The Tetra Corp.

Trademark Trial and Appeal Board

Mar 12, 2007

No. 76617366 (T.T.A.B. Mar. 12, 2007)

Mailed: March 12, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Tetra Corp.
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Serial No. 76617366
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Alan E. Schiavelli of Antonelli, Terry, Stout & Kraus, LLP for
The Tetra Corp.

Ronald McMorrow, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

The Tetra Corp. has filed an application to register
the mark "PsoriaStat" in standard character form on the Principal
Register for an "anti-fungal solution for medical use, namely,
anti-fungal solution for treatment of fungal conditions
associated with psoriasis" in International Class 5.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the

1 Ser. No. 7617366, filed on October 22, 2004, which is based on an
allegation of a bona fide intention to use the mark in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 76617366
2
mark "PsoriastatPE2," which is registered in the special form
shown below

on the Principal Register for a "natural pharmaceutical
preparation for the treatment of psoriasis and eczema" in
International Class 5,2 as to be likely to cause confusion, or to
cause mistake, or to deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods or services at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3

2 Reg. No. 2,689,045, issued on February 18, 2003, which sets forth a
date of first use of the mark anywhere and in commerce of October
2000.

3 The court, in particular, pointed out that: "The 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."
192 USPQ at 29.

Ser. No. 76617366
3
Applicant contends in its brief that confusion is not
likely, arguing that:
In comparing the respective marks for
similarities in appearance, sound, contention
[sic; connotation] and commercial impression,
the Examining Attorney has alleged Appellant
to have merely deleted the PE2 of the
Registrant's mark. However, in comparing the
marks, one must compare the marks as a whole.
The "PE2" portion of the registrant's mark is
[a] very unique part of the mark and it[s]
use, in combination with the word Psoriastat,
creates a separate commercial impression from
Appellant's mark. Moreover, Appellant's mark
is in stylized form with a capital "S" in the
middle of the mark. Registrant's mark has a
corresponding "s" in lower case form.
Because of these differences, the respective
marks, as a whole, create a separate
commercial impression.

Comparing the respective goods, the
registered mark is used for a "natural
pharmaceutical preparation for the treatment
of psoriasis and eczema." Appellant's mark,
as more specifically indicated ... , is for
treatment of fungal conditions that may be
associated with psoriasis, not for the
treatment of psoriasis itself. Accordingly,
confusion is unlikely.

We agree with the Examining Attorney, however, that
there is a likelihood of confusion. As persuasively pointed out
in his brief, the Examining Attorney observes that:
The applicant's mark, PsoriaStat in
stylized form, is highly similar to the
registrant's mark, PsoriastatPE2 in stylized
form. The applicant has merely deleted the
PE2 portion of the registrant's mark. ....
Applicant's mark does not create a distinct
commercial impression because it contains the
same common wording as registrant's mark, and
there is no other wording to distinguish it
from registrant's mark. Applicant has argued
that the capitalization of the letter S in
its mark gives it a separate and distinct
commercial impression when compared to the
[r]egistrant's mark in which the [letter] s
appears in lower case form. However, this
Ser. No. 76617366
4
minimal difference in stylization clearly
does not obviate the similarity between the
marks. ....

The marks are compared in their
entireties under a Section 2(d) analysis.
Nevertheless, one feature of a mark may be
recognized as more significant in creating a
commercial impression. Greater weight is
given to that dominant feature in determining
whether there is a likelihood of confusion.
In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985); TMEP
§1207.01(b)(viii). The registrant's mark is
comprised of the coined term Psoriastat which
suggests a product that will treat psoriasis
quickly combined with the suggestive term PE2
which indicates that the product will be
effective in treating both psoriasis and
eczema. Because it is the foremost term
Psoriastat is clearly the dominant portion of
the registrant's mark. Furthermore, the
applicant's mark is comprised entirely of the
dominant portion of the registrant's mark,
thus rendering the marks similar in
appearance, sound, connotation and overall
commercial impression.

Moreover, as the Examining Attorney also properly notes
in his brief, "courts and scholarly authorities have long
recognized a 'doctrine of greater care' in pharmaceutical cases,"
citing Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB
1980), for the proposition that, "[b]ecause of the potential
danger associated with mistaking one pharmaceutical product for
another, courts have allowed a lower threshold of proof of
confusing similarity for drugs and medicinal preparations."
Thus, not only is it a general proposition that when marks would
appear in connection with the same or virtually identical goods,
the degree of similarity between the marks necessary to support a
conclusion of a likelihood of confusion declines, see, e.g.,
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
Ser. No. 76617366
5
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied, 506
U.S. 1034 (1994), but in cases involving a determination of
whether there is a likelihood of confusion between marks used in
connection with pharmaceutical or other medicinal preparations,
Professor McCarthy has observed that (footnotes omitted):
The tests of confusing similarity are
modified when the goods involved are
medicinal products. Confusion of source or
product between medicinal products may
produce physically harmful results to
purchasers and greater protection is required
than in the ordinary case. If the goods
involved are medicinal products each with
different effects and designed for even
subtly different uses, confusion among the
products caused by similar marks could have
disastrous effects. For these reasons, it is
proper to require a lesser quantum of proof
of confusing similarity for drugs and
medicinal preparations. ....

3 J. McCarthy, McCarthy on Trademarks & Unfair Competition (4th
ed. 2006) at §23:32. See also, Glenwood Laboratories, Inc. v.
American Home Products Corp., 455 F.2d 1384, 173 USPQ 19, 21
(CCPA 1972); and American Home Products Corp. v. USV
Pharmaceutical Corp., 190 USPQ 357, 360 (TTAB 1976).
We find, in view of the above, that when considered in
their entireties, applicant's "PsoriaStat" mark is substantially
identical to registrant's "PsoriastatPE2" mark in sound,
appearance, connotation and overall commercial impression,
inasmuch as the first and dominant feature of registrant's mark
is the term "Psoriastat," which is the same as applicant's mark
except for the exceedingly minor difference of the absence of the
second letter "s" in registrant's mark being capitalized. Both
marks clearly suggest a fast acting medication for use in
Ser. No. 76617366
6
treatment of psoriasis or fungal conditions associated therewith.
Consequently, if such marks were to be used in connection with
related medicinal products, confusion as to the source or
sponsorship thereof would be likely.
Turning, then, to the respective goods, it is well
settled that goods need not be identical or even competitive in
nature in order to support a finding of likelihood of confusion.
It is sufficient, instead, that the goods are related in some
manner and/or 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
employed in connection therewith, to the mistaken belief that
they originate from or are in some way associated with the same
producer or provider. See, e.g., Monsanto Co. v. Enviro-Chem
Corp., 199 USPQ 590, 595-96 (TTAB 1978); and In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, the Examining Attorney argues that "[t]he
relatedness of the goods is evidenced by the respective
identifications of goods." We concur that it is self-evident
that applicant's "anti-fungal solution for medical use, namely,
anti-fungal solution for treatment of fungal conditions
associated with psoriasis" is closely related to registrant's
"natural pharmaceutical preparation for the treatment of
psoriasis and eczema." As the Examining Attorney properly
observes, the fact that applicant's goods are identified as being
used for treatment of fungal conditions that may be associated
with psoriasis rather than for the treatment of psoriasis itself,
Ser. No. 76617366
7
as is the case with registrant's goods, is not a meaningful
difference because, inasmuch as "the respective goods are used to
treat psoriasis or conditions associated with the disease, they
are also likely to be applied by the same class of consumer
sequentially or perhaps even simultaneously." Clearly, the same
patient with psoriasis could receive a recommendation from his or
her physician to use registrant's "PsoriastatPE2" natural
pharmaceutical preparation to treat the disease itself while also
being medically advised to use applicant's "PsoriaStat" anti-
fungal solution for treatment of any fungal conditions associated
with such disease.
We accordingly conclude that patients, as well as
physicians, who are familiar or acquainted with registrant's
"PsoriastatPE2" mark for its "natural pharmaceutical preparation
for the treatment of psoriasis and eczema" would be likely to
believe, upon encountering applicant's substantially identical
"PsoriaStat" mark for its "anti-fungal solution for medical use,
namely, anti-fungal solution for treatment of fungal conditions
associated with psoriasis," that such closely related medicinal
products emanate from, or are sponsored by or associated with,
the same source. In particular, even if the slight differences
between the respective marks were to be noticed, both patients
and physicians would be likely to view the corresponding goods as
a line of medical preparations, from the same source, for use in
treating psoriasis and fungal conditions associated therewith.
Decision: The refusal under Section 2(d) is affirmed.