Lupin Pharmaceuticals, Inc. v. Ampel, LLC

This Opinion Is Not a
Precedent of the TTAB

Hearing: May 30, 2019 Mailed: July 2, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Lupin Pharmaceuticals, Inc.
v.
Ampel, LLC

Opposition No. 91226322
_____

Robert L. Powley and Thomas H. Curtin of Powley & Gibson PC,
for Lupin Pharmaceuticals, Inc.

Patrick C. Asplin and Andrew S. Baugher of Lenhart Pettit,
for Ampel, LLC
_____
Before Thurmon, Deputy Chief Administrative Trademark Judge, Zervas, and
Kuhlke, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
Ampel, LLC (“Applicant”) seeks registration of the mark LuPPiN (in stylized

characters) for:
Opposition No. 91226322

“Education services, namely, providing seminars and one-on one
mentoring in the fields of Lupus, Lupus treatment options and the
importance of clinical trials; training Lupus patients to teach other
Lupus patients about the nature of Lupus, available treatments and the
importance of clinical trials” in International Class 41;

and:

“Organizing and conducting support groups for Lupus patients who are
undergoing treatment and clinical trials, and for the caregivers of Lupus
patients who are undergoing treatment and clinical trials” in
International Class 45.1

Lupin Pharmaceuticals, Inc. (“Opposer”) opposes registration under Section

2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of

confusion based on the following two previously used and registered marks that

contain the word LUPIN (the “LUPIN marks”):

• The word mark LUPIN, Reg. No. 4024405, is registered for “house mark for
full line of pharmaceuticals for medical purposes, but excluding dietary
supplements and edible flour” in International Class 5. This registration
resulted from an application filed on June 24, 2009 and claims a date of
first use in United States commerce of July 1, 2005.

• The word + design mark, , Reg. No. 4874579, is registered for
“Pharmaceutical preparations for the treatment of infectious and parasitic
diseases; antibiotics; pharmaceutical preparations for the treatment of
diseases and disorders of the endocrine and metabolic systems;
pharmaceutical preparations for the treatment of mental and behavioral
conditions and disorders; antidepressants; pharmaceutical preparations for
the treatment of diseases and disorders of the nervous system;
pharmaceutical preparations for the treatment of diseases and disorders of
the eye and adnexa; pharmaceutical preparations for the treatment of
diseases and disorders of the ear and mastoid process; pharmaceutical
preparations for the treatment of diseases and disorders of the circulatory

1 Application Serial No. 86509184, filed January 21, 2015 pursuant to Section 1(a) of the
Trademark Act, 35 U.S.C. § 1051(a), claiming first use and first use in commerce on
November 17, 2014 for the services in each International Class. The mark is described as
“consist[ing] of the word ‘LuPPiN’. The word ’LuPPiN’ has capitalized letters ‘L’, ‘P’, ‘P’, and
‘N’.”

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Opposition No. 91226322

system; antihypertensives; pharmaceutical preparations for the treatment
of diseases and disorders of the respiratory system; pharmaceutical
preparations for the treatment of diseases and disorders of the digestive
system; pharmaceutical preparations for the treatment of diseases and
disorders of the skin and subcutaneous tissue; pharmaceutical preparations
for the treatment of diseases and disorders of the musculoskeletal system
and connective tissue; pharmaceutical preparations for the treatment of
diseases and conditions of the genitourinary system; and pharmaceutical
preparations for the treatment of diseases and disorders associated with
pregnancy, childbirth and the peurperium, namely, contraceptives; oral
contraceptives; oral hormonal contraceptives; contraceptive preparations
and substances; hormone replacement therapies; hormonal agents for
treating disorders and conditions related to women’s health, namely,
symptoms and conditions associated with menopause, pre-menstruation
syndrome and other symptoms and conditions associated with
menstruation” in International Class 5. This registration resulted from an
application filed on June 24, 2009 and claims a date of first use in United
States commerce in 2005.

Applicant filed an Answer in which it admitted Opposer’s ownership of the two

asserted registrations but otherwise denied the salient allegations of the Notice of

Opposition.2 The Opposition has been fully briefed by the parties and the Board

conducted an oral hearing on May 30, 2019. We sustain the Opposition.

Before we address the merits, we deal with a few evidentiary matters. A

number of “evidentiary issues” were presented by the parties as appendices to their

trial briefs.3 Most of the “issues” stated therein appear to be more commentary or

argument than objections based on evidentiary rules. We have reviewed all of the

24 TTABVUE 3. Applicant asserted the following “affirmative defenses”: “The goods and/or
services offered by Applicant under the Mark and the goods and/or services offered by
Opposer under the LUPIN mark are distinct and marketed to different consumers who will
not be confused by any alleged similarity between them”; and “There is no likelihood of
confusion, mistake, or deception because, inter alia, the Mark and the Opposer’s marks are
not confusing [sic] similar.” These responses merely deny Opposer’s allegations and,
therefore, do not constitute affirmative defenses.
3 47, 49, 50 TTABVUE.

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Opposition No. 91226322

“evidentiary issues” so presented and find no reason to exclude any of the evidence of

record based on these “issues.”

A. Preliminary Matter – Applicant’s Motion To Strike

On September 6, 2018, Applicant moved to strike the Trial Testimony Affidavit

of Dave Berthold and Opposer’s documents Bates Nos. LUP-003367 – LUP-003924.4

Applicant contends these materials were produced outside the discovery period and

therefore, should be excluded from the trial record.5 This motion was “deferred by the

Board until final hearing.”6

Questions concerning whether late-produced materials should be precluded

from evidence are governed by the Board’s five-factor test set forth in Great Seats,

Inc. v. Great Seats, Ltd., 100 USPQ2d 1323, 1327 (TTAB 2011): (1) the surprise to the

party against whom the evidence would be offered; (2) the ability of that party to cure

the surprise; (3) the extent to which allowing the testimony would disrupt the trial;

(4) importance of the evidence; and (5) the non-disclosing party’s explanation for its

failure to disclose the evidence. We do not review these factors individually in this

case, but have considered them in ruling on Applicant’s motion, as will be apparent

from the discussion below.

4
36 TTABVUE. Opposer submitted as trial testimony two affidavits of Dave Berthold. One
of these affidavits (27 TTABVUE) dated December 18, 2017, was previously submitted by
Opposer in support of its motion for summary judgment (the “Berthold MSJ affidavit”). This
affidavit is the longer of the two and provides general information about Opposer’s business
and its use of the two trademarks asserted in this proceeding. The parties stipulated to the
admissibility of the Berthold MSJ affidavit, so that issue is not in dispute here. We refer to
the remaining Berthold affidavit (32 TTABVUE) as the “Berthold Trial Testimony Affidavit.”
5 Id. at 2-3.
6 37 TTABVUE.

4
Opposition No. 91226322

Applicant’s motion covers two sets of materials: (1) the Berthold Trial

Testimony Affidavit, together with all of the exhibits accompanying that affidavit;

and, (2) a number of publicly available documents purporting to show third-party

trademark registrations and trademark use.7 As to the third-party materials,

Opposer was under no obligation to investigate third-party use in order to respond to

Applicant’s discovery requests. See Sheetz of Del., Inc. v. Doctor’s Assc. Inc., 108

USPQ2d 1341, 1348 (TTAB 2013) (a party need not investigate third-party use to

respond to discovery requests); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98

USPQ2d 1066, 1071-72 (TTAB 2011) (a party has no duty to conduct an investigation

of third-party uses in response to discovery requests); Sports Auth. Michigan Inc. v.

PC Auth. Inc., 63 USPQ2d 1782, 1788 (TTAB 2001) (no obligation to search for third-

party uses); Red Wing Co. v. J.M. Smucker Co., 59 USPQ2d 1861, 1864 (TTAB 2001)

(investigation not necessary); Johnston Pump/General Valve Inc. v. Chromalloy Am.

Corp., 10 USPQ2d 1671, 1675 (TTAB 1988) (need not investigate).

The challenged third-party materials are trial exhibits identified by Opposer’s

counsel, not documents retained by Opposer in the ordinary course of its business.8

Similar materials, however, were produced during discovery and were submitted with

Opposer’s Motion for Summary Judgment.9 Applicant cannot claim surprise or

7 Id. Opposer submitted these materials by Notice of Reliance. 29 TTABVUE at Exh. P, Q.
838 TTABVUE at 10. The challenged Internet materials show dates in early August, 2018,
that are the same as or days before the filing of Opposer’s Notice of Reliance. 29 TTABVUE
at Exh. Q. Opposer also produced these materials in supplemental discovery responses,
apparently on the same date its Notice of Reliance was filed. 38 TTABVUE 9-10.
9 38 TTABVUE 8-9.

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Opposition No. 91226322

prejudice from the admission of evidence that it could have located on its own and

that is cumulative of materials produced during discovery. For all these reasons, we

deny Applicant’s motion as to the third-party materials.

Applicant presents a closer issue in its attempt to exclude the Berthold Trial

Testimony Affidavit, which Opposer submitted during its trial period.10 This affidavit

is shorter than the Berthold MSJ affidavit and contains little testimonial content. It

does, however, offer about 40 pages of exhibits that purportedly show uses of

Opposer’s registered trademarks on its goods.11 Applicant seeks to strike the Berthold

Trial Testimony Affidavit, and the exhibits to the Affidavit, as untimely.12 Though

Mr. Berthold’s trial testimony was timely because it was offered during Opposer’s

trial period, the exhibits to Mr. Berthold’s affidavit raise a different issue.

During discovery, Applicant requested production of all documents showing

Opposer’s use of its registered marks.13 Opposer objected to these requests as unduly

burdensome, but produced a representative sample of responsive documents showing

uses of its registered marks on its products.14 The portions of the file histories of

10 32 TTABVUE.
11 Id.
12 36 TTABVUE at 2, 3-4.
13 Id. at 6 (citing Document Requests 3, 4, and 5).
14Id. at Exh. C at 6-8; 38 TTABVUE at Morales Decl. at ¶ 11, Exh. E. Opposer’s response to
this and other similar requests is reasonable and sufficient. Frito-Lay North America Inc. v.
Princeton Vanguard LLC, 100 USPQ2d 1904, 1910 (TTAB 2011) (representative samples of
documents, including ESI, required for certain requests); British Seagull Ltd. v. Brunswick
Corp., 28 USPQ2d 1197,1201 (TTAB 1993) (where applicant gave partial answers and
otherwise objected to requests as cumulative or burdensome but opposer did not file motion
to compel, modify discovery requests, or otherwise pursue material, objection to evidence

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Opposition No. 91226322

Opposer’s two pleaded registrations that are in the record contain specimens showing

use of Opposer’s registered marks on the goods.15 We find Opposer’s document

production and the publicly available materials were sufficient to put Applicant on

notice of the ways Opposer uses its LUPIN marks. There can be no surprise or

prejudice to Applicant by admitting into evidence the exhibits provided with the

Berthold Trial Testimony Affidavit.

We also note that evidence pertaining to the manner of Opposer’s use of the

registered marks is of limited relevance here. The relied upon registrations recite a

broad range of pharmaceutical goods.16 “It is well established that the Board may not

read limitations into an unrestricted registration or application.” In re i.am.symbolic,

llc, 866 F.3d 1315, 1323 (Fed. Cir. 2017). We must give Opposer’s marks the full

benefit of registration. 15 U.S.C. § 1057(b) (“A certificate of registration of a mark

upon the principal register . . . [is] prima facie evidence . . . of the owner’s exclusive

right to use the registered mark in commerce on or in connection with the goods or

services specified in the certificate, subject to any conditions or limitations stated in

the certificate.”).

“Ultimately, the Board is capable of weighing the relevance and strength or

weakness of the objected-to testimony and evidence, including any inherent

introduced by applicant at trial was overruled), aff’d, 35 F.3d 1527, 32USPQ2d 1120 (Fed.
Cir. 1994). In addition, Applicant did not move to compel a further response.
15 29 TTABVUE at Exh. B.
16Opposer did allege common law use of the two registered marks back to 2005 and submitted
evidence relating to the actual use of the marks; however, in view of the pleaded and proven
registrations priority is not issue. See discussion in Part B.2.e., below.

7
Opposition No. 91226322

limitations, and this precludes the need to strike the testimony and evidence.” Inter

IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1737 (TTAB 2014). The challenged

exhibits to the Berthold Trial Affidavit are cumulative and corroborate what the

Board would have concluded absent that evidence.17 For all the preceding reasons,

we deny Applicant’s Motion to Strike.

B. Opposer’s Priority and Likelihood of Confusion Claim

Opposer must establish that it has standing to oppose the application, that it

has priority, and that Applicant’s use of its LuPPiN mark, when used on the services

identified in the application, is likely “to cause confusion, or to cause mistake, or to

deceive” consumers. 15 U.S.C. § 1052(d). We begin by identifying the relevant

portions of the record.

1. The Record

The record includes the pleadings and, by operation of Trademark Rule

2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the Notice of

Opposition.

Opposer’s submission includes the following:18

• copies of the registrations for the two marks it asserts in this proceeding19
and selected registration maintenance records for the marks;20

• selected discovery responses from Applicant;21

17 See discussion below in part B.3.b.
18We do not reproduce here all the entries from Opposer’s Notice of Reliance, but instead list
those we tend to rely upon in our analysis of the merits below.
19 29 TTABVUE at Exh. A.
20 Id. at Exh. B.
21 Id. at Exhs. C-J.

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Opposition No. 91226322

• selected excerpts from the discovery depositions of Lipsky, Grammer, and
Applicant;22

• NEXIS and Internet articles that mention Opposer’s LUPIN mark;23

• third-party trademarks registrations for marks of other pharmaceutical
companies;24

• Internet webpages showing third-party pharmaceutical companies
providing educational services;25

• a variety of other materials relating to the parties’ goods and services and
to the trade channels used by the parties and by other pharmaceutical
companies.26

Opposer also submitted the two Berthold affidavits mentioned above and the affidavit

of Jay Liska.27

Applicant submitted excerpts of Opposer’s discovery responses, affidavits that

were previously submitted in connection with the motion for summary judgment,

copies of certain documents produced by Opposer, and third-party registrations of

22 Id. at Exhs. K-M. We feel compelled to note that the overwhelming majority of the
testimony Opposer submitted from these witnesses was of no relevance to this proceeding.
Much of the proffered testimony describes prior work of the witnesses, the general business
objectives of Applicant, and other issues that have no bearing on the likelihood of confusion
between the marks at issue in this proceeding. Parties should avoid submitting testimony
just because they have it.
23 Id. at Exhs. N, O, R.
24 Id. at Exh. P.
25 Id. at Exh. Q.
26Id. at Exhs. S-CC. We refer to these exhibits collectively because these documents add little
to the record of this case. All were submitted with Opposer’s Notice of Reliance. 29, 30
TTABVUE.
27 27 TTABVUE; 32 TTABVUE.

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Opposition No. 91226322

marks that include the term “Lupin.”28 Opposer filed a rebuttal Notice of Reliance

with additional evidence.29

2. Opposer Has Established Standing and Priority

Opposer has pled and proven two registrations: one of the word mark LUPIN

and a second for a design mark that includes the term LUPIN. Because Opposer has

made its pleaded registrations properly of record, Opposer has established its

standing to oppose registration of Applicant’s mark and its priority is not in issue

with respect to the marks and goods in those registrations.30 See Empresa Cubana

Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014);

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);

Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton Indus.,

Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King

Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA

1974).

3. Opposer Has Established a Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all of the

probative facts in evidence that are relevant to the factors bearing on the likelihood

28 41 TTABVUE. The parties stipulated to the admissibility of the summary judgment
affidavits and documents produced by Opposer. 26, 40 TTABVUE.
29 44 TTABVUE. The additional evidence submitted in this rebuttal was cumulative to other
evidence or of no relevance. No objection to the admission of this evidence was made, so we
allow it into the record. We do not reproduce here the extensive list from this Rebuttal Notice
of Reliance.
30Applicant has not sought to cancel Opposer’s registrations and has admitted that it has no
basis to challenge the first use dates claimed in those registrations. 29 TTABVUE at Exh. F,
Nos. 1, 3-6.

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Opposition No. 91226322

of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,

567 (CCPA 1973) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135

S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315

F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont

factor that is relevant or for which there is evidence of record. See M2 Software, Inc.

v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);

ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)

(“While we have considered each factor for which we have evidence, we focus our

analysis on those factors we find to be relevant.”). “[E]ach case must be decided on its

own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,

475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed).

In any likelihood of confusion analysis, two key du Pont factors are the

similarities between the marks and the similarities between the goods or services.

See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);

Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29

(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative

effect of differences in the essential characteristics of the goods and differences in the

marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747

(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for

which there is record evidence but ‘may focus … on dispositive factors, such as

similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v.

Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).

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Opposition No. 91226322

In this case, we find the following additional du Pont factors warrant

discussion based on the evidence of record:31

• the similarity or dissimilarity of established, likely-to-continue trade
channels;

• the conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing; and,

• the fame of the prior mark.

Opposer relies on its two registered marks, namely the standard character

mark LUPIN and a design mark that includes the word LUPIN and a representation

of a lupin flower.32 Because we find a likelihood of confusion between Opposer’s word

mark LUPIN and Applicant’s LuPPiN mark, we need not consider whether a

likelihood of confusion also exists as to Opposer’s design mark. See In re Max Capital

Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).

We now evaluate these factors.

a. The Similarity of the Marks

We compare marks for similarities and dissimilarities in appearance, sound,

connotation, and commercial impression. In re E. I. du Pont De Nemours & Co., 476

F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). “Similarity in any one of these elements

may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d

31There is some evidence relating to third party use of the word “lupin,” but that evidence
was not explained and does not appear to relate to goods or services similar or related to
those at issue here. For that reason, we do not separately address “the number and nature of
similar marks in use on similar goods.” du Pont, 177 USPQ at 567.
32 27 TTABVUE 6, ¶ 4 (“The mark LUPIN was named for the lupin flower.”).

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Opposition No. 91226322

1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d

728, 156 USPQ 523, 526 (CCPA 1968).

Opposer’s LUPIN mark is identical in sound to Applicant’s LuPPiN mark. For

that reason alone, we may find the marks to be similar. See id. In addition, we find

that the marks are highly similar in appearance, particularly because Opposer’s

mark is a standard character mark, and marks appearing in standard character form

may be displayed in any stylization, font, color and size, including the identical

stylization of Applicant’s mark, because the rights reside in the wording and not in

any particular display or rendition. See Citigroup Inc. v. Capital City Bank Group

Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (“‘Standard character’ or

‘typed’ registrations are federal mark registrations that make no claim to any

particular font style, color, or size of display and, thus, are not limited to any

particular presentation.”); see also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ

937, 939 (Fed. Cir. 1983) (“[T]he argument concerning a difference in type style is not

viable where one party asserts rights in no particular display. By presenting its mark

merely in a typed drawing, a difference cannot legally be asserted by that party.”).

Opposer’s mark may hence be displayed in a font and a stylization highly similar to

Applicant’s mark, i.e., as LuPiN. In this case, the only difference between the marks

is the letter “P” included within Applicant’s mark.

Turning to the meaning of the marks, Mr. Berthold testified that the “mark

LUPIN was named for the lupin flower”33, and we take judicial notice of a dictionary

33 27 TTABVUE 6, ¶ 4.

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Opposition No. 91226322

definition for a “lupine” flower.34 In view of the designation “less commonly lupin” in

the dictionary definition for “lupine,” we find the parties have not established what

meaning, if any, relevant consumers attribute to Opposer’s LUPIN mark. Applicant’s

services are directed to persons with Lupus,35 and we find it likely in view of the first

three letters of Applicant’s mark that at least some consumers would make a

connection between Lupus and Applicant’s LuPPiN mark. There is insufficient

evidence in the record to determine whether either of the parties’ marks creates a

commercial impression apart from the appearance, sound, or meaning of the marks

discussed above.

There is evidence that the marks may have different meanings, but that

evidence is limited and does little to reduce the overall similarity of the marks.

Moreover, those consumers familiar with Applicant’s services directed to Lupus

patients and providers may ascribe the same meaning to Opposer’s mark, though

there is no evidence directly supporting such a conclusion.

In view of the foregoing, we find the Opposer’s LUPIN mark and Applicant’s

LuPPiN mark are highly similar. Mag Instr. Inc. v. Brinkmann Corp., 96 USPQ2d

1701, 1714-15 (TTAB 2010) (difference of a single letter does not suffice to distinguish

34 Merriam-Webster Online Dictionary (accessed June 22, 2019 at https://www.merriam-
webster.com/dictionary/lupin) defining a particular flower as “lupine” and with the
designation “less commonly lupin.” The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
35 Application Serial No. 86509184.

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Opposition No. 91226322

MAG STAR from MAXSTAR); RE/MAX of America, Inc. v. Realty Mart, Inc., 207

USPQ 960, 964 (TTAB 1980) (REMACS and RE/MAX indistinguishable in sound).

Such a high degree of similarity significantly increases the likelihood of confusion.

b. The Similarity or Relatedness of the Goods and Services

Opposer sells pharmaceuticals. Applicant provides educational and support

services to persons with Lupus. It is well recognized that confusion may be likely to

occur from the use of the same or similar marks for goods, on the one hand, and for

services involving those goods, on the other. See, e.g., In re Detroit Athletic Co., 903

F3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (“[W]e have held that confusion

is likely where one party engages in retail services that sell goods of the type produced

by the other party . . .”).

The question is whether there is some relationship between Opposer’s goods

and Applicant’s services that would lead relevant consumers to believe the goods and

services come from the same source or that there is some connection or affiliation

between the parties providing the goods and services. See, e.g., Coach Servs., Inc. v.

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012);

Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010);

Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford

Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). Based

on the record, we find such a relationship between the goods and services exists.

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Opposition No. 91226322

Opposer submitted evidence showing that many pharmaceutical companies

provide educational services to the general public, often via the Internet.36 For

example, Opposer submitted materials showing patient educational and support

services offered by Teva, a large generic drug manufacturer.37 Similar evidence of

similar programs by many other pharmaceutical companies is also in the record. We

find this evidence shows that drugs, including generic drugs, bear a close relationship

to educational and support services about the diseases and other conditions such

drugs are approved to treat.

There is undisputed evidence that persons with Lupus suffer from a variety of

symptoms38 and that Opposer sells generic drugs that are approved to treat some of

these symptoms.39 When these facts are combined with the evidence that many large

pharmaceutical companies provide educational and support services about their

drugs and the conditions those drugs treat, the inescapable conclusion is that

ordinary consumers are likely to believe that a single source exists for drugs and

educational and patient support services relating to drugs. This evidence sufficiently

establishes that pharmaceuticals and educational services about pharmaceuticals

36 29 TTABVUE 705-901 (Exh. Q – printed pages from the Internet showing third-party
pharmaceutical companies providing a variety of support services to consumers). Opposer
also submitted evidence of 20 registered marks for educational and support services owned
by pharmaceutical companies. Id. at 602-704 (Exh. P). This evidence included a number of
registrations in classes 41 and 44. We note that Applicant’s services were listed in classes 41
and 45. The class 44 services in the cited third-party registrations are similar to the class 45
services identified in the application.
37 Id. at Exh. Q, pp. 762-67.
38 31 TTABVUE at Exh. K-10; 29 TTABVUE at Exh. M, 108:6-12.
39 29 TTABVUE at Exh. F, nos. 42-47 (admissions by Applicant concerning drugs used to
treat Lupus symptoms).

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Opposition No. 91226322

and patient support services are closely related. We find this relationship, which is

fully supported by the evidence of record, makes confusion more likely.

Applicant argues that Opposer does not provide patient support services.40

That is not the issue here. The question is what relevant consumers are likely to think

based on their exposure to industry practices in general. We find the provision of

educational and support services by pharmaceutical companies is sufficiently

common that many consumers will make a connection between drugs and educational

services about a particular disease or condition, and, thus, find these goods and

services related.

c. The Similarity of Trade Channels

The arguments presented under this factor by both Applicant and Opposer

amount to little more than efforts to go beyond the identification of goods and services

recited in the application and registration. That is something we cannot do. Stone

Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,

1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937,

16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of

registrability of an applicant’s mark must be decided on the basis of the identification

of goods set forth in the application regardless of what the record may reveal as to

the particular nature of an applicant’s goods, the particular channels of trade or the

class of purchasers to which the sales of goods are directed.”); Paula Payne Prods. v.

Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases

40 49 TTABVUE 33.

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Opposition No. 91226322

involving the issue of likelihood of confusion must be decided on the basis of the

respective descriptions of goods”).

Applicant, for example, makes much of the fact that Opposer is a generic drug

manufacturer that sells its goods through large third-party distributors, wholesalers,

and governmental agencies.41 While this may be true, the fact is of no relevance.

Opposer’s registrations do not include a trade channel or field of use limitation and

we cannot read one into those registrations. Octocom Sys. v. Houston Comput. Servs.,

16 USPQ2d at 1788 (“an identification of goods having no restriction on trade

channels obviously is not narrowed by testimony that the applicant’s use is, in fact,

restricted to a particular class of purchasers”).

We further observe that, the fact that Opposer’s goods are sold through large,

and likely sophisticated, third parties does not mean Opposer’s goods stop there.

Opposer’s pharmaceuticals are used by real persons, that is, individuals who are end

consumers. Both parties ultimately provide their “products” to end consumers. There

is evidence, too, that some of Opposer’s goods may be used to treat symptoms of Lupus

patients, the consumer group targeted by Applicant’s services.42 At the end of the day,

or more accurately, at the end of the trade channels, there is overlap.

Undisputed evidence establishes the following:

41 49 TTABVUE at 35-36.
42 29 TTABVUE at Exh. F, nos. 42-47 (admissions by Applicant concerning drugs used to
treat Lupus symptoms).

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Opposition No. 91226322

• Some of the generic drugs sold by Opposer under its LUPIN mark may be
used by persons with Lupus to treat their symptoms;43

• Opposer’s goods are provided to end consumers, sometimes at hospitals or
other health care facilities;44

• Applicant’s services include providing information about treatments and
clinical trials;45 and

• Treatments and clinical trials often include the use of drugs, and may
include drugs sold by Opposer under its LUPIN mark.46

Opposer also makes misguided trade channel arguments based on Applicant’s

purported plans for future use. Opposer submitted evidence apparently to show that

Applicant intends to use its LuPPiN mark in ways that will come closer to Opposer’s

trade channels. Again these arguments ignore the principle that we must make our

analysis based on the identifications in the registration and application. The evidence

itself is highly speculative and the only possible evidentiary value is to corroborate

the other evidence of record showing that pharmaceutical companies manufacture

drugs and provide (or contract to provide) educational and support services.

The evidence shows many pharmaceutical companies provide both drugs and

educational and patient support services. It is likely, therefore, that consumers will

believe a company providing Opposer’s identified goods would operate in some of the

same trade channels as a party providing Applicant’s identified services. There is also

undisputed evidence of at least some actual overlap in the trade channels of the

43 29 TTABVUE at Exh. F, nos. 42-47 (admissions by Applicant concerning drugs used to
treat Lupus symptoms).
44 27 TTABVUE at 6, ¶¶17-20.
45 Application Serial No. 86509184.
46 27 TTABVUE 6, ¶¶16-17.

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Opposition No. 91226322

parties, though we must stress that our finding here is based on the trade channels

typically used by parties that offer the goods and services identified in the record.

When viewed in that manner, we find there is significant overlap in the trade

channels and this factor, therefore, weighs in favor of finding a likelihood of

confusion.

d. The Purchasing Conditions

Applicant argues that the relevant consumers will be well-informed and will

make careful decisions concerning the goods and services provided by the parties. We

find some merit to that argument. Applicant’s services target persons with Lupus,

which is an incurable condition. These services include “providing seminars and one-

on one mentoring,” “training Lupus patients to teach other Lupus patients about the

nature of Lupus, available treatments and the importance of clinical trials,” and

“conducting support groups for Lupus patients who are undergoing treatment and

clinical trials, and for the caregivers of Lupus patients.” These services include a

significant level of engagement between Applicant and the recipients of its services.

We find it likely that Applicant’s consumers will be informed and careful in their

search for relief. This fact reduces the risk of confusion.

Opposer sells branded and generic drugs prescribed to patients. As noted

above, some of Opposer’s drugs may be used by persons with Lupus. Because patients

rely on a health care provider, most often a physician, to prescribe medication, such

patients may not exercise direct control over what is prescribed. For example, a

person with Lupus who receives a drug bearing Opposer’s LUPIN mark may not have

asked for that product and may have played a very limited role in selecting it. All of
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Opposition No. 91226322

this analysis is largely speculative because there is no evidence in the record to

establish the level of care exercised by typical consumers purchasing or using the type

of goods identified in Opposer’s registrations. For these reasons, we find that

consumers of Opposer’s goods exercise a typical or average level of care.

Because consumers of Applicant’s services are likely to exercise a higher than

average level of care, this factor suggests that confusion is less likely.

e. Fame of the LUPIN Mark

Opposer argues that its LUPIN mark is well-known. Opposer is a large generic

drug manufacturer and has received some press attention. Most of these materials

contain references to the company name Lupin Pharmaceuticals and do not reference

the LUPIN trademark, but rather Opposer’s corporate name. We do not find the

evidence of record sufficient to make any finding concerning the fame or market

strength of Opposer’s LUPIN mark. Joseph Phelps Vineyards, LLC v. Fairmont

Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In

re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)); Weider

Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354 (TTAB 2014). For

that reason, we find this du Pont factor has no bearing on the outcome.

f. Weighing and Balancing the Factors

We find the first two du Pont factors are the most significant here. Both of

these key factors suggest that confusion is likely. This result is not surprising. The

marks are very similar and there is a relationship between the goods and services,

based on the record before us. We do not think the trade channel factor shifts the

balance. The consumers of Applicant’s services probably exercise a somewhat high

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degree of care and that fact reduces the risk of confusion but not enough to overcome

the substantial impact of the first two du Pont factors, which both indicate that

confusion is likely. We did not find the evidence sufficient to prove fame or market

strength for Opposer’s LUPIN mark. When the relevant factors are weighed and

balanced, it is clear that Opposer has carried its burden of proving that confusion is

likely.

Decision: The opposition is sustained.

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