Thursday, December 01, 2005

TTAB Says "AMAVIO" and "AMEVIVE" Confusingly Similar for Pharmaceuticals

In a "close case" reminiscent of the recent and dubious ADVIL/ADVALIFE decision (here), the Board sustained a Section 2(d) opposition to registration of the mark AMAVIO for "pharmaceutical preparations for the treatment of gastrointestinal and respiratory diseases," finding the mark likely to cause confusion with the registered mark AMEVIVE for pharmaceuticals for the treatment of dermatological, autoimmune, and inflammatory disorders, and psoriasis. Biogen, Inc. v. Altana Pharma AG, Opposition No. 91125855 (November 14, 2005) [not citable].

As to the marks, the Board found them both to be arbitrary terms without meaning in the English language. The parties disagreed on pronunciation of the marks, but the Board noted that there is no "correct" pronunciation of a mark "because it is impossible to predict how the public will pronounce a particular mark." [TTABlog prediction: the public will pronounce AMAVIO with an accent on the second syllable (like "adagio), and AMEVIVE with an accent on the third (like "intervene"]. Despite the different ending of the marks, the Board found that they "would be or could be pronounced very similarly." In appearance, the marks are "more similar than dissimilar." With regard to connotation, the marks differ because the term "vive" in the cited mark means "[long] live; up with (a specified person or thing). [from French]." However, this difference in connotation is "outweighed by the similarities in sound and appearance."

As to the goods, the Board noted that Opposer has conducted clinical trials for AMEVIVE in connection with gastrointestinal and respiratory diseases. The Board considered Opposer's goods to encompass "the potential uses identified by opposer for AMEVIVE for which opposer has commenced clinical trials and protocols." Moreover, Opposer offered third-party registrations that identified pharmaceuticals for both respiratory and dermatological diseases.

Applicant argued that the goods differ in actual use as to how they are dispensed and administered, but the Board noted that there are no such limitations in the registration or application. Consequently, the Board found the parties' goods to be related, and it likewise found that the goods move in the same trade channels.

With regard to customer sophistication, the Board observed that Opposer's product has been promoted directly to patients, and so the "relevant public involved in purchasing decisions for opposer's goods is not just limited to healthcare professionals." In addition, the Board assumed that "at some point in the future, the pharmaceutical preparations may be administered by the patient directly such as by self-injection or by means of a patch or by a pill, which can be taken by the patient at home." Moreover, even sophisticated health professions are not immune from confusion when similar goods are marketed under similar marks.

Finally, the Board took note that there is no evidence of use of similar marks by third parties, and it therefore found AMEVIVE to be a strong mark.

Applicant did manage to win one point: the Board rejected Opposer's contention that Applicant proceeded in bad faith because it "failed to have a trademark search conducted by competent trademark counsel" and did not order a "comprehensive search from an agency such as Thomson & Thomson." The Board pointed out that there is no requirement that a trademark search be conducted by competent counsel or that "any particular 'agency' be used prior to adopting and filing for registration of a trademark."

Balancing the du Pont factors, and mindful that it is "extremely important to avoid confusion when marks are used on pharmaceuticals," the Board found confusion likely and sustained the opposition.

TTABlog comment: It may be "extremely important" that confusion be avoided when marks are used on pharmaceuticals, but is that importance relevant in the registration context? Nothing the Board does can affect whether the AMAVIO mark will be used. Should the test for likelihood of confusion at the TTAB be any different for drugs than other goods? In other words should the TTAB''s standard for proving likelihood of confusion be lowered when drugs are involved? If so, why?

In fact, becuase the consequences of taking the wrong drug may be so serious, don't consumers exercise extra care? And so isn't confusion regarding marks less likely in the drug realm?

Text Copyright John L. Welch 2005.


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