Parnell Technologies Pty Ltd

Trademark Trial and Appeal BoardMay 22, 2013

No. 79087045 (T.T.A.B. May. 22, 2013)

Mailed: May 22, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Parnell Technologies Pty Ltd ________ Serial No. 79087045 _______ Patrick C. Woolley and Carla M. Lee of Polsinelli Shughart PC for Parnell Technologies Pty Ltd. Florentina Blandu, Trademark Examining Attorney, Law Office 117 (Brett J. Golden, Managing Attorney). _______ Before Seeherman, Taylor and Kuczma, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Parnell Technologies Pty Ltd has applied to register the trademark GLYDE, in standard characters, for, as subsequently amended: veterinary preparations and pharmaceuticals, namely, preparations for horses and dogs that sustain cartilage synthesis and reduce inflammation, none of the aforementioned being lubricant; veterinary foods which have a health giving property, namely, preparations for horses THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 79087045 2 and dogs that sustain cartilage synthesis and reduce inflammation.1 Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion. Specifically, the examining attorney asserts that applicant’s mark GLYDE so resembles the mark GLIDE PHARMA, with PHARMA disclaimed, registered for, inter alia, the following goods, that, if applicant were to use its mark with its identified goods, it is likely to cause confusion or mistake or to deceive: Pharmaceutical and veterinary preparations and substances for the diagnosis of, treatment of or protection against infectious diseases, pain, inflammation and obesity; pharmaceutical and veterinary preparations and substances for the diagnosis of, treatment of or protection against viral, metabolic, musculoskeletal, central nervous system, endocrinological, immunological, oncological, neurological, hormonal, dermatological and psychiatric related diseases and disorders; pharmaceutical and veterinary preparations and substances for skin and tissue repair; prophylactic pharmaceutical and veterinary preparations and substances; vaccines, prophylactic vaccines, therapeutic vaccines; contraceptive preparations and substances; all the aforesaid being in solid dosage form (Class 5).2 1 Application Serial No. 79087045, filed August 5, 2010, under Section 66(A) of the Trademark Act, as a request for extension of protection of International Registration No. 1050296, issued August 5, 2010. 2 Registration No. 3779916, issued April 27, 2010. The registration also includes goods in Class 10 and services in Class 42. The examining attorney has concentrated her arguments on the likelihood of confusion with the Class 5 goods, and we therefore have done the same. Ser. No. 79087045 3 Applicant has appealed. We affirm the refusal of registration. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in 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). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). Turning first to the goods, applicant’s identified goods include non-lubricant veterinary preparations for horses and dogs that sustain cartilage synthesis and reduce inflammation. The cited registration includes veterinary preparations for the treatment of or protection against inflammation. Because these veterinary preparations as identified in the registration encompass the veterinary preparations identified in the application, based on the Ser. No. 79087045 4 identifications alone, applicant’s goods must be considered to be in part legally identical to the registrant’s goods. Although applicant did not even address the du Pont factor of the similarity of the goods in its appeal brief, in its reply brief it argued that “horse and dog health care products are different from general substances for the treatment of infectious diseases, psychiatric related diseases and disorders, and contraceptive preparations and substances,” and that “Applicant’s horse and dog health care products come in paste or powder formulations, while Registrant’s goods are all in a solid dosage form similar to a liquid delivered via syringe.” p. 7. We are not persuaded by these arguments. As noted, the registrant’s identification of goods includes not only general substances for the treatment of infectious diseases, psychiatric related diseases and disorders and contraceptive preparations and substances, but also includes veterinary preparations for the treatment of or protection against inflammation. As for applicant’s point about the physical form of the preparations, applicant’s identification contains no limitation, and therefore could be sold in “solid dosage form”; further, there is no evidence that the “solid dosage form” referenced in the registration restricts the registrant’s goods to liquids Ser. No. 79087045 5 delivered via syringe. On the contrary, the wording “solid dosage form” would encompass pills and other non-liquid preparations. Because the goods are in part legally identical, the du Pont factor of the similarity of the goods favors a finding of likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application). Moreover, we must presume that the legally identical goods travel in the same channels of trade. In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). This du Pont factor, too, favors a finding of likelihood of confusion. We turn next to the du Pont factor of the similarity of the marks, keeping in mind that when marks would appear on virtually identical goods or services, 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 1698, 1700 (Fed. Cir. 1992). Applicant’s mark is GLYDE, the cited mark is GLIDE PHARMA. It is a well-established principle that, in articulating reasons for reaching a conclusion on Ser. No. 79087045 6 the issue of likelihood of confusion, 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, 751 (Fed. Cir. 1985). Because PHARMA is descriptive, if not generic, for veterinary and pharmaceutical products, the presence of this word in the cited mark does not serve to distinguish the marks. It is the word GLIDE in the cited mark that has the source-indicating significance, and is therefore the portion of the mark that consumers will look to and remember. As a result, it deserves the greater weight in our comparison of the marks. GLIDE, of course, is identical to GLYDE in pronunciation and virtually identical in appearance. Although applicant argues that the Y in GLYDE creates an unusual spelling, consumers will readily understand that GLYDE is merely a misspelling of GLIDE, and will view the words as being equivalents. Further, because the marks are used on identical goods, they have the same connotation.3 Overall, despite the additional word PHARMA 3 Applicant contends that GLIDE in the cited registration suggests “the smooth, effortless method of moving pharmaceutical preparations into the body,” brief, p. 10. Applicant does not indicate a meaning for its mark GLYDE, and has not provided any Ser. No. 79087045 7 in the registered mark, the marks convey the same commercial impression. Applicant argues that the cited registration is entitled to a narrow scope of protection, asserting that “a search of the USPTO TESS database discloses 57 active records incorporating the letter string ‘glid’ in Class 5.” Request for reconsideration filed July 20, 2012. Although search summary results are not sufficient to make registrations of record, in this case applicant did not even submit the summary. It did, however, submit five third-party registrations for marks that include the element GLIDE, and these are of record, as is a sixth registration that we deem to have been stipulated into the record.4 Third-party registrations may be used in the manner of dictionary definitions, to show that a term has a evidence that the mark would have a different meaning from GLIDE PHARMA. 4 Registration No. 3594808 for BODYGLIDE for medicated skin care preparations and analgesics; Registration No. 3610893 for HYALOGLIDE for, inter alia, pharmaceutical and medical preparations for use in general surgery; Registration No. 4029479 for PRO-GLIDE for flea and tick insecticides for pets sold in plastic applicator tubes; and Registration No. 3528941 for FENOGLIDE and Registration No. 3091590 for TRIGLIDE, both for pharmaceutical products, namely, lipid and triglyceride reducing agents. The sixth registration, No. 3987719, is for WATERGLIDE and design for, inter alia, pharmaceutical preparations for sexual health and personal hygiene purposes. Applicant referred to this registration in its request for reconsideration, but did not make it of record. However, the examining attorney discussed this registration in her brief, along with the other third-party registrations that were properly made of record, and therefore we deem it to be stipulated into the record. Ser. No. 79087045 8 particular meaning or significance in an industry. In this case, it is not clear from the third-party registrations that GLIDE has the same significance in each mark. In any event, even assuming that registrant’s mark has a suggestive meaning, because applicant’s and the registrant’s goods are legally identical, both marks would have the same meaning. Thus, even if we treat the registrant’s mark as suggestive, the scope of protection to which it is entitled would still extend to prevent the registration of a virtually identical mark (differing only in the omission of a descriptive or generic term, and in the substitution of a “Y” for an “I”) for legally identical goods. Applicant also asserts that, because of the third- party registrations, even small differences in the marks are sufficient to allow consumers to distinguish among the sources of the goods bearing various GLIDE marks. First, we point out that third-party registrations are not evidence of use of the marks. Therefore, the registrations submitted by applicant do not go to the du Pont factor of the number and nature of similar marks in use on similar goods. Moreover, even if there were evidence of such use, the differences between these third-party marks and goods are greater than the difference between applicant’s mark Ser. No. 79087045 9 GLYDE and the cited registration for GLIDE PHARMA for legally identical goods. For example, unlike applican’ts mark, none of the third-party marks begin with the word “glide.” Thus, even if consumers were able to distinguish between other GLIDE-formative marks for goods that are generally in the pharmaceutical field, that would not show that they would distinguish between GLYDE and GLIDE PHARMA for identical goods. Applicant has also argued that the du Pont factor of the conditions of purchase favor a finding that confusion is not likely, because both applicant’s and the registrant’s goods “are offered to highly trained veterinarians and animal health care specialists who have received specialized scientific and technological training and are keenly aware of the source of the goods.” Reply brief, p. 8. To the extent that applicant suggests that purchasers of the goods would look behind the trademarks to learn the source of the goods, that argument is unavailing. Likelihood of confusion must be determined on the basis of the trademarks involved, not on whether the purchasers would otherwise know the source of the goods. Further, the goods, as identified, are not limited to purchase by veterinarians and animal health care specialists. Thus, an ordinary pet-owning member of the general public who has Ser. No. 79087045 10 administered GLIDE PHARMA preparation for an inflammation problem for a pet dog, upon encountering GLYDE preparation for reducing inflammation in a dog, is likely to assume that the goods come from the same source. Even veterinarians and other animal health care specialists are likely, because of the strong similarities in the marks, to believe that these marks identify a single source when the marks are used on legally identical goods. Thus, even though discriminating purchasers would be a factor that would favor a finding of no likelihood of confusion, in this case it does not outweigh the similarities of the marks, and the identity of the goods and trade channels. Nor does any suggestiveness of the term GLIDE result in the cited registration being entitled to such a limited scope of protection that it would not extend to prevent the registration of GLYDE for legally identical goods. To the extent that any other du Pont factors are relevant, we treat them as neutral. After considering all the evidence and the du Pont factors, we find that applicant’s mark for its identified goods is likely to cause confusion with the cited registration. Decision: The refusal of registration is affirmed.