King Bio Pharma-ceuticals, Inc.v.King Pharma-ceuticals, Inc.

Trademark Trial and Appeal Board

May 9, 2002

No. 91111332 (T.T.A.B. May. 9, 2002)

5/9/02

Hearing: Paper No. 30
February 12, 2002 ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

King Bio Pharmaceuticals, Inc.

v.

King Pharmaceuticals, Inc.
_____

Opposition No. 111,332
to Application Serial Nos.
74/508,722, filed on April 4, 1994;
74/700,380, filed on July 12, 1995;
and 74/700,382, filed on July 12, 1995.
_____

Steven C. Schnedler of Carter & Schnedler, P.A. for King
Bio Pharmaceuticals, Inc.

Jon L. Roberts, John F. Mardula and Shauna M. Wertheim of
Roberts & Abokhair, LLC for King Pharmaceuticals, Inc.
______

Before Seeherman, Wendel and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

King Bio Pharmaceuticals, Inc. (hereafter “opposer”)
has opposed three applications filed by King
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Opposition No. 111,332
2
Pharmaceuticals, Inc. (hereafter “applicant”) to register
the marks KING PHARMACEUTICALS (PHARMACEUTICALS
disclaimed),1 KING and design2 and KING PHARMACEUTICALS
and design (PHARMACEUTICALS disclaimed),3 as shown below,
for “pharmaceuticals for human and veterinary use,
namely, morphine, codeine, and related injectables; cough
syrup, antihistamines, decongestants, dermatological
preparations, and vitamins.” All three applications were
based on asserted use of the marks in commerce.

As grounds for opposition, opposer has alleged that
since 1990 it has used KING BIO PHARMACEUTICALS as a
trademark and trade name in connection with “its products
and the marketing and distribution of its products”; that
opposer has filed two applications to register KING BIO

1 Application Serial No. 74/700,382, filed July 12, 1995, and
asserting first use and first use of the mark in commerce on
June 30, 1994.
2 Application Serial No. 74/508,722, filed April 4, 1994, and
asserting first use on January 10, 1994 and first use in
commerce on January 20, 1994.
3 Application Serial No. 74/700,330, filed July 12, 1995, and
asserting first use and first use in commerce on June 30, 1994.
Opposition No. 111,332
3
PHARMACEUTICALS as a trademark (for goods identified as
“homeopathic dietary supplements for humans and animals”
and “reference manuals devoted to homeopathic remedies”),
and the Trademark Attorney examining each of opposer’s
applications has stated that, if applicant’s applications
Serial Nos. 74/700,382 and 74/508,722 (two of the
applications opposed herein) mature into registrations,
the Examining Attorney may refuse registration of
opposer’s marks pursuant to Section 2(d); and that the
issues with reference to applicant’s application Serial
No. 74/700,380 are the same as those with respect to
applicant’s other two applications.
Applicant has denied the allegations of the notice
of opposition and has asserted, affirmatively, that
opposer’s action is barred by estoppel and waiver; that
opposer corporation was dissolved by the state of North
Carolina; and that opposer “has filed an application for
a mark which is primarily a surname and thus non-
registrable ... and therefore is barred from bringing
this suit.”4

4 With the exception of its continuing assertion that KING BIO
PHARMACEUTICALS is primarily merely a surname, applicant has not
pursued its affirmative defenses, and therefore we will give
them no further consideration.

Opposition No. 111,332
4
The record includes the pleadings; the files of the
opposed applications; the trial testimony, with exhibits,
of opposer’s witnesses Frank J. King, Jr. and Eric
Thiele, and of applicant’s witnesses John A.A. Bellamy
and Joseph Ridgeway, Sr.; and opposer’s responses to
certain of applicant’s interrogatories and requests for
admission, and portions of applicant’s discovery
depositions of Frank King, Jr. and Sherry Frisby,
submitted by applicant under a notice of reliance.5 The
case has been fully briefed, and both parties were
represented at a hearing before the Board.
The Board previously decided the parties’ cross-
motions for summary judgment and granted partial summary
judgment in favor of opposer on the issue of priority,
holding that opposer had shown priority of use of the
mark KING BIO PHARMACEUTICALS for “non-prescription
homeopathic remedies.”6 In that decision, the Board noted

5 Although opposer’s own applications were not formally
introduced into the record, both parties have discussed them in
their briefs, and we therefore deem them to have been stipulated
into the record.
6 We note that opposer has shown prior use of its mark on,
inter alia, dermatological preparations (products for acne and
for eczema/rashes/hives) and medications for allergies, for
colds and flu (including symptoms of congestion and dry cough)
and for coughs. This evidence was submitted with opposer’s
cross-motion for summary judgment. Although normally materials
submitted in connection with a motion for summary judgment are
not of record unless specifically made of record during the
testimony period, in this case the issue of priority was decided
Opposition No. 111,332
5
that a party relying on common law rights in a mark, as
opposer is here, must prove it has proprietary rights in
the mark. Applicant had asserted in its motion that
opposer could not show such rights because of applicant’s
contention that the mark KING is primarily merely a
surname, and the Board found that there were genuine
issues as to this point.
As the Board said in the decision on summary
judgment, opposer, as the party opposing registration on
the basis of likelihood of confusion with its own mark,
must establish that KING BIO PHARMACEUTICALS is
distinctive of its goods either inherently or through the
acquisition of secondary meaning. See Hoover Co. v.
Royal Appliance Manufacturing Co., 238 F.3d 1357, 57
USPQ2d 1720 (Fed. Cir. 2001); Towers v. Advent Software,
Inc., 913 F.2d 942, 16 USPQ2d 1039 (Fed. Cir. 1990).
We now make clear that we find opposer’s mark KING
BIO PHRAMACEUTICALS to be inherently distinctive, and
that opposer’s use of this term as a trademark prior to
applicant’s first use is sufficient to establish

in opposer’s favor on summary judgment, and therefore opposer
was under no obligation to submit evidence of priority at trial.
In these circumstances, we think it appropriate to consult that
evidence submitted in connection with the summary judgment
motion to ascertain the specific homeopathic products for which
opposer was determined to have shown priority.

Opposition No. 111,332
6
opposer’s priority. Although KING is the surname of
opposer’s principal, Mr. Frank J. King, Jr., and the
words BIO PHARMACEUTICALS are descriptive of opposer’s
goods, as shown by opposer’s disclaimer of them in its
two pending applications, the term KING is not primarily
merely a surname. Rather, KING has a well-recognized
meaning as an ordinary word (see definitions set forth at
footnote 12 of the Board’s November 30, 2000 decision on
the cross-motions for summary judgment). Accordingly,
KING, and the mark KING BIO PHARMACEUTICALS, cannot be
primarily merely a surname. As Assistant Commissioner
Leeds explicitly stated in Ex parte Rivera Watch Corp.,
106 USPQ 145 (Comr Pats 1955), “If the mark has well
known meanings as a word in the language and the
purchasing public, upon seeing it on the goods, may not
attribute surname significance to it, it is not primarily
merely a surname. ‘King’, ‘Cotton’ and ‘Boatman’ fall in
this category.” See also Fisher Radio Corp. v. Bird
Electronics Corp., 162 USPQ 265 (TTAB 1969) (BIRD and
design held not primarily merely a surname, even though
Bird was the name of applicant’s president).
This brings us to a consideration of the issue of
likelihood of confusion. Our determination of this issue
is based on an analysis of all of the probative facts in
Opposition No. 111,332
7
evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). The parties have each highlighted
certain du Pont factors in their briefs and, while we
have considered each relevant factor, we have focused our
discussion on those that we and the parties have
considered most important.
Turning first to the goods, the evidence shows that
opposer produces a wide variety of homeopathic
pharmaceuticals for both humans and animals, while
applicant uses its mark on prescription allopathic drugs.7
Much of applicant’s argument focuses on these differences
in the parties’ goods, and specifically the assertion
that applicant’s goods are prescription pharmaceuticals,
while opposer’s are non-prescription homeopathic
products. (Homeopathic products are made with all-
natural ingredients.)
As a preliminary matter, we note that, although
opposer has traditionally produced homeopathic products
that are sold without prescription, as part of its trial

7 John Bellamy, applicant’s Executive Vice President and
General Counsel, testified that applicant was not selling
vitamins or any products for veterinarian use. Accordingly, if
applicant were to ultimately prevail in this proceeding, the
file will be remanded to the Trademark Examining Attorney,
pursuant to Trademark Rule 2.131, for consideration of the
registrability of the marks for such goods.
Opposition No. 111,332
8
testimony it presented evidence that it was in the
process of producing prescription medicines. But such
evidence is not necessary for us to find that the
parties’ goods are, in part, legally identical. Although
applicant makes much of the fact that its pharmaceuticals
are prescription products, the identifications of the
goods set forth in the applications do not limit the
products in this manner. We can, of course, take
judicial notice that the morphine, codeine and related
injectable pharmaceuticals for human and veterinary use
are prescription products because of the controls on
narcotic drugs. Indeed, opposer acknowledges this in its
brief. However, the identifications in applicant’s
applications also include cough syrup, antihistamines,
decongestants and dermatological preparations, and such
products may be sold over-the-counter as well as by
prescription, and may be homeopathic as well as
allopathic. Indeed, opposer sells many of these products
without prescription.
The latter products-- cough syrup, antihistamines,
decongestants and dermatological preparations--are
legally identical to many of the products on which
opposer uses its KING BIO PHARMACEUTICAL marks. It is
well settled that the question of likelihood of confusion
Opposition No. 111,332
9
must be determined based on an analysis of the mark as
applied to the goods and/or services recited in
applicant’s application vis-à-vis the goods and /or
services recited in an opposer’s registration, rather
than what the evidence shows the goods and/or services to
be. Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, NA, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, of course, opposer does not have a
registration, but applicant’s goods must be considered as
they are identified in its applications, and those
identifications are not limited to prescription or even
allopathic drugs. Thus, applicant’s identification of
goods must be read to encompass, for example, non-
prescription homeopathic cough syrup, decongestants and
dermatological preparations.
In view of this legal identity of the products, the
channels of trade must be considered to be the same.
And, in fact, the evidence shows that both parties’
products are sold in drugstores. Although applicant
contends that sales of opposer’s products will occur
through pharmacies “sometime in the future,” brief, p.
23, in fact the evidence shows that since 1999 opposer
has focused its marketing efforts on drugstores and
pharmacists, and that opposer currently sells its over-
Opposition No. 111,332
10
the-counter products through general pharmacies such as
Eckerd’s.
Moreover, the classes of purchasers of the products
must also be considered to be, in part, the same.
Specifically, because applicant’s identification is not
limited to prescription pharmaceuticals, its goods must
be deemed to be marketed to the general public and not
just to physicians and pharmacists, as applicant asserts.
The general public are also the purchasers of opposer’s
“mass market” goods.
Because of this, we do not accept applicant’s
argument that the purchasers of its goods are physicians
and pharmacists who are “capable of distinguishing
between goods associated with allegedly confusing marks.”
Brief, p. 23. Whatever the care exercised by pharmacists
and physicians, the question of likelihood of confusion
must also be considered from the standpoint of the public
at large. For similar reasons, we give minimal probative
value to the survey done by applicant which concluded
that there was “little likelihood of confusion between
the two companies based on their respective corporate
names” or their respective trademarks.8 The universe used

8 There is some question as to whether it is the use of the
corporate names or the marks that would create little likelihood
of confusion. The survey results reported in Exhibit 1 to the
Opposition No. 111,332
11
for this survey was pharmacists and drug wholesalers; Mr.
Ridgway, the survey creator and director, testified that
he was not asked to do any measure of likelihood of
confusion among the general public. Thus, the survey
does not provide any information about whether ordinary
consumers are likely to be confused by the
contemporaneous use of the parties’ marks on over-the-
counter pharmaceuticals such as cough syrup,
decongestants and dermatological preparations.
We now turn to a consideration of the parties’
marks, keeping in mind that when marks would appear on
virtually identical goods or services, as is the case
here in view of the legal identity of the goods, the
degree of similarity necessary to support a conclusion of
likely confusion declines. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1608,
1700 (Fed. Cir. 1992).
Opposer’s mark is KING BIO PHARMACEUTICALS.
Sometimes, with opposer’s mass market products, this mark
appears with a tiny diamond design containing a person

testimony deposition of Joseph Ridgway referred to “corporate
names,” but when Mr. Ridgway testified he referred to
“trademarks.”
Opposition No. 111,332
12
superimposed on a globe.9 Applicant’s marks, as noted
above, are the words KING PHARMACEUTICALS, and KING and
KING PHARMACEUTICALS, both of which are depicted within a
crown design. Applicant contends that the inclusion of
BIO between KING and PHARMACEUTICALS in opposer’s mark is
“sufficient to conclude lack of similarity.” Brief, p.
12. We disagree.
It is well established that there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). We find that the word KING is the dominant
element in opposer’s and applicant’s marks. The word
PHARMACEUTICALS is generic for both parties’ goods, and
has no source-indicating value. The word BIO in
opposer’s mark is at least descriptive, while the crown
design in two of applicant’s marks merely reinforce the
word KING.
But it is not only because opposer’s and applicant’s
marks have the same dominant word, KING, that they convey

9 There is also testimony that opposer has in the past used a
crown design with the words, and may still be using it, but not
for its mass market products.
Opposition No. 111,332
13
the same commercial impression. The marks look and sound
alike as well. They all share KING as the first word and
two of applicant’s mark, as does opposer’s mark, have
PHARMACEUTICALS as the last word. We think it unlikely
that, if used on identical goods which appear near each
other on drugstore shelves, consumers are likely to even
notice that the three letters BIO appear in opposer’s
mark between the words KING and PHARMACEUTICALS or are
absent from applicant’s mark. Even if consumers were to
notice this difference, they are not likely to realize
that the presence or absence of these letters indicates a
separate source for the goods.
Applicant argues that opposer’s mark is primarily
merely a surname and, therefore is a weak mark. However,
as we have previously stated, KING is not primarily
merely a surname, in view of the commonly understood non-
surname meaning of this word. Nor is there any evidence
that there are KING marks being used by others in the
pharmaceutical industry, such that we could conclude that
consumers are accustomed to differentiating between
various KING marks, and in particular would be able
distinguish between opposer’s and applicant’s marks by
the very minor differences we have discussed above. We
recognize that KING has a suggestive laudatory
Opposition No. 111,332
14
significance, such that it cannot be considered an
arbitrary mark and accorded a broad scope of protection.
Moreover, opposer’s sales and advertising do not put its
mark into the category of a well known or famous mark.
However, even if we accord opposer’s mark a relatively
limited degree of protection, that protection still
extends to the use of such similar marks as KING
PHARMACEUTICALS, KING and crown design, and KING
PHARMACEUTICALS and crown design for identical goods.
In addition to the foregoing, another factor
favoring opposer is the fact that it uses KING BIO
PHARMACEUTICALS as a house mark for a wide range of human
and veterinary pharmaceuticals.
Accordingly, we find that applicant’s use of its
three applied-for marks for its identified goods is
likely to cause confusion with opposer’s mark KING BIO
PHARMACEUTICALS for non-prescription homeopathic
remedies. We would point out that in reaching this
conclusion, we have not relied on the evidence of actual
confusion submitted by opposer. Frank King, opposer’s
president, testified that he had received various
inquiries as to whether there was a connection between
opposer and applicant. The generalized nature of most of
this testimony is not sufficient for us to find that
Opposition No. 111,332
15
there were instances of actual confusion. As for the
more detailed testimony of specific instances of
confusion, such instances do not show confusion by
purchasers of the goods, but relate to misdirected mail
by the U.S. Patent and Trademark Office, a solicitation
for a charitable donation, and the leasing of equipment.
On the other hand, we do not regard the lack of evidence
of actual confusion as an indication that confusion is
not likely to occur. Evidence of such confusion is
notoriously difficult to obtain. In this case, the lack
of confusion may be explained because of the actual
differences in the parties’ goods (that is, to this point
opposer’s goods are non-prescription and applicant’s are
prescription), differences that are not reflected in
applicant’s identification of goods.
Finally, we must address applicant’s comment about
opposer’s “failure” to undertake a survey on likelihood
of confusion. This Board has specifically stated that
there is no requirement for a plaintiff to conduct such a
survey, and that no negative inference will be drawn from
a party’s failure to offer survey evidence in a
proceeding before the Board. Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).
Opposition No. 111,332
16
Decision: The opposition is sustained.