WAL-VERT mark, the mark which is the subject of
the opposed application. The products sold under the
Opposition No. 91165912
9
ALAVERT and WAL-VERT marks are chemically identical. Van
Howe Test. at 17. Applicant markets its WAL-VERT product
based on a comparison with opposer’s ALAVERT product.
Gravitte Disc. at 22. Applicant sells the WAL-VERT product
exclusively in its own stores. Van Howe Test. at 24.
The packaging of record for the WAL-VERT product
includes four references to applicant, including a prominent
display of the WALGREEN house mark, and a statement that the
product is distributed by Walgreen Co. The packaging also
includes the following statement: “Compare to ALAVERT
active ingredient.” Van Howe Test. at 25-27 and related
Exh. 2. The packaging for applicant’s other private-label
versions of products often include elements, such as colors,
from the corresponding leading-brand products. Likewise,
the packaging for the WAL-VERT product uses colors similar
to those on the ALAVERT product. Van Howe Test. at 53 and
related Exhs. 1 and 2; Van Howe Disc. at 38.
Applicant places its WAL-VERT product side-by-side with
opposer’s ALAVERT product on its shelves, and applicant
often includes a shelf display inviting shoppers to compare
the products. Rinka Disc. at 54. This is a practice
applicant follows generally in promoting its private-label
products, including the WAL-VERT product. Van Howe Test. at
41, 45.
Opposition No. 91165912
10
Applicant is not aware of any confusion between the
ALAVERT and WAL-VERT marks. Van Howe Test. at 49. However,
applicant has not conducted any research to determine
whether there has been confusion. Id. at 55.
Applicant has registered and used several marks which
employ the prefix “WAL” followed by a hyphen and a portion
of the mark for a leading brand in the pharmaceutical field.
Applicant uses these marks on its private-label versions of
the products identified by the leading brands and promotes
them as a less expensive alternatives to the leading brands.
Van Howe Test. at 13-14. For example, in the allergy
category applicant has used and registered the following
marks: WAL-ITIN corresponding to CLARITIN for allergy
medications; WAL-DRYL corresponding to BENADRYL for allergy
and cold medicines; and WAL-PHED corresponding to SUDAPHED
for allergy and cold medications. Applicant follows a
similar practice in other pharmaceutical categories and for
a wide range of other types of goods. Van Howe Test. at 13;
Applicant’s First Notice of Reliance Exhs. 1a-1k. Applicant
sometimes also combines the “WAL” prefix with portions of
generic terms, for example, WAL-PROFEN corresponding to
Opposition No. 91165912
11
ibuprofen for pain and fever medications.3 In addition,
applicant uses marks which do not employ the “WAL” prefix to
identify other private-label products from applicant.
Opposer’s Second Notice of Reliance Exhs. 83-119.
Regarding applicant’s selection of the WAL-VERT mark,
Mr. Van Howe, an official of applicant, stated the following
in cross-examination during his testimonial deposition:
Q. … I take it that ‘VERT’ was selected to
connote the ALAVERT product.
A. Correct.

Van Howe Test. at 55.
Mr. Van Howe also confirms in his discovery deposition
that the “VERT” portion of the WAL-VERT mark is derived from
the ALAVERT mark. Van Howe Disc. at 50. Mr. Rinka, another
applicant official, also states that the choice of the WAL-
VERT mark was to suggest that the product had the same
ingredient as ALAVERT. Rinka Disc. at 31. Mr. Rinka also
indicates that he is not aware of any other use of a mark
which includes “VERT” for relevant products.
We conclude that applicant selected the “VERT” element
of the WAL-VERT mark because potential purchasers were

3 Merriam-Webster’s Collegiate Dictionary (11th ed. 2003) includes
a definition for “ibuprofen” as a “nonsteroidal anti-inflammatory
drug.” The Board may take judicial notice of dictionary
definitions. See 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. 91165912
12
familiar with opposer’s ALAVERT mark and product due to the
success of the ALAVERT product.
Likelihood of Confusion
The opinion in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
See also In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Below, we will
consider each of the factors as to which the parties have
presented arguments or evidence. Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1282 (Fed. Cir. 1984).
The Goods and the Channels of Trade
The goods of the parties need not be identical to find
a likelihood of confusion under Section 2(d) of the
Trademark Act. They need only be related in such a way that
the circumstances surrounding their marketing would result
in relevant consumers mistakenly believing that the goods
originate from the same source. On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000); In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and
registrations. See Octocom Systems, Inc. v. Houston
Opposition No. 91165912
13
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“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 the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”). Based on
the identifications, we conclude that the goods of the
parties are identical. In fact, the record establishes that
applicant’s WAL-VERT product and opposer’s ALAVERT product,
as sold, are the same. Van Howe Test. at 17.
Furthermore, we also conclude, by simple logic, based
on the identifications of goods, that the channels of trade
for the parties’ goods and the potential purchasers for the
parties’ goods are also the same. Here too, the record, in
fact, shows that opposer’s ALAVERT product is sold in
applicant’s stores on the same shelves as applicant’s WAL-
VERT product inviting the same potential purchasers to
compare the respective products.
Opposition No. 91165912
14
The heading for the section of applicant’s brief
addressing these factors states: “Similarities in Product,
Consumers, and Channels of Trade Are Insignificant and
Outweighed by Other Factors When Comparing Private Label
Goods to their National Brand Brethren.” Applicant’s Brief
at 17. In so arguing, applicant explicitly discounts the
importance of the fact that the goods of the parties, the
consumers and the channels of trade are identical.
In the process, applicant also disregards the
controlling law. Instead, as opposer points out, applicant
relies on a series of infringement cases from the federal
courts, most notably Conopco Inc. v. May Department Stores
Co., 46 F.3d 1556, 32 USPQ2d 1225 (Fed. Cir. 1994), cert.
denied, 514 U.S. 1078 (1995). Nearly all of the cases
address issues of trade-dress infringement. Applicant’s
reliance on these cases is misplaced in arguing a case which
addresses registration only.
If applicant succeeds in securing registration for the
mark and goods identified in its application, the
certificate of registration, among other things, will be
“prima facie evidence of … the registrant’s exclusive right
to use the registered mark in commerce on or in connection
with the goods or services specified in the certificate,
subject to any conditions or limitations stated in the
Opposition No. 91165912
15
certificate.” Trademark Act Section 7(b), 15 U.S.C. §
1057(b).
Throughout applicant argues that there would not be
confusion because applicant only sells products bearing the
WAL-VERT mark in its own stores, because applicant uses its
WALGREEN house mark and company name repeatedly on the
packaging for the WAL-VERT product, and because applicant
promotes the WAL-VERT product in a comparison with opposer’s
ALAVERT product. However, none of these conditions are
reflected in the application. Nor would the registration
which might result from this application reflect any of
these conditions. While these conditions might be relevant
to any infringement action, we may not consider and have not
considered them in our determination of applicant’s right to
register the WAL-VERT mark in this proceeding.
Accordingly, we conclude that the factors related to
the goods and channels of trade favor opposer substantially
in this case.
Strength of the Registered Mark
Applicant also argues that opposer’s ALAVERT mark is
weak and even that it “… has a significant descriptive
undercurrent” or that it is “fairly descriptive” or that it
“carries a significant descriptive connotation.”
Applicant’s Brief at 5, 10 and 14. Applicant also argues
that ALAVERT creates the impression that the product “acts
Opposition No. 91165912
16
to avert allergies” and that “the ALAVERT mark is not well
known among consumers due to its low unaided awareness
scores.” Applicant’s Brief at 9.4
On the other hand, opposer argues that the ALAVERT mark
is both conceptually and commercially strong and that
applicant’s suggestions that it is somehow descriptive are
off base.
First, we dismiss out of hand applicant’s suggestions
that the ALAVERT mark is descriptive. We concur with
opposer in concluding that these arguments are out of bounds
in the absence of a counterclaim attacking the validity of
the ALAVERT registration. In the absence of such a
counterclaim, we must and do accord the ALAVERT registration
all applicable respect, including as prima facie evidence
that the registered mark is valid under Trademark Act
Section 7(b), and moreover, that the mark is inherently
distinctive. See Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881 (TTAB 2006).
We concede, as applicant argues, that ALAVERT combines
“pieces of the words ALLERGY and AVERT.” Applicant’s Brief
at 14. However, we conclude that ALAVERT is a coined term

4 Much of the evidence which forms the basis for applicant’s
claim that the ALAVERT mark is weak is confidential, market
research opposer itself performed both prior to launch of the
ALAVERT product and since launch and the research Ms. Deradorian
conducted prior to the product launch. Therefore, we will not be
able to discuss that evidence in detail in this opinion.

Opposition No. 91165912
17
which is at most suggestive, but not conceptually weak. We
have no evidence that there is any other mark made up of the
“AL” and “VERT” or “AVERT” elements, nor any evidence that
“VERT” or “AVERT” is an element of any other mark in the
relevant field. We also observe that the suggestive
possibilities embodied in ALAVERT may be more varied than
applicant suggests. The mark may also suggest that the
ALAVERT product will keep the user alert, based on its non-
sedating feature. Accordingly, we conclude that ALAVERT is
a strong mark conceptually.
With regard to its commercial strength, that is, the
strength ALAVERT may have acquired on the basis of opposer’s
use and promotion, we likewise conclude that ALAVERT is a
commercially strong mark.
Regarding the market research, on balance we find this
evidence supportive of the conclusion that ALAVERT is at
most suggestive and commercially strong. There is nothing
in the Schering-Plough study which contradicts this
conclusion. Quite understandably, applicant views opposer’s
market research through a more critical lens. We find
opposer’s criticisms of the Schering-Plough survey generally
well taken. It is limited in its probative value because it
was conducted before the launch of the ALAVERT product.
Furthermore, the questions appear to be somewhat leading or
biased. This is understandable since it was not conducted
Opposition No. 91165912
18
to determine the strength or weakness of the ALAVERT mark,
the purpose for which applicant now attempts to use it.
Also, as to opposer’s own market research conducted
over the course of opposer’s promotion and sale of the
ALAVERT product, applicant fails to consider the full
results. The full results, viewed objectively, show both
that the ALAVERT product has been successful and that the
ALAVERT mark has achieved substantial recognition. The
results support the conclusion that ALAVERT is a
commercially strong mark.
In addition, the ALAVERT sales and related advertising
and promotional efforts are impressive. They lend further
support to the conclusion that ALAVERT is a strong mark.
Applicant’s own actions in adopting the WAL-VERT mark, in
particular, the decision to use “VERT” as a significant
element of the mark to associate its private-label product
with the ALAVERT product lends further support to the
conclusion that ALAVERT is a strong mark.
Accordingly, we conclude that this factor favors
opposer.
Purchaser Sophistication
Applicant also argues, under du Pont, that the goods at
issue here are not “impulse” purchases, but subject to
“careful, sophisticated purchasing.” In re E. I. du Pont de
Nemours & Co., 177 USPQ at 567. Applicant emphasizes that
Opposition No. 91165912
19
the packages and other related materials related to the
goods at issue here carry a good deal of information, that
there are many over-the-counter allergy products from which
to choose, and that potential purchasers must consider that
information, including potential side effects, carefully to
ensure that the product they select will address their
specific symptoms and needs. Applicant argues that these
circumstances establish that “a higher degree of care and
consideration must go into the purchasing decision.”
Applicant’s Brief at 27. Applicant, thus, argues that there
is a diminished likelihood of confusion as a result.
Opposer disagrees, noting, among other things, that the
products in question are relatively inexpensive.
The goods in question, over-the-counter allergy
medications, are not in the category of impulse purchases.
Nor are they particularly expensive. We conclude that a
purchaser exercises a certain degree of care in purchasing
any medication, even one which is relatively inexpensive.
On the other hand, the products are not so expensive that
the purchaser would engage in a protracted analysis
attendant to purchases of expensive goods which are
purchased infrequently. Furthermore, the potential
purchasers of these products include a large segment of the
general public, including some less sophisticated
individuals.
Opposition No. 91165912
20
While many purchasers may examine the information on
the packaging to ensure that the product is suitable for
their needs, this does not mean that purchasers would be
less likely to confuse trademarks which are otherwise
confusing. And, of course, even sophisticated purchasers
are not immune to trademark confusion. In re Pellerin
Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). Therefore, we
conclude that the conditions of purchase in this case would
not diminish the likelihood of confusion.
Accordingly, we find that this factor is neutral in
this case.
Actual Confusion
Applicant also argues that the absence of evidence of
actual confusion indicates that there is no likelihood of
confusion here noting, among other things, the substantial
sales of both products and the side-by-side displays in its
stores. Again, opposer disagrees noting that the absence of
actual confusion, by itself, does not mean that there is no
likelihood of confusion and that the circumstances present
here explain the lack of such evidence.
We agree with opposer. First, we note that the absence
of actual confusion does not necessarily lead to the
conclusion that there is no likelihood of confusion. In
this case, it is unclear whether there has been a true
opportunity for confusion. Applicant has sold its WAL-VERT
Opposition No. 91165912
21
product under highly restricted conditions. As we noted,
applicant sells its products, which are identical to those
of opposer, only in its own stores and only in the packaging
which repeatedly references applicant. Furthermore, the
respective products are sold side-by-side based on a
comparison. Again, none of these restrictions are stated in
the application. The side-by-side comparison which is the
rule here, would be an exception in the marketplace
generally. We must evaluate the likelihood of confusion in
this case apart from these restrictive conditions.
Consequently, the absence of actual confusion with regard to
sales under these conditions is of little probative value in
assessing the likelihood of confusion apart from these
conditions.
Accordingly, we conclude that this factor is neutral in
this case.
The Marks
In comparing the marks we must consider the appearance,
sound, connotation and commercial impression of the marks at
issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005).
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods are identical.
Opposition No. 91165912
22
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1992). The goods in this case are
identical.
Opposer argues that ALAVERT and WAL-VERT are similar
stating:
Here, the visual and aural similarities
between ALAVERT® and WAL-VERT are glaring because
both words are arbitrary terms, with prefixes that
differ by only one letter (plus a hyphen) and
identical suffixes. In addition, because both
words are meaningless, there are no preexisting
connotations that would enable consumers to
distinguish between them.

Opposer’s Brief at 12.
Applicant argues,
First, Applicant’s mark begins with a distinctly
different prefix, namely WAL-. Use of the WAL-
prefix and the hyphen following same breaks the
mark into two pieces. The hyphen adds a visually
distinctive element to Applicant’s mark.

Applicant’s Brief at 22.
Applicant adds that the differences in spelling and
presentation result in significant differences in appearance
and sound, as well as commercial impression. Applicant also
argues that the “WAL” prefix, which it has used for decades
in numerous marks, is uniquely identified with applicant,
the Walgreen Company. Furthermore, applicant argues that
its mark does not suggest that the user of its product will
avert allergies as ALAVERT suggests.
Opposition No. 91165912
23
First, we reject applicant’s arguments to the effect
that its WAL-VERT mark is distinguishable because of
applicant’s prior use of other comparable marks on its
private label products, such as, WAL-DRYL and WAL-ITIN. As
opposer correctly points out, we must limit our
consideration to the marks at issue here. Applicant
effectively asks us to recognize its “family of marks” as a
defense in this case; we decline to do so. Blansett
Pharmacal Co. Inc. v. Carmrick Laboratories Inc., 25 USPQ2d
1473, 1477 (TTAB 1992) (NALEX for nasal decongestants held
similar to NOLEX for nasal decongestants).
Furthermore, in its arguments applicant assumes that
potential purchasers of the WAL-VERT product will understand
the “WAL” prefix to identify a Walgreen private label
product and that potential purchasers will understand
further that applicant alone is the source of the product.
This is not necessarily true. In questioning Mr. Marschall
during his discovery deposition applicant’s counsel states,
“Not to be too cute, but my understanding is that sometimes
the store labels are private labels, and are actually made
by national brands, but they’re just labeled differently.”
Marschall Disc. at 119. Thus, we cannot assume, as
applicant urges, that potential purchasers all fully
understand the arrangement which applies in this case, that
is, that Walgreen produces the WAL-VERT product independent
Opposition No. 91165912
24
of others, including opposer. We must allow for the
likelihood that potential purchasers will assume that the
WAL-VERT product is simply labeled differently, but that it
comes from the owner of the national brand or that it is
otherwise associated with the owner of the strong national
brand implicated in the mark.
In addition, although applicant has sold the respective
products side-by-side to date, for purposes of our analysis
we cannot assume that, in all instances, the marks at issue
here will be viewed side-by-side in applicant’s stores. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). We must assume that potential purchasers may
encounter oppser’s mark in one context at a given time and
applicant’s mark separately in a different context at a
later time. This circumstance enhances the likelihood of
confusion.
While the marks do differ in appearance and sound, we
find the common element, “VERT,” of particular significance
here. As we noted above, “AL” is used in other marks for
allergy medications and related products. As such, it is
common and apparently weaker than the “VERT” component.
Based on this record “VERT” appears to be strong in the
field. In fact, applicant selected “VERT” to refer to the
ALAVERT product based on the likelihood that potential
purchasers would recognize “VERT” in that way in the WAL-
Opposition No. 91165912
25
VERT mark. We also see common suggestive meanings in the
marks. Contrary to applicant’s argument, “VERT,” as used in
the WAL-VERT mark, may suggest that the product will help
avert allergies. Again we noted that, under more typical
marketplace conditions, potential purchasers will recognize
the strong “VERT” element, and are likely to believe that
the owner of the ALAVERT mark is associated with the WAL-
VERT product in some fashion.
Finally, based on the full record, including the fact
that the goods of the parties are identical, we conclude
that WAL-VERT and ALAVERT are similar in appearance, sound,
and most notably in connotation and commercial impression.
Blansett Pharmacal Co. Inc. v. Carmrick Laboratories Inc.,
25 USPQ2d at 1477.
Accordingly, this factor favors opposer in this case.
Bad Faith
Opposer has also argued that applicant adopted the WAL-
VERT mark in bad faith. In this connection, applicant’s
prior conduct in selecting and even successfully registering
marks which combine the “WAL” prefix with a recognizable
element from the mark of a related national-brand product,
for example, WAL-DRYL and WAL-ITIN, is relevant. We have no
evidence that anyone objected to applicant’s prior uses of
marks of this type. Applicant apparently relied on this
experience in proceeding as it did here. This reliance is
Opposition No. 91165912
26
sufficient in this case to negate the claim of bad faith.
On the other hand, applicant’s prior experience cannot
deprive opposer of its right to object based on the
particular facts present here.
In this regard we also reject applicant’s suggestion
that we should look at the likelihood-of-confusion question
here in light of what applicant alleges to be a permissive
industry practice regarding private label marks. Again,
applicant asserts this theory based on actions by courts in
certain infringement cases. See, e.g., Pfizer, Inc. v.
Perrigo Co., 988 F.Supp. 686 (S.D.N.Y. 1997). We decline to
do as applicant suggests.
Conclusion
In conclusion, based on all evidence of record bearing
on the du Pont factors, we find that there is a likelihood
of confusion between opposer’s ALAVERT mark for
“pharmaceutical preparations, namely allergy relief and
antihistamine preparations” in International Class 5 and
applicant‘s WAL-VERT mark for “antihistamines and allergy
relief preparations” in International Class 5.
Finally, we note that, though we have no doubt, we
would resolve any doubt regarding likelihood of confusion in
favor of opposer, the prior user. Nina Ricci S.A.R.L. v.
E.T.F. Enterprises Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1904
(Fed. Cir. 1989)
Opposition No. 91165912
27
Decision: We sustain the opposition.

Drost, J., dissenting,

I respectfully dissent, because I do not believe there
is a likelihood of confusion in this case.
The first du Pont factor requires that we consider 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., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). When the
marks ALAVERT and WAL-VERT are compared in their entireties,
the dissimilarities in their sound, appearance, meaning, and
commercial impression outweigh their similarities.
I would not find that “vert” is “of particular
significance here” (slip op. at 23). Rather, I would find
that consumers would view these marks in their entireties,
WAL-VERT and ALAVERT. Because of the differences in their
initial term (WAL- and ALA), they are pronounced and look
different. Even if there is no evidence that the term
“vert” is used as part of others’ marks, it does not
necessarily follow that consumers will assume that all marks
with this ending are associated with the same source. “The
fact that one mark may bring another to mind does not in
itself establish likelihood of confusion as to source.”
Opposition No. 91165912
28
Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212
USPQ 641, 642 (CCPA 1982).
It is often held that the first word is the most
prominent term in a mark. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005)(“To be sure, CLICQUOT is
an important term in the mark, but VEUVE nevertheless
remains a ‘prominent feature’ as the first word in the mark
and the first word to appear on the label”). In this case,
I believe that the difference in the first syllable would
lead consumers to understand that the sources of the goods
are different.
Regarding the meanings of the marks, there are
significant differences. The majority does indicate that
opposer’s mark “is at most suggestive” (slip op. at 16).
Their only similarity in meaning is that they both may
suggest “avert.” To the extent that both marks may suggest
“averting” a medical problem, it is unlikely that consumers
would assume that this common meaning of the last syllable
is significant in view of the entirely different meanings of
the first terms “Wal-“ and “Ala.” Accord Smith v. Tobacco
By-Products and Chemical Corp., 243 F.2d 188, 113 USPQ 339
(CCPA 1957) (GREEN LEAF and BLACK LEAF not confusingly
similar); General Mills, Inc. v. Frito-Lay, Inc., 176 USPQ
148 (TTAB 1972) (The “nature of the marks (FUNYUMS and
Opposition No. 91165912
29
ONYUMS), and the nature of the differences between them are
considered sufficient to avoid a likelihood” of confusion).
The fact that the marks have a common ending does not
compel a finding that the marks are similar. Lever Brothers
Co. v. Producers Chemical Service, 283 F.2d 879, 128 USPQ 7,
8 (CCPA 1960) (We “can see no likelihood of the marks ‘LUX’
and ‘SHUX’ being confused by a potential purchaser”). The
commercial impressions of WAL-VERT and ALAVERT are also
different, inasmuch as they begin with different syllables
that have little in common.
If there were any doubt that the differences in the
marks are sufficient to avoid confusion, these doubts should
evaporate when the factor involving the lack of actual
confusion is considered. Certainly, case law recognizes
that the lack of actual confusion is often a very weak reed
to support an argument that there is no likelihood of
confusion. In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003); Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396
(Fed. Cir. 1983); and J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991).
Nonetheless, in appropriate situations, it may be entitled
to weight. Mr. Hero Sandwich Systems, Inc. v. Roman Meal
Co., 781 F.2d 884, 228 USPQ 364, 367 (Fed. Cir. 1986)
(“These distinctions coupled with the lack of actual
Opposition No. 91165912
30
confusion over a period of years lead us to conclude that
use of the mark ROMANBURGER is not likely to cause
confusion, mistake or deception”). See also King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974) (“In the absence of evidence to the
contrary, such lack of actual confusion over so many years
must be considered in this case as supportive of a finding
that confusion is not likely in the future”).
Normally, assertions of no actual confusion are easily
dismissed because of the lack of evidence that there was a
significant opportunity for such confusion to occur.
Nina Ricci S.A.R.L. v. E.T.F. Enterprises Inc., 869 F.2d
1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of
any showing of actual confusion is of very little, if any,
probative value here because (1) no evidence was presented
as to the extent of ETF's use of the VITTORIO RICCI mark on
the merchandise in question in prior years…”). Therefore,
when “neither party has submitted evidence as to the extent
of its use of its mark (and hence the extent of the
opportunity for such confusion to occur),” the lack of
actual confusion is not a significant factor. Midwest
Biscuit Co. v. John Livacich Produce, Inc., 203 USPQ 628,
630 (TTAB 1979). Here, the evidence shows that the goods of
the parties are sold together - not only in the same store
but side-by-side. There has also been a significant
Opposition No. 91165912
31
opportunity for confusion to occur inasmuch as applicant
itself has sold over two million individual units of
opposer’s ALAVERT product since the product was introduced
in 2002. Applicant’s Brief at 4; Van Howe Tr. at 16. In
2004, applicant also began selling its WAL-VERT
antihistamine product. While applicant has indicated that
its sales are confidential, it is clear that, despite the
rather short period of time for overlapping sales, there has
been a truly significant opportunity for confusion to occur.
Despite hundreds of thousands of sales of both products in
side-by-side sales, there have been no reported instances of
actual confusion.
I cannot easily discount this type of evidence. First,
it is consistent with what one could expect when marks as
different as WAL-VERT and ALAVERT are involved. Second, I
would not find that the “circumstances present here explain
the lack of such evidence.” Slip op. at 20. Opposer has
had substantial sales of its ALAVERT product. Applicant
operates approximately 5500 drug stores. Applicant has sold
millions of opposer’s ALAVERT products and a substantial
number of its WAL-VERT products. Hundreds of thousands of
purchasers have entered applicant’s stores and encountered
both applicant’s and opposer’s products. These products are
displayed side-by-side. Despite these hundreds of thousands
of opportunities for confusion to arise, there has been no
Opposition No. 91165912
32
reported instance of confusion. If the lack of evidence of
actual confusion can be so easily dismissed, this factor
becomes a mirage for defendants – an illusion that is within
sight but never reachable.
The majority points to the fact that applicant’s
“packaging repeatedly references applicant.” The fact that
applicant identifies itself with a house mark or with its
address is hardly unusual. It would be surprising if
products did not contain a house mark and trade names. See
In re General Motors Corp., 23 USPQ2d 1465, 1470 (TTAB 1992)
(Lack of actual confusion supported determination of no
likelihood of confusion even though applicant’s GRAND PRIX
is often used in association with applicant’s PONTIAC mark).
Regarding the “compare” language on the packaging, even
if this could prevent some confusion, it can hardly explain
its entire absence. Disclaimers of association with a
senior user are not often considered particularly effective
in avoiding trademark infringement. Weight Watchers
International Inc. v. Luigino's Inc., 76 USPQ2d 1361, 1366
(2d Cir. 2005) (“In all the circumstances, Luigino's did not
sustain its burden, and the district court lacked a
sufficient basis to conclude that the disclaimer solved the
problem”). In fact, “[c]onsumer studies indicate that
disclaimers are ineffective in curing customer confusion
over similar marks.” 4 McCarthy on Trademarks and Unfair
Opposition No. 91165912
33
Competition § 23:51 (4th ed. 2008). It is unlikely that the
use of this “compare” language in this case has eliminated
actual confusion. In addition, this statement is simply a
comparison statement, not a disclaimer. A company could use
such a statement for its own products to distinguish
different versions of its products. Therefore, the labeling
of applicant’s packaging is not likely the primary reason
that there is no evidence of actual confusion.
The majority also finds that “it is unclear whether
there has been a true opportunity for confusion to occur”
apparently because of applicant’s “highly restrictive
conditions.” I would have thought that selling the products
side-by-side, which means that they are sold in the same
stores at the same time to the same consumers, would have
been a true opportunity for confusion to occur. The
majority also maintains that the “side-by-side comparison
which is the rule here, would be an exception in the
marketplace generally.” While a side-by-side comparison is
not the test when comparing the parties’ marks, it is not a
rule of evidence that prohibits the courts or the board from
considering the lack of evidence of actual confusion when
the goods are indeed sold side-by-side. 4 McCarthy on
Trademarks and Unfair Competition § 23:59 (4th ed. 2008) (“A
side-by-side comparison of the conflicting marks is improper
if that is not the way buyers see the products in the
Opposition No. 91165912
34
market”) (emphasis added). See also Fun-Damental Too, Ltd.
v. Gemmy Industries Corp., 111 F.3d 993, 42 USPQ2d 1348,
1357 (2d Cir. 1997) (Side-by-side comparison is improper
when the products “are not sold side-by-side on a shelf”)
and Lever Brothers Co. v. The Winzer Co. of Dallas, Inc.,
326 F.2d 827, 140 USPQ 247, 249 (CCPA 1964) (“[T]he very
nature of supermarket displays is conducive to the side-by-
side or adjacent display of competing products and thus
actually affords an unique opportunity for the purchaser to
simultaneously compare the marks used thereon”). While the
majority concludes that this evidence is of “little
probative value,” the CCPA cautioned that: “We find no
warrant, in the statute or elsewhere, for discarding any
evidence bearing on the question of likelihood of
confusion”). du Pont, 177 USPQ 567. When national
competitors distribute their competitive products on a
nationwide basis, rather than being an exception, it should
be expected that many times, if not most of the time, these
products will appear on the same shelves in the same stores.
To give this evidence “little probative value” because the
parties’ goods are not sold in separate stores discounts the
fact that most consumers will actually encounter nationally-
marketed products at the same time in the same stores.
Also, selling one’s products only in one’s own stores would
normally reduce the chance that confusion could occur,
Opposition No. 91165912
35
because the seller can refrain from selling the other
product. However, in this case, applicant’s stores actually
sell both products.
The majority also raises an interesting point when it
maintains that “potential purchasers will assume that the
WAL-VERT product is simply labeled differently, but that it
comes from the owner of the national brand or that it is
otherwise associated with the owner of the strong national
brand implicated in the mark.” Because these goods are
chemically identical and applicant truthfully markets its
product as a house brand, it is possible that some consumers
may assume that opposer is somehow associated with all
generic equivalents, especially those whose marks have some
minimal similarity. Inasmuch as this assumption could occur
even if the marks were totally different, this speculation
should not be a basis for finding that there is confusion
here.
Finally, the majority says that “none of these
restrictions are stated in the application.” These
restrictions are the fact that the packaging contains “four
references to applicant, including a prominent display of
the WALGREEN house mark, a statement that the product is
distributed by Walgreen Co. and the following statement:
Opposition No. 91165912
36
‘Compare to ALAVERT active ingredient.’” Slip op. at 9.5
As discussed above, these restrictions are not likely the
explanation for the lack of actual confusion.
I do not mean to suggest that there is no validity to
any of the majority’s criticism of the evidence. Applicant
could have marketed its product without any other trademarks
on the package in a variety of stores without any comparison
language. Its failure to do so does not explain the lack of
actual confusion and I would give this evidence weight,
inasmuch as it supports the argument that the marks are
dissimilar enough to avoid confusion.
Ultimately, we must determine whether there is
probability of confusion, not simply a possibility of
confusion. Electronic Design & Sales Inc. v. Electronic
Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1393 (Fed.
Cir. 1992). “It is beyond question that an opposer
alleging likelihood of confusion under Section 2(d) has the
burden of proof to establish that applicant does not have
the right to register its mark.” Yamaha International Corp.
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,

5 Interestingly, the majority points out that applicant’s product
“uses colors similar to those on the ALAVERT product.” Normally,
this should increase the likelihood that there would be
confusion. Specialty Brands, Inc. v. Coffee Bean Distributors,
Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (“But
the trade dress may nevertheless provide evidence of whether the
word mark projects a confusingly similar commercial impression”).
With this similarity of trade dress, it is more significant that
there has been no evidence of actual confusion.
Opposition No. 91165912
37
1007 (Fed. Cir. 1988) (internal punctuation eliminated). In
this case, because of the differences in the marks and the
extensive side-by-side marketing of both applicant’s and
opposer’s goods with the marks ALAVERT and WAL-VERT, I would
conclude that opposer has not met its burden of showing that
there is a likelihood of confusion.