Agri Laboratories, Ltd.

Trademark Trial and Appeal Board

Oct 18, 1999

No. 75146210 (T.T.A.B. Oct. 18, 1999)

Hearing: Paper No. 21
March 24, 1999 HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Agri Laboratories, Ltd.
________
Serial No. 75/146,210
_______
Brian D. Anderson and Kathleen Cooney-Porter
Of Oblon, Spivak, McClelland, Maier & Neustadt, P.C.
for Agri Laboratories, Ltd.
Alec Powers, Trademark Examining Attorney,
Law Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Hanak, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Agri Laboratories, Ltd. has filed an application to
register the mark FLU-NIX for “analgesic and anti
inflammatory veterinary preparations for equine animals
sold by prescription through veterinarians.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of
Ser No. 75/146,210
2
confusion with the registered mark FLUNIXAMINE for “anti-
inflammatory preparations for veterinary use.”2 Applicant
and the Examining Attorney have filed briefs and both
participated in an oral hearing.
It is well established that any determination of
likelihood of confusion must be made on the basis of the
goods as identified in the application and in the cited
registration. Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ 1813 (Fed. Cir. 1987).
There is no question but that the veterinary preparations
of applicant are fully encompassed by the veterinary
preparations identified in the registration. Even more
specifically, applicant has made of record a copy of the
file history of the cited registration in which the
specimens show that the mark FLUNIXAMINE is being used by
registrant for the drug having the generic name Flunixin
Meglumine. Applicant asserts that it must assumed that its
product would fall under this same generic name. Thus, we
are dealing with virtually identical veterinary
preparations which would travel through the same channels
of trade and be bought, for later resale through
prescriptions, by the same veterinarians.

1 Serial No. 75/146,210, filed August 6, 1996, based on the
assertion of a bona fide intention to use the mark in commerce.
Ser No. 75/146,210
3
On this basis, we look to applicant’s mark FLU-NIX and
registrant’s mark FLUNIXAMINE. The Examining Attorney
argues that the marks are highly similar because both
contain the first two syllables of the generic name,
Flunixin Meglumine. He maintains that the suffix -AMINE in
the registered mark simply describes the “amines” present
in registrant’s goods and that FLUNIX is the dominant
portion of the mark.
Applicant argues that the cited mark, being an obvious
contraction of the generic designation, is only entitled to
a narrow scope of protection. Applicant maintains that the
proper policy is to allow the coexistence of third-party
marks in the pharmaceutical field which are suggestive of
the generic designation, rather than permit any one party
to appropriate the designation. Applicant further argues
that there are significant differences in the two marks
FLUNIXAMINE and FLU-NIX, not only in appearance and sound
but also in the fact that a second, distinct meaning exists
for applicant’s mark FLU-NIX, namely, “Nix the Flu.”
During the prosecution of this case, applicant made of
record a copy of the definitions found in the USP
Dictionary of USAN and International Drug Names (1996 Ed.)

2 Reg. No. 2,009,008, issued October 15, 1996, with claimed first
use dates of November 20, 1995.
Ser No. 75/146,210
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for the generic drug names Flunixin and Flunixin Meglumine.
In reviewing these definitions, we see that Flunixin is the
name for the anti-inflammatory and analgesic drug per se,
while Flunixin Meglumine is the name for the same anti-
inflammatory and analgesic drug when compounded with
Meglumine. In the interests of completeness, we have taken
judicial notice of the separate listing of Meglumine as the
name for the chemical compound D-Glucitol, 1-deoxy-1-
(methylamino)-, a drug used as a diagnostic aid in a
radiopaque medium,3 and of the general definition of an
“amine” as “one of a class of organic compounds which can
be considered to be derived from ammonia by replacement of
one or more hydrogens by organic radicals.”4 Meglumine,
accordingly, would be generally classified as an “amine.”
Furthermore, we note that on the specimen label found in
the file history of the cited registration which has been
made of record by applicant, the equivalent dosage of
Flunixin in each mL of registrant’s brand of Flunixin
Meglumine is set forth.
Taking all of this information into consideration, we
believe that the marks FLUNIXAMINE and FLU-NIX would be

3 USAN and the USP Dictionary of Drug Names (1992 Ed.).
4 McGraw-Hill Dictionary of Scientific and Technical Terms (3rd
Ed. 1984).
Ser No. 75/146,210
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likely to be viewed by the relevant purchasers as
comparable contractions of the two generic designations
Flunixin Meglumine and Flunixin, respectively, and as being
used for veterinary preparations originating from the same
source. Since both Flunixin and Flunixin Meglumine
function as anti-inflammatory and analgesic drugs, the
preparations identified in applicant’s application, we are
not required to make the assumption argued by applicant
that its preparations also fall under the generic
designation Flunixin Meglumine. Instead, applicant’s
preparations could well be the uncompounded drug Flunixin.
As such, FLUNIX (or FLU-NIX) would be the predictable
variation of the registered mark. The commercial
impression remains the same, the use of FLUNIX or FLU-NIX
as a shortened version of the generic name Flunixin. There
is no additional word of non-generic significance in
applicant’s mark which might serve to distinguish its mark
from the registered mark. Cf. American Cyanamid Corp. v.
Connaught Laboratories, Inc., 800 F.2d 306, 231 USPQ 128
(2nd Cir. 1986)[since “Hib” is generic as used in marks
HibVAX and HIB-IMUNE for influenza vaccines, suffixes are
sufficiently different to obviate likelihood of confusion].
The second meaning asserted by applicant for its mark,
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i.e., Nix the Flu, is not only unsupported by any evidence
of the use of the preparation for this particular
illness,5 but would also appear to be equally applicable to
the registered mark.
We acknowledge that the persons who would purchase and
prescribe these preparations are veterinarians and thus
professionals with sophistication in the field, as argued
by applicant and strongly relied upon in the dissent. We
also agree that this sophistication may result in the
veterinarians’ making a more careful perusal of the marks
than would the average layman. Nonetheless, we think the
more advanced level of knowledge possessed by these
veterinarians, which would certainly include some
familiarity with the general class of compounds known as
“amines,” would be likely to lead to the mistaken belief
that the anti-inflammatory preparations being sold under
the marks FLUNIXAMINE and FLU-NIX are companion products
from a single source, one the compounded form with the
amine Meglumine, the other Flunixin alone. The connotation
of the suffix –AMINE must be considered as viewed by the
relevant class of purchasers, which in this case consists
of professionals having a scientific background. Cf. Magic
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Wand Inc. v. RDB Inc., 940 F.2 638, 19 USPQ2d 1551 (Fed.
Cir. 1991)[although the term TOUCHLESS was used generically
by car wash manufacturers and dealers, it was not shown to
be understood in this manner by the relevant purchasing
public for automobile washing services]. Applicant’s
arguments for the co-existence of marks suggestive of the
generic designation cannot be stretched so far as to lead
purchasers to believe that they are obtaining companion
products from a single source, when this is not the case.
While applicant argues that since there is no evidence
of record with respect to several other of the du Pont
factors, and thus they must be weighed in applicant’s
factor, we do not find any of these factors of sufficient
import to counterbalance the virtually identical goods and
the channels of trade involved here, and the high degree of
similarity of the marks used on these goods. If any doubt
remains, we follow the well-established principle that any
doubts regarding likelihood of confusion must be resolved
against applicant, as the newcomer in the field. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988).

5 We note that in the Nexis excerpts made of record by applicant
to demonstrate use of the generic term Flunixin Meglumine, use of
the drug for horses for the treatment of colic is described.
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Decision: The refusal under Section 2(d) is affirmed.
T. J. Quinn
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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