TTAB Sustains 2(d) Opposition to WAL-ZYR, Finding it Confusable with ZYRTEC
The Board sustained this Section 2(d) opposition to registration of the mark WAL-ZYR for "“pharmaceuticals, namely, allergy medications," finding the mark likely to cause confusion with the previously-used mark ZYRTEC for allergy medications. It found ZYRTEC to be a strong mark, the goods identical, the channels of trade and classes of customers the same, the mark similar, and the purchasing decisions to be less than highly sophisticated. Walgreen's survey evidence was deemed not sufficiently probative to affect the result. McNeil-PPC, Inc. v.Walgreen Co., Opposition No. 91184978 (January 22, 2013) [not precedential].
Opposer McNeil is the exclusive licensee under the ZYRTEC mark, not the owner, and so it had to prove priority by way of its common law rights. Walgreen relied on its filing date of September 9, 2007, as its constructive first use date. McNeil established priority by showing a "clear chain of trademark rights from prior licensees," and use of the mark by predecessors since 1996.
Brand awareness studies, advertising evidence, and sales figures convinced the Board that ZYRTEC is "both conceptually and commercially very strong."
As to the goods, there was no dispute that they are identical. In fact, they are displayed side-by-side on store shelves. This du Pont factor weighed heavily in McNeil's favor.
The purchasers of these over-the-counter products are "ordinary consumers with no special knowledge or expertise," and although they may spend time confirming the particular uses for the products, that does not mean they are immune from source or sponsorship confusion. So the Board found this factor to be neutral.
Turning to the marks, the Board noted once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found that Walgreen's incorporation of the distinctive first portion of Opposer's mark with the first portion of its house mark "creates a substantially similar mark to opposer's previously-used mark." An appreciable number of consumers could believe that "some sort of sponsorship or affiliation exists between the two sources where [applicant has] taken the first and most prominent portion of the respective marks to create a combined mark identifying both of them."
In short, the Board found that the similarities in appearance, sound, connotation and overall commercial impression outweigh the dissimilarities.
Walgreen submitted the results of an Ever-Ready type survey, which the Board found to be in proper form but flawed because the questions "do not expose the full potential for confusion."
The record shows that applicant incorporated the first part of opposer’s mark ZYRTEC in its WAL-ZYR mark because it conveyed equivalence with ZYRTEC. Although the survey included an “affiliation” question, the answers were less than illuminating.
Moreover, the results "rely on assumptions as to how the respondent's would interpret the questions regarding the affiliation aspect. The survey assumes that respondents would, in answering question 3, include in the category of affiliation the circumstance where WAL-ZYR and ZYTREC contain ingredients from the same supplier."
The survey found a confusion rate of less than 7%. Although that number is low, it is not particularly probative because, according to the Board, in this case "confusion is more focused on the sponsorship/affiliation aspect or the possible perception of potential consumers that the ingredients come from the same manufacturer." In addition, the responses showed "more a lack of knowledge about sources of OTC drugs in general, rather than clearly showing a lack of confusion."
Walgreen pointed to the lack of actual confusion evidence despite the goods being sold side-by-side for about three years. The Board, however, observed that proof of actual confusion is difficult to find, and is not necessary to prove likelihood of confusion.
McNeil contended that Walgreen intended to confuse consumers when it adopted its mark. Walgreen maintained that it chose the mark "not to confuse but rather to assist consumers:" the WAL-ZYR mark helps consumers identify the source of the product (Walgreen) and the name brand equivalent (ZYRTEC), while making sure they understand that WAL-ZYR is a value-priced alternative to ZYRTEC. The Board found the evidence to be inconclusive, and so it considered this 13th du Pont factor to be neutral.
Balancing all the relevant factors, the Board found confusion likely, and it sustained the opposition.
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TTABlog comment: Well, what do you think? What's with this idea of confusion as to the ingredients? Just because two drugs may contain the same ingredient, would a consumer think they came from the same source? Let's hope that some of our friend-of-the-blog survey experts weigh in on this.
Text Copyright John L. Welch 2013.