Wednesday, July 20, 2011

TTAB 2(d) Reversal: "EPs 7630" Not Confusingly Similar to "EP" for Respiratory Drugs

Although it rejected Applicant Schwabe's appeal brief as not brief enough, the Board nonetheless reversed a Section 2(d) refusal to register the mark EPs 7630 for "plant-based pharmaceuticals for the treatment of respiratory diseases, namely, those based on an ethanolic extract of the roots of pelargonium sidoides," finding it not likely to cause confusion with the registered marks EP and EP 12.5 for "pharmaceutical bronchodilators" [12.5 disclaimed]. In re Dr. Willmar Schwabe GmbH & Co. KG, Serial No. 76690276 (July 7, 2011) [not precedential].

Brief too long: Applicant's appeal brief comprised 45 pages (including table of content, table of cases, description of the record, statement of the issue, statement of facts, and argument), which exceeded the limit of Rule 2.142(b) by 20 pages. The Board therefore refused to consider the brief. However, Applicant made the same arguments during prosecution, and the prosecution history was part of the record anyway.

The goods: Although the goods are specifically different, the evidence showed that "they are related in that both are pharmaceutical products used to treat respiratory conditions." There were no limitations as to channels of trade in either the challenged application or the cited registration, and so the Board presumed that the involved goods move in the normal channels of trade for such goods, including drug stores and pharmacies. Moreover, there were no limitations as to classes of customers, and therefore the Board assumed that the goods would be purchased by all potential buyers, including ordinary consumers.

The marks: Since the cited EP mark is closer to the applied-for mark than EP 12.5, the Board focused its analysis on the former mark.

There was no evidence that the terms "EPs" or "7630" in Applicant's mark have any significance in the trade. Although consumers usually focus on the first portion of a mark, here "the second portion of the mark '7630' is just as distinctive as the first portion, and just as likely to be mentioned when a consumer calls for the goods." The Board found that numbers are often used with pharmaceuticals, and therefore the number 7630 should not be relegated to a "subordinate role" in Applicant's mark. In short, the Board refused to find that the mark is dominated by EPs.

The Board further found that the term "EP" is "highly suggestive" of ephedrine-based products, "thereby reducing the degree of distinctiveness of registrant's marks."

And so the Board concluded that the differences in sound, appearance, meaning, and overall commercial impression were sufficient to distinguish the marks.

The Board refused to consider Applicant's assertions that the cited marks are generic and that the marks have been abandoned due to non-use, on the ground that such collateral attacks on a cited registration are not permitted in an ex parte context.

Text Copyright John L. Welch 2011.


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