Monday, April 26, 2021

Gilead Science Loses Opposition to GILEAD CAPITAL: No Section 2(d) Likelihood of Confusion and No 2(a) False Connection

In a 74-page opinion, the Board dismissed this two-pronged opposition to registration of the marks GILEAD CAPITAL and GILEAD CAPITAL LEADERSHIP INVESTING and Design, for various investment services; Opposer Gilead Sciences alleged likelihood of confusion and Section 2(a) false suggestion of a connection with its registered mark GILEAD for pharmaceutical products, health insurance consultation, and event sponsorship services. Opposer failed to show an overlap in channels of trade and classes of consumers, and also failed to prove that applicant's marks point uniquely to it or that consumers would presume a connection between the two companies. Gilead Sciences, Inc. v. Gilead Capital LP, Oppositions Nos. 91233311 and 91233327 (April 20, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman).

Common law marks:
Opposer argued that it renders financial and business advisory services that are substantially similar to Applicant’s services. The Board, however, reviewed the notice(s) of opposition and concluded that Opposer did not put Applicant on notice that opposer was relying on common law trademark and trade name rights. Moreover, the Board concluded that the issue of Opposer's common usage of GILEAD was not tried by consent, express or implied. Nonetheless, Opposer was "entitled to prove that relevant consumers perceive the manufacture and sale of pharmaceuticals as including Opposer’s financial or investment-related activities."

Strength of Opposer's Mark: Opposer contended that its GILEAD mark is famous for pharmaceutical products. The Board found the mark to be, at worst, suggestive, and inherently strong. "The commercial impression engendered by the mark GILEAD in connection with pharmaceuticals is a reference to the biblical medicinal treatment inasmuch as there is no testimony or evidence that Gilead has any geographical significance for pharmaceutical products."

As to commercial strength,  "Opposer’s testimony and evidence regarding its substantial revenue, extensive advertising and promotional activities, philanthropy, innovative research and development, and media attention prove that GILEAD is a commercially strong mark or famous mark when used in connection with pharmaceutical products." Consequently, GILEAD "is a very strong mark on the spectrum from very strong to very weak and famous, and, therefore, it is entitled to a broad scope of protection."

The Marks: The Board unsurprisingly found the word "Gilead" to be the dominant element in the involved marks. It noted that applicant sometimes refers to itself as "Gilead," and it observed that relevant consumers may do the same. The Board concluded that the applicant's marks are similar in their entireties to Opposer’s mark GILEAD.

The Services: Opposer contended that its investment activities are a key aspect of its pharmaceutical business and there those activities provide the required viable relationship among the goods and services at issue. According to opposer, "[i]t is common for pharmaceutical companies to invest in innovative companies and technology in the healthcare industry, investment professionals and others will encounter both parties’ marks in circumstances likely to give rise to confusion or mistake."

Third-party registrations and evidence of investment activities by other pharma companies "established a tenuous nexus between manufacturing and selling pharmaceuticals and investment advisory services and investment management by showing that it is common for large pharmaceutical companies to invest in innovative companies and technologies in the healthcare industry if for no other reason to expand their own research and development capabilities for pharmaceuticals." The Board concluded that applicant's investment services are related to ppposer’s pharmaceuticals for purposes of Section 2(d).

Trade Channels/Classes of Consumers: The Board considered the channels of trade only for opposer's pharmaceuticals, since the investments services claimed by opposer were not properly included in the pleadings and were not tried by consent. The Board found no evidence of "a nexus or connection between the parties’ channels of trade and classes of consumers." Nor was there any evidence regarding the conditions under which the parties make sales, leading the Board to find this factor neutral.

Actual Confusion: Opposer's evidence of purported actual confusion lacked sufficient details to be probative. "Opposer did not call any of the individuals who were purportedly confused as witnesses to explain why they thought Opposer and Applicant were associated. In addition, inquiries as to whether Applicant and Opposer are associated do not necessarily prove that the inquirers were confused."

Survey Evidence: Opposer introduced the results of a Squirt-type survey showing a net confusion rate of 15.5%, "within the range of percentages the Board and courts have found probative." However, the Board noted the stimulus cards used in the survey did not reflect "marketplace reality": i.e., they did not show the involved marks as they might appear in actual use (e.g., on a pharmaceutical bottle or a prospectus for an investment).  

In addition, the survey expert did not account for the sampling error derived from a sample size of 209. "For example, if the sampling error derived from a sample size of 209 is over 5% then as much as 20.5% of the population may be confused or as little as 10.5% of the population may be confused."

The survey did not include applicant's mark GILEAD CAPITAL LEADERSHIP INVESTING and design, and so the Board declined to consider the survey evidence with regard to that mark.

Applicant contended that, since opposer claimed that GILEAD is famous, it should have used the Eveready methodology, which "more accurately approximates market conditions by ensuring that respondents are not made artificially aware of the other party’s trademark." 

The Board overruled applicant's objections to the survey, but:

[W]e will not infer there is a likelihood of confusion from Opposer’s survey because (i) it does not sufficiently replicate the marketplace, (ii) it presents a side-by-side comparison of the marks when Applicant’s services and Opposer’s goods and services are not offered for sale on a side-by-side basis, (iii) the survey style is more conducive where Opposer’s mark is not famous or commercially strong as we have found it to be here, and (iv) because Opposer did not introduce the sampling error derived from a survey of 209 respondents.

Conclusion as to Section 2(d): Because opposer failed to prove an overlap in channels of trade to the same classes of consumers, the Board dismissed opposer's Section 2(d) claim.

Section 2(d) False Association: In order to establish this claim, opposer had to prove that applicant’s use of GILEAD CAPITAL in connection with investment services points uniquely to Opposer. It failed to do so. "The name 'Gilead' is not uniquely associated with Opposer because the name also identifies a region in Jordan, formerly, Palestine, a medicinal treatment originating from Gilead, and a village in Nebraska."

Moreover, opposer had to show that its fame or reputation "is such that, when Applicant uses its marks in connection with Applicant’s services, consumers will presume there is a connection with Opposer." Opposer failed to do so.

Opposer’s likelihood of confusion survey found that only 6.7% of the respondents thought GILEAD CAPITAL is the same company as GILEAD SCIENCES. Such a de minimis percentage of respondents believing GILEAD CAPITAL is the same company as GILEAD SCIENCES is not compelling evidence that the relevant public will presume there is a connection between GILEAD CAPITAL and Opposer.

Since opposer failed to satisfy two of the elements of the Section 2(a) false connection test, the Board dismissed this claim as well.

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Text Copyright John L. Welch 2021.


At 2:38 PM, Anonymous Anonymous said...

They need to hire you and get this bad decision overturned in the Federal Circuit.


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