First published February 14, 2013.
I have no problem using the TTABlog for a blog launching point every week. Why would I when I can riff on a post such as this one, about an important decision involving the LIKELIHOOD OF CONFUSION between a “nationally advertised brand” — Zyrtec, the allergy medication — and a store brand, in this case Walgreens’ WAL-ZYR:
The Board sustained this Section 2(d) opposition to registration of the mark WAL-ZYR for ““pharmaceuticals, namely, allergy medications,” finding the mark likely to cause confusion with the previously-used mark ZYRTEC for allergy medications. It found ZYRTEC to be a strong mark, the goods identical, the channels of trade and classes of customers the same, the mark similar, and the purchasing decisions to be less than highly sophisticated. Walgreen’s survey evidence was deemed not sufficiently probative to affect the result. McNeil-PPC, Inc. v.Walgreen Co., Opposition No. 91184978 (January 22, 2013) [not precedential].. . .The purchasers of these over-the-counter products are “ordinary consumers with no special knowledge or expertise,” [the Board found,] and although they may spend time confirming the particular uses for the products, that does not mean they are immune from source or sponsorship confusion. So the Board found this factor to be neutral.
Turning to the marks, the Board noted once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. The Board found that Walgreen’s incorporation of the distinctive first portion of Opposer’s mark with the first portion of its house mark “creates a substantially similar mark to opposer’s previously-used mark.” An appreciable number of consumers could believe that “some sort of sponsorship or affiliation exists between the two sources where [applicant has] taken the first and most prominent portion of the respective marks to create a combined mark identifying both of them.”
In short, the Board found that the similarities in appearance, sound, connotation and overall commercial impression outweigh the dissimilarities.
As I have said before, I am fascinated with this topic. In this case, I find the Board’s ruling hard to understand. As many of the commenters to John’s posts acknowledge, these products are routinely placed side-by-side on the store shelves — an important consideration when considering generic knockoffs, as I discuss here. Given what’s really going on on those shelves, which is that these generic versions of every single pharmaceutical are juxtaposed against the famous version, making source confusion unlikely.
Here’s what really bothers me: This is a Section 2(d) opposition. That means that Walgreens could not register the trademark WAL-ZYR because it is confusingly similar to the trademark ZYRTEC. As Kevin Grierson says in the comments at the TTABlog, “Here, with just a standard character mark . . . [I] don’t think Wal-Zyr and Zyrtec look or sound all that much alike.” They don’t, of course.
This is not an infringement case involving trade dress. It was a question of whether the standard word mark WAL-ZYR is confusingly similar to the senior, registered ZYRTEC. Yes, they are identical products. Yes, they are sold in the same commercial channels. Yes, Walgreens clearly intended to to take advantage of the “ZYR” combination, which is a prominent part of the ZYRTEC mark.
But ZYR is not a trademark itself. Read More…