Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 BLANSETT PHARMACAL CO., INC.
CARMRICK LABORATORIES, INC.
Cancellation No. 19,474
May 29, 1992
Before Rice, Rooney, Hohein
Opinion By Rooney
A petition was filed to cancel a registration of the mark NOLEX for a pharmaceutical composition for the treatment of nasal congestion. [FN1] The grounds for cancellation are that respondent's mark so resembles the mark NALEX previously used by petitioner for pharmaceuticals and related goods as to be likely to cause confusion, mistake or deception.
Respondent admits that the goods of the parties are closely related but denies the remaining allegations of likelihood of confusion. Affirmatively pleading, respondent asserts that it is the owner of the registered marks NOLAMINE [FN2] and NOLAHIST [FN3] for related goods; that NOLEX is a natural extension of respondent's NOL-prefixed family of marks which precedes petitioner's existence; that if NOLEX and NALEX are confusingly similar then petitioner's mark is also confusingly similar to respondent's other registered marks and petitioner cannot claim additional injury from the latest mark; that petitioner has known of respondent's use of NOLEX for a long time and has never objected to it; that as a result of petitioner's failure to object or to oppose its registration, respondent has made substantial investment in promotion of its mark; and that petitioner is not entitled to relief by virtue of laches and estoppel.
Petitioner has filed a motion for summary judgment on the ground that all material facts are established by the supporting declarations filed in connection therewith and by the copy of respondent's registration, also submitted with the motion. Both parties have filed briefs on the motion.
It is asserted that petitioner first became aware of respondent's mark in 1990; that an investigation ensued and respondent was sent a cease and desist letter on May 1, 1990; that settlement negotiations were attempted through August 1990 and, when they were unsuccessful, this petition to cancel was filed.
Petitioner states that, since September 1982, it has used the mark NALEX for nasal decongestant pharmaceuticals similar to those that respondent has marketed under the mark NOLEX since December 21, 1988; that the marks are almost identical and the products marketed under them are pharmaceuticals of similar composition giving rise to a substantial possibility of confusion; that, in the absence of any restrictions in the identification of goods as to trade channels or customers, it is presumed that they are the same for both parties' goods; that in response to a request for opinions from physicians, petitioner received letters from several doctors stating that the use of these similar marks for similar pharmaceuticals is confusing; and that pharmacists have related specific incidents of confusion. The slight difference in these marks is a single letter, argues petitioner, making them similar in sight and sound, a similarity that makes them difficult to distinguish in a handwritten prescription. Petitioner argues that confusion is not only likely, but can be dangerous to public health and safety because two of petitioner's NALEX products contain narcotic elements which many patients should not receive. It is further asserted that respondent's defense of laches cannot bar cancellation of respondent's mark due to the certainty of confusion. Since there are no material issues in dispute, argues petitioner, it is entitled to summary judgment in its favor.
*2 The motion is supported by the declarations of Larry A. Blansett, President of Blansett Pharmacal Company, Inc. and of Daniel J. Manelli, petitioner's attorney and exhibits filed in connection therewith.
In response to the motion, [FN4] respondent argues mainly that the motion is untimely in that it was filed three days before the opening of petitioner's testimony period and that petitioner filed supplemental affidavits of its president and its counsel on August 26, 1991, the first business date of the testimony period. It is respondent's position that the Board should in its discretion deny the motion as untimely.
Respondent asks that, in connection with the question of the motion's timeliness, the Board consider that, if the motion had been filed at the time petitioner answered respondent's interrogatories on May 14, 1991 or at any time within the following two months, respondent would have had the opportunity to take the depositions of the pharmacists quoted by petitioner's president in his declaration; that the doctors' letters to petitioner, which petitioner's president introduces with his declaration, were not produced when respondent's counsel inspected petitioner's documents and deposed petitioner on May 23, 1991 and were not produced to respondent until after discovery closed; and that respondent was therefore precluded from deposing the named pharmacists and doctors. It is asserted that, in any event, the statements attributed to pharmacists as to occurrences of actual confusion and the letters from doctors expressing their views on the likelihood of confusion are hearsay and should not be allowed.
Respondent goes on to assert that there is evidence of substantial contemporaneous use without any instance of actual confusion, supporting a finding of no likelihood of confusion; that the market has been thoroughly tested; that more than fourteen million NOLEX tablets have been distributed since December of 1988 and respondent has not received word of a single instance of actual confusion; that petitioner has not put in the record any evidence of the other factors that the Board traditionally examines, such as the degree of care exercised by those who deal in these goods or the distinctiveness of petitioner's mark; and that petitioner has not addressed the issue of the public perception of NOL-prefixed marks as identifying respondent due to its use of such marks predating petitioner's claimed date of adoption of NALEX. For the foregoing reasons, respondent urges the Board to deny petitioner's motion.
The response to the motion is supported by the declaration of Fredric B. Weinstein, Vice-President of Technical Services of Carnrick Laboratories, Inc., who attests that respondent is the owner of valid and subsisting registrations for the marks NOLAMINE and NOLAHIST; that respondent selected the mark NOLEX believing that it would be associated with its pre-existing and continuing NOLAMINE and NOLAHIST product line; and that, despite respondent's continuous use of the mark NOLEX since December 1988, there have been no instances of confusion reported. Also filed in support of respondent's position were copies of the aforementioned registrations, the declaration of respondent's attorney identifying exhibits attached thereto, which consist of copies of portions of respondent's interrogatories with petitioner's responses thereto, and copies of portions of the discovery deposition of Mr. Blansett.
*3 Summary judgment is an efficient and approved procedure for disposing of cases in which there are no genuine issues of material fact in dispute, thereby allowing judgment to be rendered as a matter of law. See Pure Gold, Inc. v. Syntex (U.S.A.) Inc., 739 F.2d 624, 222 USPQ 741 (Fed.Cir.1984). While the initial burden on such a motion is on the movant, if the movant supports his position, the respondent must come forward with specific materials of his own to show that there are triable issues of fact or he must demonstrate why he cannot do so.
Petitioner has provided proof sufficient to illustrate that there are no genuine issues of material fact outstanding. In response, respondent has failed to demonstrate that such issues exist. Instead, respondent has challenged the timeliness of petitioner's motion and petitioner's standing, raised a question regarding the possibility that petitioner has somehow acted irresponsibly or perhaps illegally in producing its products, and has raised questions regarding the probative value of the alleged evidence of actual confusion by pharmacists and the authenticity and timeliness of the letters from doctors regarding the likelihood of confusion. In addition, respondent has offered its own declaration concerning the absence of actual confusion, has remarked that petitioner has submitted no evidence concerning other factors such as the degree of care exercised by persons dealing in the goods and has asserted that respondent has not even addressed the issue of public perception of NOL-prefixed marks as identifying respondent, owing to its prior use of other NOL-prefixed marks. None of the foregoing raises a genuine issue of material fact.
The rule applicable to the timeliness of summary judgment motions in Board proceedings requires that such a motion be filed prior to the commencement of the first testimony period and provides that the Board may deny as untimely any motion for summary judgment filed thereafter. See Rule 2.27(e)(1). Inasmuch as petitioner's motion was filed before the commencement of its testimony period, it was timely.
With respect to respondent's argument that it was denied discovery of the doctors and pharmacists named by petitioner in connection with its motion, if respondent found itself unable to respond to the motion as a result of that denial of discovery, respondent had the alternative of filing a motion under Rule 56(f) of the Federal Rules of Civil Procedure for a continuance to permit discovery to be taken before responding to the motion. In the absence of such a motion, it is presumed that respondent did not consider such discovery essential to its response.
As to the evidence filed by petitioner to prove actual as well as a likelihood of confusion, it is noted that, as respondent has asserted, the statements which Mr. Blansett has attributed to certain named pharmacists are indeed hearsay and entitled to no probative value. In addition, the letters from the doctors, which were submitted by petitioner, are merely expressions of their opinions and are also of no probative value on the question. In any event, the issue which petitioner must prove in this case is that there is a likelihood of confusion. Proof of actual confusion is not required. See Cooper Industries, Inc. v. Repcoparts USA, Inc., 218 USPQ 81 (TTAB 1983) and Tiffany & Co. v. Classic Motor Carriages, Inc., 10 USPQ 1835 (TTAB 1989). Further, even assuming that there has, as yet, been no actual confusion in this case, we believe that factor is simply outweighed by the other factors discussed hereafter, including the similarity of the marks and the similarity of the goods. [FN5]
*4 Petitioner's standing has been shown by the evidence of its use of the mark NALEX on a pharmaceutical which establishes petitioner's real interest in the matter and that there is a real and rational basis for its belief that petitioner is or will be damaged by the continued existence of respondent's registration. See International Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087, 220 USPQ 1017 (Fed.Cir.1984). Petitioner's standing to challenge respondent's registration is not affected by its marketing of a narcotic and a non-narcotic form of NALEX, as we noted in footnote 3.
Finally, the fact that respondent owns registrations for its other NOL-prefixed marks has no bearing on this proceeding. The doctrine of "family of marks" is applicable to those situations where a plaintiff asserts that, prior to the defendant's first use of the challenged mark, the plaintiff established a family of marks and that, because of the nature of the defendant's mark it would be assumed by purchasers familiar with plaintiff's "family" that the defendant's mark comprised a member of that "family". See Plus Products v. Medical Modalities Associates, Inc., 217 USPQ 464 (TTAB 1983). Under Section 2(d) of the Lanham Act, a plaintiff in an inter partes proceeding before the Board may rely on any mark which it has registered or previously used and as to which it can make the requisite showing of likelihood of confusion. However, for the defendant in such a proceeding, the issue is whether it can prove priority of use of its mark which is the subject of the proceeding (or, under the "tacking" doctrine, whether it can prove priority of use of a mark which is the legal equivalent of its subject mark, for the same goods or services as those on which the subject mark is used), not whether it can prove priority of use of some other mark or marks. See Baroid Drilling Fluids, Inc. v. Sun Drilling Products, --- USPQ ---- (TTAB 1992). Thus, no genuine issue of material fact is raised by respondent's "family of marks" claim. [FN6] Nor do respondent's arguments relative to the existence of its registrations for the marks NOLAMINE and NOLAHIST raise any such issue with respect to priority by virtue of a "tacking" effect.
In view of the foregoing, and since the question of likelihood of confusion is a question of law, it is clear that summary judgment is appropriate.
Respondent has conceded that petitioner is the prior user and that the goods are similar. Respondent's goods are identified as a pharmaceutical composition for the treatment of nasal congestion. Mr. Blansett has stated in his declaration that the product his company markets under the mark NALEX is a prescription pharmaceutical for the relief of nasal congestion. Although respondent's goods are not specified as being sold by prescription, the identification of goods is not restricted and we can assume that the goods may be dispensed either by prescription or over-the-counter. We can take judicial notice that prescription drugs and non-prescription drugs are prescribed by doctors and dispensed by pharmacists and that such persons are not prone to carelessness. Nonetheless, we believe that confusion and mistake are likely, even by such professionals, where these similar goods are marketed under marks which look alike and sound alike. See In re Merck & Co., Inc., 189 USPQ 355 (TTAB 1975). Both marks begin with the letter "N", have two syllables and end in the letters "LEX". The only difference between the marks is a single vowel, an "A" in petitioner's mark and an "O" in respondent's, which, when handwritten, are frequently indistinguishable. It is our opinion that confusion is highly likely between these marks. We note also that where the marks are used on pharmaceuticals and confusion can lead to serious consequences, it is even more important to avoid that which will cause such confusion. See American Home Products Corporation v. USV Pharmaceutical Corporation, 190 USPQ 357 (TTAB 1976) and cases cited therein.
*5 In view of the foregoing, summary judgment is granted in favor of petitioner. Respondent's registration will be cancelled in due course.
Members, Trademark Trial and Appeal Board
FN1. Regn. No. 1,560,452 issued October 17, 1989, based on an application filed February 10, 1989 claiming use since December 21, 1988.
FN2. Regn. No. 1,152,874 issued May 5, 1981.
FN4. Among the arguments advanced by respondent was that, because petitioner produces a NALEX non-narcotic product in tablet form and a NALEX liquid which contains a narcotic, there is a greater likelihood of confusion or mistake in dispensing petitioner's own products than there would be between respondent's NOLEX tablets and petitioner's NALEX products; that under petitioner's theory of the propensity for mistakes in dispensing prescription medicines, it has acted at best irresponsibly and perhaps illegally in selling a narcotic prescription medicine under the identical name it uses for a non-narcotic prescription medicine; and that petitioner therefore lacks standing to prosecute the within petition for cancellation notwithstanding its priority. Respondent also argued that petitioner has suggested that at some point it will claim that respondent's use of the mark NOLEX violates FDA regulations.
With respect to these arguments, respondent is advised that this proceeding is concerned with the issues which have been pleaded which are priority of use and likelihood of confusion between the marks NALEX and NOLEX as used on the parties' respective goods. Whether there may or may not be confusion as between the tablet and liquid forms of petitioner's product is not relevant to this proceeding. The case cited by respondent, Geraghty Products, Inc. v. Clayton Mfg. Co., 190 USPQ 508 (TTAB 1976), involved quite different facts than are present in this case. In the Geraghty case, the Board refused to allow the petitioner to assert against the respondent rights which allegedly accrued from the interstate shipment of products which were accompanied by instructions, recommendations or suggestions to violate public policies of the Federal government and the statutory or regulatory public policy of 20 states. No such facts have been pleaded in this case. Nor has there been any pleading with respect to the other matter to which respondent has referred in its argument. A summary judgment motion must be determined only on the issues joined by the pleadings. That determination cannot be influenced in any way by unpleaded issues.
FN5. As to respondent's urging that the fact that there has been no actual confusion reported to it since it began use of its mark should weigh heavily in finding an absence of likelihood of confusion, we note that just two years had elapsed between the first use of the mark by respondent and the filing of the cancellation petition. In American Hospital Supply Corporation v. Baxter Travenol Laboratories Inc., 202 USPQ 226 (TTAB 1979), the Board said that the absence of evidence of actual confusion is not significant where only a little more than two years elapsed between the asserted use date and the filing of the opposition. Moreover, as we have indicated, even assuming that there has, as yet, been no actual confusion, the absence thereof would not alter our decision in this case.
FN6. To the extent that respondent intended to rely on the Morehouse defense (Morehouse Manufacturing Corporation v. J. Strickland and Company, 407 F.2d 881, 160 USPQ 715 (CCPA 1969), we note that a subsisting registration may not be relied on by a defendant as a basis for contesting an attack upon another registration or application unless the mark and the goods or services shown in the subsisting registration are the same as or substantially identical to the mark and goods or services set forth in the defendant's challenged application or registration. It is quite clear that the prior registrations do not involve the same or substantially identical marks as the registration sought to be registered.