Novartis Int

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB

Mailed: 2/24/04

Paper No. 26
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Novartis International Pharmaceutical, Ltd.

v.

Genetic Immunity, LLC
_____

Opposition No. 91124457
to application Serial No. 78052908
filed on March 13, 2001
_____

Peter S. Sloane of Ostrolenk, Faber, Gerb & Soffen, LLP for
Novartis International Pharmaceutical, Ltd.

Valerie E. Looper of The Law Office of Valerie E. Looper for
Genetic Immunity, LLC.
______

Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Novartis International Pharmaceutical, Ltd. has opposed

the application of Genetic Immunity, LLC to register

DERMAVIR as a trademark for “vaccines and vaccine
Opposition No. 91124457

adjuvants.”1 As grounds for opposition, opposer has alleged

that it manufactures and sells a wide variety of

pharmaceutical products; that it has used the trademark

DENAVIR for an antiviral to treat cold sores and related

skin disorders since as early as 1996, and prior to the

March 13, 2001 filing date of applicant’s intent-to-use

application; that it owns a number of registrations for

DENAVIR and DENAVIR and design marks for “pharmaceutical

preparations, namely antivirals” and for “pharmaceutical

preparations, namely anti-viral preparations and

preparations for treatment of cold sores and related skin

disorders; and that applicant’s use of DERMAVIR for vaccines

and vaccine adjuvants is likely to case confusion, mistake

and/or deception.

In its answer, applicant has admitted that it is aware

that opposer is a large international pharmaceutical company

that sells a number of pharmaceutical and other products;

that it is aware that opposer uses the mark DENAVIR for

penciclovir cream 1%, which is marketed and sold as a

topical treatment for cold sores; that it is aware that

opposer uses the trademark DENAVIR on labeling, packaging,

materials, product literature and advertisements for

penciclovir cream 1%, which is marketed and sold as a

1
Application Serial No. 78052908, filed March 13, 2001 and
asserting a bona fide intention to use the mark in commerce.

2
Opposition No. 91124457

topical treatment for cold sores; and has denied the

remaining salient allegations in the notice of opposition.

The record includes the pleadings; the file of the

opposed application; the testimony, with exhibits, of

opposer’s witness, Jennifer Stuart; various documents made

of record by opposer pursuant to a notice of reliance; and

materials made of record by applicant under a notice of

reliance.

Only opposer filed a brief; an oral hearing was not

requested.2

The opposition is sustained.

The record needs further discussion. First, it is

noted that both opposer and applicant have submitted with

their notices of reliance material taken from certain

Internet websites. Generally material which is available

only on a website does not qualify as a printed publication

under Trademark Rule 2.122(e). See Raccioppi v. Apogee

Inc., 47 USPQ2d 1368 (TTAB 1998). However, because both

parties have treated such material as though it may be made

2
It is noted that, although opposer timely filed its brief on
the case on March 31, 2003 (with a certificate of mailing dated
March 28, 2003), it was not initially associated with the file,
and therefore, on May 27, 2003, the Board issued an order to show
cause because opposer had presumably not filed its brief. The
brief was subsequently associated with the file, and on June 25,
2003, the Board set aside the order to show cause. Applicant’s
brief was due by April 28, 2003, prior to the Board’s order to
show cause. Therefore, it is clear that no confusion was caused
to applicant by the Board’s show cause order, and that applicant
simply chose not to file a brief on the case.

3
Opposition No. 91124457

of record in this manner, we deem the parties to have

stipulated to the admission of these documents, and have

considered them.

With its notice of reliance, applicant submitted its

request for production of documents and opposer’s written

responses thereto, although it did not submit the actual

documents that were produced. Trademark Rule

2.120(j)(3)(ii) provides that documents obtained under Rule

34 of the Federal Rules of Civil Procedure may not be made

of record by notice of reliance. In this case, because

applicant has not actually submitted any documents, and

because opposer has treated applicant’s entire notice of

reliance of record, we have considered the responses to be

of record for whatever probative value they may have.

Applicant also filed a “motion for estoppel sanction

and objection to notice of reliance,” which motion was

deferred by the interlocutory motions attorney until final

hearing. Thus, we now take up this motion for

consideration. Applicant contends that certain exhibits to

the testimony of Jennifer Stuart, and testimony related

thereto, as well as two exhibits submitted under opposer’s

notice of reliance,3 should not be considered by the Board

3
The specific evidence to which applicant objects are Exhibits
2, 3, 5, 8-31 and 33-35 to the testimony deposition of Jennifer
Stuart (and the testimony relating thereto), and Exhibits C and D
submitted with the notice of reliance.

4
Opposition No. 91124457

because opposer had not made these materials available in

response to applicant’s discovery requests.

Applicant has asserted that case law precludes opposer

from introducing evidence that it previously refused to

furnish during discovery. That is certainly the general

rule. In this case, opposer objected to many of applicant’s

discovery requests, generally on the basis that the

particular request was vague or overbroad or would require

the disclosure of confidential commercial information.

There is no indication that, upon receiving the responses

and objections, applicant made any effort to confer with

opposer in order to have its discovery requests satisfied.

The Board frowns on such actions. Discovery is

designed to be a cooperative process, and if applicant

believed that its discovery requests were appropriate, it

should have contacted opposer to make a good faith effort to

resolve any discovery disputes and, with respect to its need

for confidential material, to arrange for a protective

order. Applicant has provided no explanation as to why,

after receiving the responses, it did not make such

attempts. For all we know, applicant may have done so in a

strategic ploy to limit opposer’s evidence to the discovery

documents which were provided. Whatever applicant’s

motives, because applicant did not contact opposer in order

to make clear that it still sought particular information

5
Opposition No. 91124457

through discovery, and thereby seemingly acceded to

opposer’s objections, we consider applicant to have waived

its rights for more complete responses. See Time Warner

Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002)

(despite applicant’s apparent dissatisfaction with opposer’s

interrogatory responses, applicant never filed a motion to

compel further responses from opposer; applicant will not

now be heard to complain that opposer’s discovery responses

were inadequate).

In support of its motion, applicant relies on Weiner

King, Inc. v. The Weiner King Corporation, 615 F.2d 512, 204

USPQ 820, 828 (CCPA 1980). However, the facts of that case

are distinguishable from the case at hand. Weiner King had

served interrogatories upon WKNC, seeking to discover facts

upon which WKNC would rely to establish the chronology and

geographical extent of its use of its marks. WKNC objected

to and refused to answer interrogatories on the ground that

the requested information was irrelevant and immaterial.

Later, during its testimony period, WKNC attempted to

introduce into evidence facts bearing on those very issues.

The Court stated that where a party seeks to discover facts

which it expects the other party to introduce into evidence

and the other party represents that all of those facts are

already of record, the first party has a right to expect

reliance by the other party on only those facts which were

6
Opposition No. 91124457

of record. Further, the Court found that WKNC’s objection

to the interrogatories amounted to a representation that

this information would not be the subject of testimony. As

a result, it would have been absurd for Weiner King to have

made a motion to test the sincerity of this representation.

In the present case, however, opposer’s objections were

to the form of the interrogatories and document production

requests. This is not a situation in which opposer claimed,

in response to the discovery requests, that the information

sought was irrelevant, and then took an inconsistent

position during testimony, submitting such evidence and

claiming that it was relevant to its position. This case,

thus, is more akin to Linville v. Rivard, 41 USPQ2d 1731

(TTAB 1996), aff’d on other grounds, Rivard v. Linville, 133

F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998), in which

respondent objected to interrogatory and production requests

as “vague and ambiguous, and overly burdensome.” The Board

held that these objections were not of a nature which would

have led petitioner to believe that no such documents

existed. As a result, and because petitioner did not file a

motion to compel, petitioner’s complaint that the documents

were not identified and produced was not given any

consideration.

For similar reasons, we find that opposer is not

precluded from making of record evidence which it had

7
Opposition No. 91124457

stated, in response to applicant’s discovery requests, was

confidential. Opposer did not refuse to make such

information available to applicant; on the contrary,

opposer’s responses to applicant’s first set of discovery

requests to opposer stated only that “opposer will not

disclose [the confidential information] unless appropriate

confidentiality safeguards are in place.” Definition No. 2.

It reiterated this offer in responses to specific

interrogatories, including its response to Interrogatory No.

12, which requested annual sales revenues for the DENAVIR

products, and Interrogatory No. 13, which requested the

annual cost of advertising the products sold under the

DENAVIR mark: “Opposer will provide this information once a

confidentiality agreement is in place.” Applicant never

made any attempt to pursue such an agreement. Nor did

opposer take an inconsistent position with respect to the

confidential nature of its materials by asserting during

discovery that the discovery requests called for

confidential information, and then, during its testimony

period, treating such information as not confidential.

Rather, opposer moved the Board to put a protective order in

place so that it could make such evidence of record during

its testimony period. Compare, Super Valu Stores Inc. v.

Exxon Corp., 11 USPQ2d 1539 (TTAB 1989); Visual Information

8
Opposition No. 91124457

Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB

1980).

In addition to applicant’s overall position that

documents and information not provided during discovery may

not be made of record by the responding party during its

testimony period, applicant has discussed the particular

exhibits and why they should have been furnished in response

to specific discovery requests. The objections to the

exhibits, and the number of exhibits, are extensive, and we

will not further burden this opinion with an exhaustive

discussion of them. Applicant’s motion is not a motion to

compel, and we will not treat it as such. More importantly,

even if we were not to consider the objected-to exhibits and

related testimony, we would still find that opposer has met

its burden of proof, and that the opposition should be

sustained. Therefore, because we have not discussed the

objected-to evidence in our rendering out decision, we will

not discuss the particular objections to such evidence. We

will say only that, for the most part, we do not agree with

applicant’s claim that particular exhibits should have been

provided by opposer in response to the specific discovery

requests listed by applicant in its motion for estoppel

sanction.

This brings us to the substantive issue in this

proceeding, priority and likelihood of confusion.

9
Opposition No. 91124457

The record shows that opposer, through its sister

company Novartis Consumer Health, uses the mark DENAVIR in

the United States on a prescription antiviral medication for

the treatment of cold sores. The DENAVIR mark has been used

in the United States since December 1996. It was originally

used by SmithKline Beecham p.l.c. The product is sold in

the form of a cream, and its active ingredient, penciclovir,

penetrates the skin to target the infected cells and attack

the herpes simplex type 1 virus, and also blocks the virus

from replicating.

Approximately 40 million Americans suffer from cold

sores each year; the consumers for opposer’s product are

both men and women, age 18 and above. In its website

(www.denavir.com) and other advertising and promotional

materials, opposer advises sufferers of cold sores to see

their doctor or dentist for a diagnosis, since the DENAVIR

product is sold only by prescription. The medical personnel

who prescribe DENAVIR medication are primarily OB/GYN’s,

dermatologists, primary care physicians and dentists.

Until September 10, 2002, DENAVIR medication was the

only FDA-approved prescription drug to treat cold sores; as

a result, opposer had 100% of the market share of FDA-

approved prescription medications to treat this problem.

Opposer sells its DENAVIR product primarily to drug

wholesalers, who then sell to retail pharmacies. It also

10
Opposition No. 91124457

sells its product through hospitals, long-term care

facilities, and mail order and Internet pharmacies.

Opposer has operated the DENAVIR Internet website since

1999. It is directed to consumers who have cold sores and

those who prescribe DENAVIR for cold sores. In addition,

opposer advertises its DENAVIR medication through direct-to-

consumer advertising such as mass media, television and

print. These advertisements encourage potential consumers

to talk to their doctors or dentists about the benefits of

using the DENAVIR product to treat their cold sores.

Opposer also does medical promotions, using over 1,000

company sales reps and 40 contract sales reps to educate

prescribers about the benefits of the DENAVIR product.

Opposer’s reps contact approximately 40% of primary care

physicians. Doctors and dentists are often given single-use

samples to give to their patients, with approximately 1.5

million samples having been given to physicians in both 2001

and 2002. Opposer also planned to launch patient education

brochures through direct mail in 2003.

Applicant filed its application based on an intention

to use the mark, and has not filed an amendment to allege

use. However, its responses to discovery requests state

that is now using the mark DERMAVIR in the United States in

connection with its research and development activities

relating to its vaccine for HIV infection. Applicant

11
Opposition No. 91124457

expects that its vaccine will be available only through

physicians, and the ultimate customers will be people

infected with HIV. Applicant’s market research indicates

that customers might pay $8,000-$10,000 per year for

treatment.

Priority is not in issue, in that opposer has made of

record status and title copies of its pleaded registrations

for DENAVIR. King Candy Company v. Eunice King’s Kitchen,

Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). See, for

example, Registration No. 2,139,789, issued February 24,

1998 for “preparations for the treatment of cold sores and

related skin disorders”; Registration No. 2,139,703, issued

February 24, 1998 for “pharmaceutical preparations, namely,

antivirals.”

Our determination of the issue of likelihood of

confusion is based on an analysis of all of the probative

facts in evidence that are relevant to the factors set forth

in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973). See also, In re Majestic Distilling

Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

2003).

Opposer’s mark is DENAVIR; applicant’s mark is

DERMAVIR. The similarities in appearance are obvious. Both

begin with the letters “DE” and end with the letters “AVIR.”

The only differences in the mark, the letter “N” in

12
Opposition No. 91124457

opposer’s mark and the letters “RM” in applicant’s mark, are

buried in the center of the marks. And even the letters

which are different look similar, at least in terms of the

“N” and “M.”

The pronunciation of the marks is also similar.

Although there is no correct pronunciation of an invented

term, as these marks appear to be, they are likely to be

pronounced in a similar manner, both having three syllables

with an accent on the first syllable. Both also begin with

the “DE” sound, and end with the “AVIR” sound. The

similarities in pronunciation between “M” and “N” are

obvious. Although there is no “R” sound in opposer’s mark,

this letter conveys a “soft” sound which is not emphasized

when applicant’s mark is spoken.

With respect to the connotation of the marks, the

evidence shows that “VIR,” with which both marks end,

indicates an antiviral substance. See USP Dictionary, 2002

(Exhibit J to opposer’s notice of reliance)). The third-

party registrations submitted by applicant for various “VIR”

marks reinforce that “VIR” has such a meaning. See, for

example, COMBIVIR for “anti-viral pharmaceutical

preparations and substances” (Reg. No. 2,158,546); DOCOSAVIR

for “jojoba plant extract used to help alleviate symptoms

associated with envelope virus infections” (Reg. 2,586,423);

and EPIVIR for “pharmaceutical preparations, namely anti-

13
Opposition No. 91124457

infectives, antibiotics and anti-bacterials.”4 Third-party

registrations are probative to the extent that they serve to

suggest that the “VIR” portion of the various marks,

including opposer’s and applicant’s, convey their dictionary

meaning. See Tektronix, Inc. V. Daktronics, Inc., 187 USPQ

588 (TTAB 1975).

The presence of this element in both marks would not,

alone, be sufficient to find a likelihood of confusion;

however, the overall similarities in appearance and sound

between the marks is far greater than the fact that both

include “VIR.” In this connection, we note that the only

third-party registrations submitted by applicant for a “VIR”

mark that begins with the letter “D” are DOCOSAVIR,

mentioned above, and DOXOVIR (Reg. No. 2771047).5 Moreover,

opposer’s witness testified that she was unaware of any

other trademarks for pharmaceuticals that begin with the

letter “D” and end with the letters “VIR.”

Although we take judicial notice that “DERMA,” which

forms the beginning of applicant’s mark, may have the

meaning of “a layer of skin,”6 there is nothing in the

4
In addition to the third-party registrations, applicant also
submitted a significant number of third-party applications. Such
applications have limited probative value, showing only that the
applications were filed.
5
This mark was the subject of an application at the time
applicant filed its notice of reliance, but has since been
registered.
6
The American Heritage Dictionary of the English Language, ©
1970).

14
Opposition No. 91124457

record to indicate that this would be the connotation

accorded to applicant’s mark because of the goods on which

it is used. Thus, with the exception of the “VIR” suffix,

we must assume that both opposer’s mark and applicant’s mark

have arbitrary connotations.

We therefore find that the factor of the similarity of

the marks favors opposer. We further find that there is no

evidence of use of similar marks on similar goods, the mere

fact that other marks include the element “VIR” not being

sufficient to show that such third-party marks are similar.7

Thus, this factor, too, favors opposer.

Turning to the goods, opposer’s registrations for

DENAVIR include goods identified simply as “pharmaceutical

preparations, namely antivirals.” These registrations do

not limit opposer’s goods to antivirals used for any

particular purposes. Similarly, applicant’s application is

not limited to vaccines for the prevention of any particular

ailment; the identification is simply for “vaccines and

vaccine adjuvants.”8 Thus, any distinctions between the

7
The third-party registrations submitted by applicant are not
evidence that the marks shown therein are in use. However, in
its responses to applicant’s requests for admissions, opposer has
admitted third-party use of, inter alia, IMMUVIR for a herbal and
nutritional supplement, NORVIR for an inhibitor of HIV protease,
RETROVIR for a pyrimidine nucleoside analogue active against HIV,
EIPIVIR, a synthetic nucleoside analogue with activity against
HIB and hepatitis B virus; COMBIVIR for synthetic nucleoside
analogues with activity against HIV, and TRIZIVIR for synthetic
nucleoside analogues.
8
Adjuvants are chemicals which enhance the antigenicity of other
biochemicals, and therefore the inclusion of adjuvants in

15
Opposition No. 91124457

actual uses to which opposer puts its antiviral preparations

and applicant puts its vaccines is of no moment. It is well

established that the question of likelihood of confusion

must be determined based on an analysis of the mark as

applied to the goods and/or services recited in applicant’s

application vis-à-vis the goods and/or services recited in

an opposer’s registration, rather than what the evidence

shows the goods and/or services to be. Canadian Imperial

Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1

USPQ2d 1813 (Fed. Cir. 1987).

Opposer has shown that there is a clear connection

between antiviral preparations and vaccines. First,

vaccines are generally made of viruses which have been

weakened or killed. See Exhibit I to opposer’s notice of

reliance. Second, antivirals and vaccines are both used in

the fight against viral diseases. For example, an article

in the September 18, 2002 issue of “Vaccine Weekly”

discusses the costs and benefits of flu vaccination and

treatment of patients with antiviral medication. An article

in the June 12, 2002 issue of the same publication

speculates about a vaccine-antiviral combination which could

be used to break immune tolerance in humans infected with

hepatitis B virus. Third, companies are engaged in

vaccines greatly increases the effectiveness of the vaccine. See
Atlas, Microbiology, © 1984, Exhibit I to opposer’s notice of
reliance.

16
Opposition No. 91124457

developing and manufacturing both antivirals and vaccines.

A July 31, 2002 article from PR Newswire reports on Panacos

Pharmaceuticals, “a privately held antiviral drug and

vaccine development company.” In addition, an August 6,

2002 article from PR Newswire reports on the

biopharmaceutical company, Novavax, Inc., stating that its

products “include certain hormone, anti-bacterial, and anti-

viral products and vaccine adjuvants.”

It is not necessary that the goods of the parties be

similar or competitive, or even that they move in the same

channels of trade to support a holding of likelihood of

confusion. It is sufficient that the respective goods of

the parties are related in some manner, and/or that the

conditions and activities surrounding the marketing of the

goods are such that they would or could be encountered by

the same persons under circumstances that could, because of

the similarity of the marks, give rise to the mistaken

belief that they originate from the same producer. In re

International Telephone & Telegraph Corp., 197 USPQ 910, 911

(TTAB 1978). In this case, because of the close

relationship between antivirals and vaccines, their use in

fighting the same illnesses, including their possible

combined effect in such treatment, and their development by

the same companies, we find that the parties’ goods are

related. Accordingly, this factor favors opposer.

17
Opposition No. 91124457

In terms of classes of customers, both opposer’s

antivirals and applicant’s vaccines may be sold to

physicians and to hospitals for dispensing to those patients

requiring such medications. These sophisticated customers

would be aware of the connections between antivirals and

vaccines discussed above, and are likely to believe that

both products would emanate from a single source if they

were sold under such similar marks as DENAVIR and DERMAVIR.

Moreover, such goods may also be sold to the ultimate users

as prescription drugs. That is, in fact, the way in which

opposer’s goods are sold. We also note applicant’s

admissions that its product is intended to be made available

by the prescription of a medical professional, and that

vaccines may be “admitted” [sic, should be “administered”]

orally. Given these admissions, we must assume that

applicant’s vaccines can be prescribed for and used by the

ultimate consumer. Such consumers, although careful about

the medications that they use, may very well confuse the

source of an antiviral sold under the mark DENAVIR and a

vaccine sold under the mark DERMAVIR, or may even misrecall

the marks, since they are unfamiliar terms. Consumers do

not necessarily have the luxury of making side-by-side

comparisons between marks, and must rely upon their

imperfect recollections. Dassler KG v. Roller Derby Skate

Corporation, 206 USPQ 255 (TTAB 1980). A consumer to whom

18
Opposition No. 91124457

applicant’s DERMAVIR product has been proscribed may well

believe that the trademark is the same as that of the

DENAVIR product that he has seen advertised.

Moreover, as opposer has pointed out, there is a

concern that a pharmacist, getting a prescription over the

phone, would have trouble distinguishing between the marks

DENAVIR and DERMAVIR, or may have trouble deciphering the

marks in a handwritten prescription. Thus, although the

opposer’s and applicant’s products would not be purchased on

impulse, we find that this duPont factor favors opposer.

There is no evidence of actual confusion, but given

that there is no real information on the extent of

applicant’s use of its mark, which appears to still be in a

development stage, we find that this factor is neutral.

As stated previously, we have elected not to discuss

opposer’s evidence to which applicant has objected, but we

point out that if we did consider it, it would support

opposer on the factor of the strength and fame of its mark.

Finally, we note the well-established principle that,

if there are any doubts on the issue of likelihood of

confusion, they must be resolved against the newcomer and in

favor of the prior user. See San Fernando Electric Mfg. Co.

v. JFD Electronics Components Corporation, 565 F.2d 683,196

USPQ 1 (CCPA 1977); Fricks’ Foods, Inc. v. The Mar-Gold

Corporation, 163 USPQ 619 (CCPA 1969). Following that

19
Opposition No. 91124457

principle is all the more important where the products in

question are pharmaceuticals, where it is imperative that

even a slight possibility of confusion should be avoided.

In re Merck & Co., Inc., 189 USPQ 355 (TTAB 1975).

In view of the foregoing, we find that opposer has

established that if applicant were to use DERMAVIR on

vaccines and vaccine adjuvants, it would be likely to cause

confusion with opposer’s mark DENAVIR for antivirals.

Decision: The opposition is sustained.

20