IP Law Daily, TRADEMARK—TTAB: Registration of ALEMBIC PHARMACEUTICALS denied as confusable with ALEMBIC HERBALS, (Sep 15, 2022)

By Robert B. Barnett Jr., J.D.

The application also was rejected because the applicant failed to show use of the mark in commerce.

An application to register the mark ALEMBIC PHARMACEUTICALS for generic prescription drugs has been denied because of a likelihood of confusion with the existing mark ALEMBIC HERBALS for herbal medicines, the Trademark Trial and Appeal Board has ruled, in affirming the examining attorney’s decision. The fact that one product was FDA-approved medicines sold to pharmacies and the other was herbal medicines sold directly to consumers did not change the conclusion that the goods were “legally identical” and that consumers were likely to see products under the two similar marks as originating from the same source. The Board also affirmed the examining attorney’s rejection of the application on the additional ground that Alembic Pharmaceuticals had failed to establish that ALEMBIC PHARMACEUTICALS was anything more than a trade name and had not been used in commerce as a mark (In re: Alembic Pharmaceuticals, Inc., September 13, 2022, Shaw, T.).

Background. Alembic Pharmaceuticals, Inc. filed an application to register the mark ALEMBIC PHARMACEUTICALS for FDA-approved generic prescription drugs to treat a wide variety of conditions, including Alzheimer’s disease, depression, and epilepsy. The examining attorney denied the application on the likelihood of confusion with the existing mark ALEMBIC HERBALS for medicines that strengthen the immune system and restore normal bodily functions for a wide array of conditions.

The examining attorney also denied the application on the ground that Alembic Pharmaceuticals had failed to establish that ALEMBIC PHARMACEUTICALS had ever functioned as a trademark or had ever been used in commerce. Alembic Pharmaceuticals appealed the decision to the Board.

Likelihood of confusion. Examining the DuPont factors, the Board began with the similarity of the goods. Alembic Pharmaceuticals argued that the good were sufficiently dissimilar because Alembic Pharmaceuticals sold FDA-approved drugs while Alembic Herbals sold herbal remedies. The Board rejected the argument, noting that both entities sold medicines for treating a similar range of illnesses. Alembic Pharmaceuticals sold drugs to treat Alzheimer’s, inflammation, bronchoconstriction, erectile dysfunction, arthritic pain, and scalp psoriasis. These illnesses, the Board concluded, “are similar to, if not the same, as those treated by Registrant’s medicines, namely brain diseases, respiratory diseases and disorders, reproductive diseases and disorder, dermatological diseases and disorders, back pain, and inflammatory muscle diseases.”

As a result, the Board ruled, the two goods were “in-part legally identical.” The cited registration did not limit its medicines to herbal products sold over the counter without a prescription, nor did it limit itself to those medicines not accepted in the licensed medical community or not FDA approved. Thus, both groups of medicines were presumed to be similar.

Turning to the “similar trade channels” factor, the Board rejected the argument that different trade channels were used because the Applicant sold to pharmacies and drug wholesalers while the Registrant sold directly to consumers. Once the goods have been determined to be in-part legally identical, the Board noted, a presumption exists that the channels of trade and classes of purchasers are the same (In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012)).

Thus, the Board ruled that the similarity of goods, trade channels, and class of consumers are weighed in favor of a finding of a likelihood of confusions.

Similarity of the marks. The Board then concluded that the similarity of the marks also favored a finding of a likelihood of confusion, primarily because of the existence of ALEMBIC as the first word in both marks. An “alembic” is an apparatus of glass or metal formerly used for distilling. Both marks used that word to convey that definition, and, in both marks, ALEMBIC was the dominant word.

The Board rejected the Applicant’s argument that the marks were dissimilar because one mark followed ALEMBIC with PHARMACEUTICALS while the other followed it with HERBALS, which indicated different ingredients. Rather than serve to differentiate the two marks, the Board concluded, the use of the same first word combined with a different second word was likely to make consumers believe that pharmaceuticals and herbals were being supplied from the same source under two marks. As a result, the Board ruled that “the marks are very similar, particularly in connotation and commercial impression.”

Purchasing conditions. The examining attorney and the Board both agreed with the Applicant that the Applicant’s purchasers were more sophisticated than the average consumer. But such a conclusion, the Board noted, did not render the product immune from source confusion. Also, because of the nature of the goods, consumers were likely to engage in a higher-than-ordinary degree of care when purchasing the product. Nevertheless, the Board concluded that on balance this factor weighed against a finding of a likelihood of confusion.

Other factors. The Board ruled that all remaining DuPont factors were neutral.

Conclusion. Balancing all the factors, the Board agreed with the examining attorney that a likelihood of confusion existed because the marks were in-part identical, the trade channels and classes of purchases were identical, and the marks were similar in sound, meaning, and commercial impression. Those three factors outweighed the consumer sophistication factor.

Thus, the Board ruled that registration of the mark was properly rejected. The Board then turned to the second ground for rejected the application, which involved a failure to prove use of the mark in commerce.

Trade name. To establish that the mark was used in commerce, the Applicant supplied three pieces of evidence: (1) a printer’s proof for product packaging, (2) pictures of product packaging for pill bottles, capsules and boxes, and (3) web page excerpts from the Applicant’s corporate profile. The Board agreed with the examining attorney that none of those three pieces of evidence established, first, a mark separate from a trade name and, second, use of the mark in commerce.

Turning first to the two pieces of evidence involving product packaging, the Board noted that nowhere on the packaging did the product name “Alembic Pharmaceuticals” appear. At the bottom of one of the packages, the name appeared in bold but it was “Alembic Pharmaceuticals, Inc.,” just before a mailing address. On another package, only the name “Alembic” appeared. The Board concluded, therefore, that the Applicant had used the proposed mark as a trade name only, after applying the factors outlined in In re Univar Corp., 20 USPQ2d 1865, 1869 (TTAB 1991). The evidence failed to establish that the term had ever been used as a trademark for its drug products.

As for the web page excerpt, the Board agreed with the examining attorney that the excerpts constituted advertising, which was “unacceptable as specimens for goods.” In any event, the Board noted, the evidence offered was “woefully vague” and only provided general information about the products. Nothing on any of the excerpts indicated that the Applicant had sold products using the mark ALEMBIC PHARMACEUTICALS.

The Board, therefore, affirmed the examining attorney’s rejection of the application, both on likelihood-of-confusion grounds and a failure to establish that the goods had been sold using the mark.

The Case is Serial No. 88660605.

Attorneys: Albert H. Manwaring, IV (Morris James LLP) for Alembic Pharmaceuticals, Inc. Chioma “Bata” Oputa for the USPTO.

Companies: Alembic Pharmaceuticals, Inc.

Cases: Trademark USPTO