Wednesday, October 26, 2011

TTAB Turns Up Nose at NASACORT Opposition to LAZACOR for Rhinitis Remedies

The Board dismissed this opposition to registration of the marks LAZACOR and LAZACOR + for "homeopathic supplements," finding the marks not likely to cause confusion with, or to dilute, the registered mark NASACORT for "steroid preparation for the treatment of allergic rhinitis." The differences in the marks and the care with which the products are purchased outweighed the strength of Opposer's mark and, the "presumptive similarity" of the goods and purchasers. Aventis Pharmaceuticals Inc. v. Heal The World Inc., Opposition No. 91192046 (October 24, 2011) [not precedential].

Likelihood of confusion: Despite substantial sales (more that $1.5 billion from 2003-2008) and advertising expenditures, Opposer failed to prove its mark to be famous for likelihood of confusion purposes. The evidence of consumer recognition of the mark was not persuasive, and there was no proof of any unsolicited media attention. "The evidence is indicative of the success of opposer's product rather than recognition of the fame of the mark." The Board did, however, find that the mark has a "high degree of public recognition and renown."

As to the goods, Applicant's identification encompasses products "intended to treat symptoms of a condition which ... may include rhinitis and nasal congestion and pressure." The Board concluded that the goods are "sufficiently related that, if sold under the same or similar marks, they would be likely to cause confusion."

Although the Board may assume that Applicant's goods are sold in all normal channels of trade for homeopathic supplements, there was no evidence regarding what those channels are. Applicant's interrogatory answers indicated that it sells its goods on the Internet and not through retail outlets or wholesalers. NASACORT is a prescription drug sold through doctors and pharmacies. The Board concluded that the evidence as to this du Pont factor is neutral.

The classes of customers for the products are the same, but given the nature of the goods, purchasers will "undoubtedly exercise great care and correspondingly pay careful attention to the trademark for the products."

As to the marks, they are not similar in appearance, but they share a similar cadence, rhythm, and stress pattern. Both marks appear to be coined terms, although NASACORT suggest "nasal" and "corticosteroid." [I get the "nasal" part, but never heard of a "corticosteroid" - ed.] The Board concluded that the marks are "dissimilar."

Balancing the du Pont factors, the Board ruled that confusion is not likely.

Dilution: Because the Board already found that NASACORT is not a famous mark for Section 2(d) purposes, Opposer could not meet the higher standard of fame for dilution purposes. Nonetheless, the Board went on to explain why the mark is not famous: in short, it is not a "household name." Unlike the NASDAQ case, for example, there was no evidence of widespread media recognition of Opposer's mark by the general population.

Moreover, even assuming arguendo that NASACORT had achieved fame, Opposer failed to show that the mark became famous prior to Applicant's constructive first use date (i.e. its filing date).

And so the Board denied the dilution claim.

TTABlog comment: It's a tough climb to get to the top of Dilution Mountain, but if you get there, the trademark world is at your feet.

Text Copyright John L. Welch 2011.


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