Unimed Pharma-ceuticals, Inc.v.StarCor Pharma-ceuticals, Inc.

Trademark Trial and Appeal Board

Aug 15, 2003

No. 91124856 (T.T.A.B. Aug. 15, 2003)

Mailed: August 15, 2003
Paper No. 7
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Unimed Pharmaceuticals, Inc.
v.
StarCor Pharmaceuticals, Inc.
_____
Opposition No. 124,856 to application Serial No. 76/082,816
filed on July 3, 2000
_____
Lynn A. Sullivan of Leydig, Voit & Mayer, Ltd. for Unimed
Pharmaceuticals, Inc.
Paula A. Willis, Esq. for StarCor Pharmaceuticals, Inc.
______
Before Cissel, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
StarCor Pharmaceuticals, Inc. has filed an application
to register the mark "ANDROL XL" for a "non-prescription
nutritional supplement, namely[,] extended release formulation of
androstenedione."1
Unimed Pharmaceuticals, Inc. has opposed registration
on the ground that "for many years [it] has been engaged in ...
1 Ser. No. 76/082,816, filed on July 3, 2000, which alleges a date of
first use anywhere and in commerce of July 6, 1999. The term "XL" is
disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 124,856
2
the pharmaceutical products industry, developing and
manufacturing pharmaceuticals for numerous applications including
those for various hormone treatments"; that, since a date well
prior to the filing date of applicant's application and since at
least as early as 1960, opposer and its predecessor in interest
have used the mark "ANADROL" on and in connection with steroid
hormones; that since the adoption of such mark, opposer and its
predecessor in interest "have made continuous use thereof and
ANADROL has become a well known pharmaceutical in the industry";
that opposer is the owner of a registration for the mark
"ANADROL" for "steroid hormones";2 that opposer is also the owner
of registrations for the marks "ANDROGEL"3 and "ANDRACTIM"4 for,
in each instance, a "pharmaceutical preparation for the treatment
of testosterone deficiency and/or HIV wasting syndrome";5 that
applicant's product, "androstenedione[,] is a naturally occurring
hormone that serves as a precursor in the biosyntheses of the
hormone testosterone"; that applicant's and opposer's products
"would likely be directed to the same or at least an overlapping
2 Reg. No. 719,177, issued on August 1, 1961, which sets forth a date
of first use anywhere and in commerce of November 21, 1960; renewed.
3 Reg. No. 2,232,508, issued on March 16, 1999, which sets forth a date
of first use anywhere of November 1995 and a date of first use in
commerce of October 9, 1995.
4 Reg. No. 2,232,509, issued on March 16, 1999, which sets forth a date
of first use anywhere of November 1995 and a date of first use in
commerce of October 9, 1995.
5 In addition, opposer has pleaded ownership of a pending application,
Ser. No. 76/060,361, for registration of the mark "ANDROCREAM" for a
"pharmaceutical preparation for the treatment of testosterone
deficiency." However, because the record contains no evidence with
respect thereto, the application has not been given any consideration.
Opposition No. 124,856
3
segment of potential purchasers, that is, consumers who are in
need of hormone treatments or supplements for such deficiencies";
and that applicant's use of its mark in connection with its
product is likely to cause confusion, mistake or deception with
opposer's use of its pleaded marks for its various goods.
Applicant, in its answer, has admitted that opposer "is
listed as the current owner of record of the [registration for]
the mark ANADROL" and that its product, "androstenedione[,] is a
naturally occurring hormone that serves as a precursor in the
biosyntheses of the hormone testosterone," but has otherwise
denied the salient allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; and, as opposer's case-in-chief, a notice of
reliance on (i) certified copies of its pleaded registrations,
showing that each registration is subsisting and owned by
opposer, and (ii) applicant's answers to opposer's first request
for admissions.6 Applicant did not introduce any evidence in its
6 Although opposer, by its notice of reliance, also seeks to rely on
applicant's responses to opposer's first set of requests for
production of documents (with "the original documents relating thereto
being attached"), such matter has not been given any consideration
inasmuch as Trademark Rule 2.120(j)(3)(ii) provides in pertinent part
that: "[A] party that has obtained documents from another party under
Fed. R. Civ. P. 34 may not make the produced documents of record by
notice of reliance alone, except to the extent that they are
admissible by notice of reliance under ... [Trademark Rule] 2.122(e)
(as official records; or as printed publications, such as books and
periodicals, available to the general public in libraries or of
general circulation among members of the public or that segment of the
public which is relevant under an issue in the proceeding)." Here,
none of the documents produced by applicant and offered by opposer
meets the exception and thus they are not admissible by means of a
notice of reliance. See TBMP §704.11 (2d ed. June 2003).
Nevertheless, it is pointed out that even if such documents were to be
treated as forming part of the record herein in view of applicant's
lack of objection thereto, the result in this proceeding would be the
Opposition No. 124,856
4
behalf. Only opposer filed a brief7 and neither party requested
an oral hearing.
Priority of use is not in issue in this proceeding
inasmuch as opposer has proven that, as noted above, each of its
pleaded registrations is subsisting and is owned by opposer. See
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974). Opposer's ownership thereof also
serves to establish its standing to bring this proceeding. Id.
Thus, the sole issue to be determined in this case is thus
whether applicant's "ANDROL XL" mark for a non-prescription
nutritional supplement, namely, an extended release formulation
of androstenedione, so resembles opposer's "ANADROL" mark for
steroid hormones and/or its "ANDRACTIM" and "ANDROGEL" marks for
a pharmaceutical preparation for the treatment of testosterone
deficiency and/or HIV wasting syndrome as to be likely to cause
confusion as to the source or sponsorship of the parties'
respective goods.
same because the documents would be probative evidence only as to what
they show on their face and would be inadmissible as hearsay if
considered for the truth of the matters set forth therein. See TBMP
§704.08 (2d ed. June 2003).
7 As set forth in TBMP §704.06(b) (2d ed. June 2003): "Factual
statements made in a party's brief on the case can be given no
consideration unless they are supported by evidence properly
introduced at trial. Statements in a brief have no evidentiary value,
except to the extent that they may serve as admissions against
interest." While the latter is not applicable herein, it is pointed
out, however, that there simply is no evidence of record as to, for
instance, the statements that "[o]pposer's 'ANADROL' product has been
on the market for over 40 years, i.e., since 1960, and is a well
recognized and known product in the medical industry" and that
"dietary supplements are a natural area of expansion for
pharmaceutical companies." In addition, while it is noted that the
description of the record in opposer's brief includes references to
"Applicant's Answers to Opposer's First Set of Interrogatories," it is
Opposition No. 124,856
5
According to the record, the sole information with
respect to opposer is that, as noted previously, it is the owner
of its pleaded registrations for the marks "ANADROL," "ANDRACTIM"
and "ANDROGEL" and that such registrations are subsisting. As to
applicant, the record reveals that it "engages in the retail sale
of the dietary supplement represented by the mark ANDROL XL" and
that it "is also positioned to engage in the wholesale" sale of
such product, "although Applicant currently does not have any
wholesale customers." (Applicant's Admission No. 3.) Similarly,
while applicant denies that it "currently sells its dietary
supplement product represented by the mark ANDROL XL to
physicians," it admits that it "is positioned to sell" such
product "to physician distributors." (Applicant's Admission No.
4.) Likewise, applicant denies that it currently sells its
"ANDROL XL" dietary supplement product to "healthcare
professionals," but admits that it "is positioned to sell" such
product "to health care distributors." (Applicant's Admission
No. 5.) Further, while applicant denies that it directly "sells
its product represented by the mark ANDROL XL to the general
public," it admits that such product "is available to retail
consumers of a dietary supplement consisting of the ingredients
and recommended uses as provided by the product represented by
the mark, ANDROL XL." (Applicant's Admission No. 6.)
Applicant also admits that "ANDROL XL can be described
as an extended release formulation of Androstenedione"; that
pointed out that neither a copy thereof nor a notice of reliance
thereon was received.
Opposition No. 124,856
6
"Androstenedione is a naturally occurring hormone that serves as
a precursor in the biosynthesis of testosterone"; that while
"ANDROL XL is a product directed to the male population," it "is
absolutely contraindicated and should not be taken by males with
prostate cancer or breast cancer"; that "ANDROL XL is advertised
to help maintain male sexual health"; and that "ANDROL XL is
advertised to support the body's natural production of
testosterone." (Applicant's Admission Nos. 7, 8, 9, 10 and 11,
respectively.)
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, we find that at least with respect to the marks
"ANADROL" and "ANDROGEL," opposer has sustained its burden of
proof that confusion as to source or sponsorship is likely to
occur. Specifically, as to the du Pont factor pertaining to the
similarity or dissimilarity of the respective marks in their
entireties as to appearance, sound, connotation and commercial
impression, we find that opposer's marks "ANADROL" and "ANDROGEL"
are substantially similar in each of these respects to
applicant's "ANDROL XL" mark.8 Given that the term "XL" in
applicant's mark, as evidenced by the disclaimer thereof, is at
least merely descriptive of its goods, we agree with opposer that
the dominant and distinguishing portion of applicant's mark is
8 While opposer asserts in its brief that "[a]pplicant's 'ANDROL XL'
mark is quite similar ... when compared to all of Opposer's marks," it
concedes that such is "especially [so] when compared to Opposer's
'ANADROL' and 'ANDROGEL' marks."
Opposition No. 124,856
7
the term "ANDROL." See, e.g., In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); and In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). Accordingly, as opposer persuasively observes in its
brief (footnote omitted):
[W]hen comparing Applicant's mark to
Opposer's "ANADROL" mark, [it is the case
that] with the exception of the letter "A" in
Opposer's mark, Applicant's "ANDROL" portion
of its mark appears to be the exact same word
as Opposer's mark. By the same token,
Opposer's "ANDROGEL" mark is akin to the
dominant "ANDROL" portion of Applicant's
mark, as it begins with the same five
letters, and ends with the same letter. The
addition of the letters "G" and "E" [in
Opposer's mark] does not differentiate ...
the marks enough to make them not confusingly
similar.
Furthermore, both opposer's "ANDROGEL" mark and applicant's
"ANDROL XL" mark share the same ending "L" sound when pronounced.
In contrast, opposer's "ANDRACTIM" mark contains only the first
four letters of applicant's "ANDROL XL" mark and ends in a suffix
which is significantly different from the suffix in the "ANDROL"
portion of applicant's mark. In consequence of the above, only
opposer's "ANDAROL" and "ANDROGEL" marks are so substantially
similar overall to applicant's "ANDROL XL" mark that, if used in
connection with either the same or closely related goods,
confusion as to the origin or affiliation of the respective goods
would be likely to occur.
Turning, therefore, to consideration of the goods at
issue herein, it is well settled that the registrability of an
Opposition No. 124,856
8
applicant's mark must be evaluated on the basis of the
identification of goods as set forth in the involved application
and the identifications of the goods as recited in any pleaded
registrations of record, regardless of what the record may reveal
as to the particular nature of the respective goods, their actual
channels of trade, or the classes of purchasers to which they are
in fact directed and sold. See, e.g., Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990) and Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16
(Fed. Cir. 1987). It is also well established that, absent any
specific limitations or restrictions in the identification of
goods as listed in an applicant's application and in the
identifications of goods as set forth in an opposer's
registration(s), the issue of likelihood of confusion must be
determined in light of consideration of all normal and usual
channels of trade and methods of distribution for the respective
goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 940 (Fed. Cir. 1983); and Paula Payne Products Co.
v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973).
Here, it is plainly the case that, as identified in the
respective registration and application, neither opposer's
"ANADROL" "steroid hormones" nor applicant's "ANDROL XL" "non-
prescription nutritional supplement, namely[,] extended release
formulation of androstenedione," contains any limitations as to
Opposition No. 124,856
9
the channels of trade, methods of distribution or classes of
purchasers to whom such products would be marketed. Such goods
thus would be expected to be distributed, for instance, through
retail drug stores and nutritional products outlets for purchase
by ordinary consumers such as men seeking to maintain healthy
testosterone levels. While it would appear that, as identified,
opposer's "ANDROGEL" "pharmaceutical preparation for the
treatment of testosterone deficiency and/or HIV wasting syndrome"
may require, unlike applicant's product, a doctor's prescription
in order for a consumer to purchase such goods, it is still the
case that both items would be available through, for example,
retail drug stores.
The closely related nature of applicant's and opposer's
goods is further shown by the fact that applicant's" ANDROL XL"
product is an extended release formulation of androstenedione,
which as applicant admits "is a naturally occurring hormone that
serves as a precursor in the biosynthesis of testosterone."
Testosterone is steroid hormone9 and thus is the kind of product
which is covered by opposer's registration for its "ANADROL"
mark, while its "ANDROGEL" registration covers a pharmaceutical
9 In this regard we judicially notice that, for example, The American
Heritage Dictionary of the English Language (4th ed. 2000) at 1788
defines "testosterone" as "a white crystalline steroid hormone ...
produced primarily in the testes and responsible for the development
and maintenance of male secondary sex characteristics. It is also
produced synthetically for use in medical treatment." It is settled
that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); and Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852,
860 n. 7 (TTAB 1981).
Opposition No. 124,856
10
preparation for the treatment of a deficiency of testosterone.
Given that applicant admits (i) that its "ANDROL XL" non-
prescription nutritional supplement is a product which is
generally "directed to the male population" (although
contraindicated for those with prostate cancer or breast cancer);
(ii) that such product "is advertised to help maintain male
sexual health"; and (iii) that the product "is advertised to
support the body's natural production of testosterone," it is
clear that, as asserted in opposer's brief, applicant's non-
prescription nutritional supplement is "similar to and
complementary to" opposer's goods. The latter, as opposer
additionally notes in its brief, plainly are products which "can
... safely be generalized as health care products that are
prescribed and used for maintaining proper testosterone and
hormone levels" and therefore may properly be characterized as
"intrinsically related" to "the testosterone treatment products
of Applicant." All of the goods at issue herein consequently are
closely related in that they would typically be purchased by
adult males in, for instance, retail drug stores, and used for
the treatment of a deficiency in, or maintenance of a proper
level of, testosterone.
Accordingly, we conclude that men desiring to maintain
sexual health through the use of a non-prescription nutritional
supplement which functions to support the body's natural
production of testosterone, and who previously have been
prescribed or otherwise are familiar with the use of opposer's
"ANADROL" steroid hormones and/or its "ANDROGEL" pharmaceutical
Opposition No. 124,856
11
preparation for the treatment of testosterone deficiency, are
likely to reasonably believe, upon encountering the substantially
similar mark "ANDROL XL" used in connection with applicant's
extended release formulation of the testosterone precursor
androstenedione, that such closely related products emanate from,
or are sponsored by or affiliated with, the same source.
Decision: The opposition is sustained and registration
to applicant is refused.