Friday, February 22, 2019

TTABlog Test: Is SKYRIZI Confusable with IZIRIZE for Pharmaceuticals?

Novartis AG opposed an application to register the mark SKYRIZI for various pharmaceutical preparations, alleging a likelihood of confusion with its registered mark IZIRIZE, also for various pharmaceutical preparations. The parties stipulated that the goods "are related and overlap in part," and that the trade channels "will be substantially identical." But what about the marks? How do you thing this came out? Novartis AG v. AbbVie Biotechnology Ltd., Opposition No. 91238564 (January 24, 2019) [not precedential] (Opinion by Judge Lorelei Ritchie).

Strength of Opposer's Mark: Applicant AbbVie contended that the letter sequence "RIZ" is entitled to a narrow scope of protection because the term is in common use in the pharmaceutical industry. Applicant submitted a list of numerous registrations for marks containing "RIZ" in Class 5 for "pharmaceuticals," including CARIZAX; BACTRIZOLE; BRIZO; HORIZANT; OBRIZANDA; ORIZON; PRIZEMBA; RIZAPORT; RIZIMO; RIZLATET; RIZOPRAD; RIZUPA; TRIZELL; TRIZIVIR; VARIZIG; VORIZE; WELTRIZ; and the following two marks owned by Opposer: VISPRIZA and RIZARG.

The Board observed that third-party registrations alone, although not probative as to commercial strength, "may be relevant to show the sense in which a mark is used in ordinary parlance; that is, an element common to both parties’ marks may have a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is inherently relatively weak." Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)).

In light of the third-party registration evidence, the Board found that "the letter sequence “RIZ” is a weak source indicator for pharmaceutical products." [Query? What is the well-recognized or suggestive meaning of "RIZ"? - ed.].

Comparing the Marks: The Board found that the marks look different. The lead element of a mark may be perceived as having a position of prominence, and the lead elements differ here. Neither mark has any meaning.

Although there is no correct pronunciation of a coined term, the parties agreed that there are several possible pronunciations of each mark. They disagreed, however, as to what those pronunciations are likely to be. The Board found, "[b]ased on typical conventions of pronunciation in English, . . . Applicant’s mark is likely to be pronounced SKĪ RĪZ E or SKĪ RIZ E and Opposer’s mark is likely to be pronounced as EASY RISE or IZZY RISE."

Since the only comment element in the marks is the weak letter string "RIZ," the Board concluded that the marks are more dissimilar than similar.

Conditions of sale: Applicant AbbyVie argued that the likely consumers of the products are prescribing medical professionals and pharmacists, who are sophisticated and are likely to exercise increased care in their purchasing decisions. The Board, however, observed that it must make its determination based on the least sophisticated consumer," which in this case may include members of the general public who have a medical need for a pharmaceutical product, but who have neither medical nor legal expertise."

In particular, as our precedent dictates, where competing medical products are at issue, “there is no reason to believe that medical expertise as to pharmaceuticals will ensure that there will be no likelihood of confusion as to source or affiliation.”

And so the Board found this factor to be neutral.

Conclusion: Citing Kellogg Co. v. Pack’e Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142,1145 (Fed. Cir. 1991) ("We know of no reason why, in a particular case, a single du Pont factor may not be dispositive"), the Board concluded that, in light of the differences in the marks, confusion is not likely, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.


At 9:26 AM, Anonymous Anonymous said...

This outcome wasn't terribly difficult to guess. One thing's for sure, these pharmaceutical names are getting stranger and stranger.


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