Friday, March 24, 2006

TTAB Finds "IMMUNO-RX" and "IMMUNEX" Confusingly Similar for Pharma/Nutra-ceuticals

Another pro se applicant swallowed the bitter pill of defeat in a Section 2(d) opposition. This time it was Applied Medical Research, Inc., whose attempt to register the mark IMMUNO-RX for vaccines and probiotic bacteria was blocked by Immunex Corporation and its registered mark IMMUNEX for pharmaceuticals. Immunex Corp. v. Applied Medical Research, Inc., Opposition No. 91153080 (March 3, 2006) [not citable].


Applied Medical did not submit testimony or any evidence, and its brief was stricken as untimely. That, not surpisingly, was a prescription for disaster at the TTAB.

The Board first found the goods to be related. Applicant stated in its discovery responses that its probiotic bacteria are "intended to be sold in the medium of a dietary supplement." The Board observed that such products may be sold over-the-counter and thus be encountered by ordinary consumers. Opposer's "pharmaceuticals for the treatment of autoimmune diseases, healing wounds, and cancer" would ultimately be used by ordinary consumers as well. Moreover, because the goods are broadly identified, they could include goods "that address conditions that may affect the same individuals."

As to channels of trade, neither the application nor the registration have any restrictions, and therefore the Board must assume that "at the very least, ... the pharmaceuticals for the treatment of healing wounds would be sold over-the-counter," and thus in the same channels of trade as would "applicant's over-the-counter, nutraceutical/dietary supplement products, especially in drug stores." Wound care products and dietary supplements "are rather inexpensive items, and due to their nature, they are not necessarily going to be purchased using a great degree of deliberation or care."

The Board found the marks, despite some differences, to be "similar in their entireties as to appearance, sound, connotation and commercial impression."

Throughout the proceeding, Applied Medical contended that Opposer had abandoned its rights to the IMMUNEX mark. [The record showed that Immunex Corporation was bought by Amgen in July 2002, but remains a wholly-owned subsidiary of Amgen and owns the rights in the IMMUNEX mark and registration. Its principal product is ENBREL, an injectable rheumatoid arthritis treatment.] However, Applied Medical did not seek cancellation of the registration, and so the Board was required to accord the registration all the presumptions of a duly registered mark.

In any case, the Board noted that the mark was not abandoned: Immunex continues to be responsible for manufacturing ENBREL and owns the trademark rights in the mark IMMUNEX. However, the record did not include any copies of labels "showing how prominently the word IMMUNEX appears on the ENBREL label," and media references since 2002 refer only to "Immunex Corporation" in connection with the Amgen purchase -- never to IMMUNEX as a product mark.


Nonetheless, Opposer argued that IMMUNEX achieved "widespread recognition and fame in the field of pharmaceuticals and biotechnology." Not so, said the Board. It was not clear how evidence of research, development, and marketing of products, especially ENBREL, supported a claim of widespread recognition for the IMMUNEX mark. "Since Amgen's acquisition of Immunex Corporation in 2002, it is unclear that even the financial world continues to place significance on the name IMMUNEX." Therefore, the Board ruled that Opposer had failed to establish that its mark has achieved widespread recognition.

Finally, the Board noted that any doubts on the 2(d) issue are to be resolved in favor of the prior registrant. Moreover, when pharmaceutical preparations are involved, "there is even stronger reason for resolving doubt in this manner."

The Board concluded that confusion is likely, though it specifically pointed out that it gave "no weight to opposer's arguments regarding the alleged fame of the IMMUNEX mark."

Opposer Immunex had also pressed a dilution claim, but the Board dispensed quickly with that assertion. Since Opposer had not established fame for Section 2(d) purposes, it perforce did not meet the "stricter standard required to prove fame in order to obtain protection under the dilution statute."

Text Copyright John L. Welch 2006.


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