Cylex, Inc.

Trademark Trial and Appeal Board

Jul 8, 2004

No. 76481271 (T.T.A.B. Jul. 8, 2004)

Mailed:
July 8, 2004
Hearing: Paper No. 11
May 5, 2004 Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cylex, Incorporated
________
Serial No. 76481271
_______
Michael E. Whitham of Whitham, Curtis & Cristofferson, P.C.
for Cylex, Incorporated.
Carol Spils, Trademark Examining Attorney, Law Office 101
(Thomas G. Howell, Managing Attorney)
_______
Before Simms, Bucher and Bottorff Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On January 9, 2003, applicant filed the above-
captioned application seeking registration of the mark
IMMUKNOW (in typed form) for goods identified in the
application as “diagnostic reagents for clinical and
medical laboratory use; test kits for the detection of
lymphocyte function composed of reagents for clinical and
medical laboratory use,” in Class 5. The application is
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76481271
2
based on applicant’s asserted bona fide intention to use
the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to applicant’s goods,
so resembles the mark depicted below,
previously registered for goods identified in the
registration as “pharmaceutical used in plasma volume and
protein substitution, blood coagulation and fibrinolysis,
tissue adhesion, intravenous immuno therapy, passive
immunization, active immunization and simulation, active
immunization and simultaneous prophylaxis,”1 as to be likely
to cause confusion, to cause mistake, or to deceive. See
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
1 Registration No. 1293791, issued September 11, 1984.
Affidavits under Sections 8 and 15 accepted and acknowledged.
Ser. No. 76481271
3
Applicant and the Trademark Examining Attorney filed
main appeal briefs, but applicant did not file a reply
brief. An oral hearing was held at which applicant’s
counsel and the Trademark Examining Attorney presented
arguments. We reverse the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We turn first to the issue of whether applicant’s
goods and registrant’s goods, as identified in the
application and registration, respectively, are similar or
dissimilar. It is not necessary that the respective goods
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner, or
Ser. No. 76481271
4
that the circumstances surrounding their marketing are
such, that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective goods. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
The Trademark Examining Attorney has submitted a
number of third-party registrations which include both
pharmaceuticals and diagnostic reagents in their
identifications of goods. Although these registrations are
not evidence that the marks shown therein are in commercial
use, or that the public is familiar with them, they
nevertheless are probative evidence to the extent that they
suggest that the goods or services identified therein are
of a type which may emanate from a single source under a
single mark. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard
Ser. No. 76481271
5
Co., Inc., 6 USPQ2d 1467 (TTAB 1988).2 In any event,
applicant has conceded that many companies market both
pharmaceutical products and diagnostic reagents under a
single mark. Applicant’s counsel also conceded (at the
oral hearing) that applicant’s diagnostic reagents and its
test kits for the detection of lymphocyte function are used
to test for the very condition(s) that are treated by
registrant’s pharmaceutical product. Based on this third-
party registration evidence and on applicant’s concessions,
we find that applicant’s goods and registrant’s goods,
while not identical or competitive, nonetheless are
complementary and related products to the extent that they
are used in the diagnosis and treatment of the same
condition(s).
We also find that the respective goods might be
marketed in at least one overlapping trade channel and to
at least one overlapping class of purchasers, i.e., to
physicians. Neither applicant’s nor registrant’s
2 We note, however, that of the more than fifty third-party
registrations submitted by the Trademark Examining Attorney, only
a few are probative evidence of the relatedness of the goods,
under Albert Trostel and Mucky Duck. The vast majority of the
third-party registrations were issued pursuant to Section 44
without any allegation of use in commerce, and they therefore are
not probative. Certain other of the registrations, although use-
based, cover goods and services which are dissimilar to the goods
at issue in this case (notwithstanding that the words
“pharmaceutical” and “diagnostic reagent” appear (in different
contexts) in their identifications of goods).
Ser. No. 76481271
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identification of goods includes any limitations or
restrictions, so we must presume that the respective goods
are marketed in all normal trade channels and to all normal
classes of purchasers for such goods. See In re Elbaum,
211 USPQ 639 (TTAB 1981). Registrant’s pharmaceutical
product, like other pharmaceutical products, normally would
be marketed both to the physician who prescribes it to his
or her patient, to the pharmacist who dispenses it to the
patient, and to the patient directly, via consumer
advertising.3 As for applicant’s diagnostic reagents and
test kits, applicant’s identification of goods specifically
states that clinical and medical laboratories are the
intended users of the products. We reasonably presume that
applicant, unlike registrant, does not market its
diagnostic reagents and its test kits directly to end
consumers (i.e., patients) via mass advertising, nor to
pharmacists. However, it also is reasonable to presume
that applicant, like registrant, markets its products to
physicians, in an effort to persuade the physician whose
patient requires a lymphocyte function test to order
applicant’s test (and not a competing test) from the
3 Cf. Alfacell Corporation v. Anticancer, Inc., ___ USPQ2d ___,
Cancellation No. 92032202 (TTAB June 22, 2004); Kos
Pharmaceuticals Inc. v. Andrx Corp., ___F.3d ___, 70 USPQ2d 1874,
1887 n.12 (3d Cir. 2004).
Ser. No. 76481271
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laboratory. These are the same physicians to whom
registrant would market its pharmaceutical product in an
effort to persuade the physician to prescribe registrant’s
product for the patient’s use. Thus, the physician could
order applicant’s test to be performed on his or her
patient, receive the results of that test, and then
prescribe registrant’s pharmaceutical to the patient, if
appropriate. Even if the physician is not the actual
purchaser or end user of either applicant’s test or
registrant’s drug, it is the physician who makes the
decision to recommend, order or prescribe utilization of
both the test and the drug. To that extent, the purchasers
and trade channels for applicant’s and registrant’s
respective products can be deemed to be overlapping.
We also find, however, that these physicians, who
comprise the only class of overlapping purchasers, are
likely to be knowledgeable, sophisticated purchasers (or
prescribers) of the goods at issue. Both applicant’s and
registrant’s products appear to be highly specialized
products, designed for specific medical and clinical uses.
Likewise, these physicians are highly trained
professionals, and they are likely to exercise more than
the normal degree of care in determining whether to order
applicant’s diagnostic test, or to prescribe registrant’s
Ser. No. 76481271
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pharmaceutical product. This fact mitigates against a
finding of likelihood of confusion. See, e.g., In re
Istituto Sieroterapico E Vaccinogeno Toscano “SCLAVO”
S.p.A., 226 USPQ 1035 (TTAB 1985); Astra Pharmaceutical
Products v. Beckman Instruments, 718 F.2d 1201, 220 USPQ
786 (1st Cir. 1983).4
We next must determine whether applicant’s mark and
the cited registered mark, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. 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. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
4 Because applicant’s goods are not pharmaceutical products which
could be substituted for registrant’s pharmaceutical product or
purchased directly by the patient, the heightened degree of care
which must be taken to avoid confusion between pharmaceutical
products is not applicable here. Cf. Alfacell Corporation v.
Anticancer, Inc., supra; Kos Pharmaceuticals Inc. v. Andrx Corp.,
supra.
Ser. No. 76481271
9
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Applicant’s mark and registrant’s mark are identical
in terms of sound; applicant concedes that the marks would
be pronounced the same way. In terms of appearance, we
find that the design element of the cited registered mark
functions merely as a carrier device which performs little
or no source-indicating function. Although we do not
ignore this design element in our comparison of the marks,
we find that it contributes relatively little to the
commercial impression of the registered mark. Rather, it
is the literal portion of the mark, i.e., IMMUNO, which
dominates the mark’s commercial impression. We also find
that the marks look similar to the extent that both feature
a word that begins with the letters IMMU-. The remainders
of the marks look different, however, insofar as
applicant’s mark, but not registrant’s mark, contains the
readily-perceived word KNOW.
In terms of connotation and overall commercial
impression, we find that the marks are more dissimilar than
Ser. No. 76481271
10
similar. The cited registered mark directly connotes
(indeed, it denotes) the scientific formative term
“immuno-.” We take judicial notice that “immuno-” is
defined as follows in Webster’s Ninth New Collegiate
Dictionary (1990) at 602: “immuno- comb form [ISV, fr.
immune]5 1 : physiological immunity 2 :
immunologic : immunologically
: immunology and .” The
dictionary also includes entries for a number of words
which begin with the formative “immuno-,” such as
“immunoassay,” “immunochemistry,” “immunodeficiency,”
“immunogenic,” “immunology” and “immunotherapy.” The
dictionary defines this last word, “immunotherapy,” as
“treatment of or prophylaxis against disease by attempting
to produce active or passive immunity.” On its face,
registrant’s identification of goods suggests that
registrant’s pharmaceutical product is used in such
immunotherapy, i.e., “intravenous immuno therapy [sic],
passive immunization, active immunization and simulation,
active immunization and simultaneous prophylaxis.” Such is
5 The dictionary, at page 16, states that the designation ISV
stands for “International Scientific Vocabulary,” which is used
to describe the etymology of technical words which are in
international use and which possibly “originated elsewhere than
in English.”
Ser. No. 76481271
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the connotation of the literal portion of applicant’s mark,
i.e., IMMUNO.
Applicant’s mark IMMUKNOW, by contrast, is a rather
cleverly-coined word which combines or conflates the
scientific term “immuno-” (which has the connotation
described above) and the word “know” (which connotes the
knowledge that is gained by use of applicant’s test). This
transformation of the term “immuno-” into the coined word
IMMUKNOW results in a mark which is distinctive, unusual
and memorable. As applied to applicant’s diagnostic
reagents and test kits, the mark creates a commercial
impression which is quite dissimilar to the commercial
impression created by the cited registered mark.
Viewing the marks in their entireties, we find that
although the marks are phonetically identical, they are
quite different in terms of their overall commercial
impressions. Both marks sound like the scientific term
“immuno-,” but applicant has cleverly transformed that term
into the coined word IMMUKNOW, which on the whole looks
different than registrant’s mark and has a decidedly
different (and distinctive) connotation.
In conclusion, we must presume, given the
incontestable status of the cited registration and
notwithstanding the dictionary evidence discussed above,
Ser. No. 76481271
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that IMMUNO, the literal portion of registrant’s mark, is
inherently distinctive as applied to registrant’s goods.
However, based on the dictionary evidence, we find that
IMMUNO nonetheless is highly suggestive as applied to goods
in the immunology field such as registrant’s, and that it
is not a particularly strong source-indicator for such
goods. More specifically, we find on this record that the
scope of protection to be accorded to registrant’s mark is
not so broad that it precludes registration of applicant’s
highly distinctive and quite dissimilar mark, even as
applied to applicant’s goods (which are somewhat
complementary to registrant’s goods). Cf. Kellogg Co. v.
Pack'Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990),
aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Moreover, the only overlapping class of purchasers for the
respective goods is the physicians who conceivably might
order applicant’s test from laboratories, and who would
prescribe registrant’s drug to patients (via a pharmacist).
These physicians are likely to exercise a sufficient degree
of care in ordering or prescribing these respective goods
that source confusion is not likely to result from use of
the dissimilar marks IMMUNO and IMMUKNOW.
For these reasons, and on this record, we conclude
that confusion is not likely to result from applicant’s use
Ser. No. 76481271
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of its IMMUKNOW mark on the goods identified in the
application.
Decision: The refusal to register is reversed.