Monday, November 07, 2005

TTABlunder? Board Finds "AdvaLife" Confusingly Similar to Famous "ADVIL" Mark

In a decision that may merit inclusion in the TTABlog's list of the ten worst TTAB decisions of 2005, the fame of Wyeth's ADVIL mark for analgesics led the Board to sustain a Section 2(d) opposition to registration of the mark ADVALIFE (in the slightly stylized form shown here) for "vitamins, minerals and nutritional dietary supplements." Wyeth v. Graham, Opposition No. 91124967 (October 24, 2005) [not citable].

Applicant David M. Graham did not submit evidence, nor did he file a brief. Wyeth, on the other hand, relied on three registrations for its ADVIL mark and a mound of evidence: The ADVIL brand has been in use for more than 20 years, for products that are "intended for a variety of uses, including relief of pain, cold and sinus pain, migraine pain, flu symptoms, allergy and pain relief, sneezing and runny nose." ADVIL brand products are sold in virtually every consumer outlet in which over-the-counter analgesics are sold. Opposer has spent more than $300 million for advertising and promotion over the past three years, and sales have totaled more than $1 billion in that period. The ADVIL product line is among the top ten non-prescription medications in the country.

In light of this evidence, and in light of survey results showing widespread consumer recognition, the Board found ADVIL to be a "famous mark" under the fifth du Pont factor. The Board pointed out again that "[f]ame, of course, plays a dominant role in cases featuring a well-known or strong mark, as such marks enjoy a wide latitude of legal protection." In other words, "the Lanham Act's tolerance for similarity between competing marks varies inversely with the fame of the prior mark."

The Board observed that the products involved are "both over-the-counter health aids." It assumed, as required, that the goods of the parties would be sold in the same channels of trade and to the same class of consumers. The products are relatively inexpensive and "would not be the subject of a great deal of thought or analysis." [TTABlog query: how much thought or analysis is required to distinguish a pain reliever from a vitamin?]

Turning to a comparison of the marks, the Board went off the track. It found the marks "similar as to appearance and sound:"

"The prefix portion of applicant's mark is substantially the same as opposer's arbitrary mark. This first part of a mark is most likely to be impressed upon the mind of a purchaser and remembered. The upper-case letter 'L' in applicant's special form drawing only accentuates the similarity in appearance between the first five letter of each mark (e.g., 'advil' and 'adval')."

The Board noted that similarity in sound may be sufficient to support a likelihood of confusion, and even more so "given the public interest in avoiding confusion between different health care products."

As to connotation and commercial impression, ADVIS is a "coined term." Applicant's "Life" suffix is "not particularly distinctive for vitamins and mineral supplements," and "[t]he likelihood of confusion is greater given that the number of products in the ADVIL line has increased regularly over the years." [TTABlog note: but they were still all pain relievers!] According to the Board, consumers might believe that ADVALIFE vitamins are the latest addition to Wyeth's product line.

Therefore the Board concluded that the mark ADVALIFE (Stylized) is likely to cause confusion with ADVIL when applied to over-the-counter health aids.

TTABlog comment: Thank goodness this decision is not citable. This is the kind of decision we sometimes get when one party fails to put in any evidence or make the least effort. The Board's analysis of the similarities between the marks is wholly unconvincing. The dominant portion of Applicant's mark is the word "Life," and even if that word is "suggestive" of vitamins [another dubious Board finding], that suggestion only further distinguishes the marks.

Text Copyright John L. Welch 2005.


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