Offc Action Outgoing

Applicant has appealed the Examining Attorney’s Final Refusal to register the mark PsoriaStat for “antifungal solution for medical use, namely, antifungal solution for treatment of fungal conditions associated with psoriasis” on the grounds of a likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).

I. FACTS

Applicant applied to register the mark PsoriaStat on the Principal Register for “antifungal solution for medical use, namely, antifungal solution for treatment of fungal conditions associated with psoriasis.” Registration was refused under Trademark Act Section 2(d), 15 U.S.C. § 1052(d) because of a likelihood of confusion with U.S. Registration No. 2,689,045 for the mark PsoriastatPE2 for “natural pharmaceutical preparation for the treatment of psoriasis and eczema.” This appeal follows the Examining Attorney’s Final Refusal on this issue.

II. ARGUMENT

BECAUSE THE MARKS OF THE APPLICANT AND REGISTRANT ARE HIGHLY SIMILAR AND THE GOODS ARE CLOSELY RELATED, THERE EXISTS A LIKELIHOOD OF CONFUSION, MISTAKE, OR DECEPTION UNDER SECTION 2(d) OF THE TRADEMARK ACT.

Taking into account the relevant Du Pont factors, a likelihood of confusion determination

involves a two-part analysis. First, the marks must be compared for similarities in appearance,

sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d

1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services must be compared to

determine whether they are similar or related or whether the activities surrounding their marketing

are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222

USPQ 638 (TTAB 1984).

A. THE MARKS ARE EXTREMELY SIMILAR

The applicant’s mark, PsoriaStat in stylized form, is highly similar to the registrant’s mark,

PsoriastatPE2 in stylized form. The applicant has merely deleted the PE2 portion of the

registrant’s mark. The mere deletion of wording from a registered mark is not sufficient to

overcome a likelihood of confusion under Section 2(d). See In re Optical Int’l, 196 USPQ 775

(TTAB 1977). Applicant’s mark does not create a distinct commercial impression because it

contains the same common wording as registrant’s mark, and there is no other wording to

distinguish it from registrant’s mark. Applicant has argued that the capitalization of the letter S in

its mark gives it a separate and distinct commercial impression when compared to the Registrant’s

mark in which the s appears in lower case form. However, this minimal difference in stylization

clearly does not obviate the similarity between the marks. See Coca-Cola Bottling Co. v.

Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP

§1207.01(c)(ii).

The marks are compared in their entireties under a Section 2(d) analysis. Nevertheless, one

feature of a mark may be recognized as more significant in creating a commercial impression.

Greater weight is given to that dominant feature in determining whether there is a likelihood of

confusion. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); TMEP

§1207.01(b)(viii). The registrant’s mark is comprised of the coined term Psoriastat which suggests

a product that will treat psoriasis quickly combined with the suggestive term PE2 which

indicates that the product that will be effective in treating both psoriasis and eczema. Because it is

the foremost term, Psoriastat is clearly the dominant portion of the registrant’s mark.. Furthermore,

the applicant’s mark is comprised entirely of the dominant portion of the registrant’s mark, thus

rendering the marks similar in appearance, sound, connotation and overall commercial impression.

B. THE GOODS ARE CLOSELY RELATED

The applicant’s goods are “anti-fungal solution for medical use, namely, anti-fungal solution for treatment of fungal conditions associated with psoriasis.” The registrant’s goods are a “natural pharmaceutical preparation for the treatment of psoriasis and eczema.” The relatedness of the goods is evidenced by the respective identifications of goods. Nonetheless, the applicant has argued that confusion is unlikely because its goods are used to treat fungal conditions associated with psoriasis rather than psoriasis itself. Evidence of the relatedness of the goods in the form of copies of third-party of registrations that include both anti-fungal preparations and preparations used to treat psoriasis in their identification of goods was made of record via the Final Office Action of 9/14/05. For example, a copy of U.S. Registration No. 2,919,881 for the mark ALVA was made of record. This registration includes both “anti-fungal preparations” and “medicated grooming preparations for controlling symptoms of psoriasis” in its identification of goods. Likewise, U.S. Registration No. 2,270,330 for the mark BIAFINE includes “medicated skin care creams and lotions for … antifungal use, … psoriasis, etc.” As the respective goods are used to treat psoriasis or conditions associated with the disease, they are also likely to be applied by the same class of consumer sequentially or perhaps even simultaneously. While the relatedness of the goods in this case is plainly evident from the identifications of the goods and the evidence or record, it should also be noted that that courts and scholarly authorities have long recognized a “doctrine of greater care” in pharmaceutical cases. See Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980). Because of the potential danger associated with mistaking one pharmaceutical product for another, courts have allowed a lower threshold of proof of confusing similarity for drugs and medicinal preparations.

C. Constructive Abandonment Argument – Collateral Attack Prohibited

It should be noted that the applicant’s primary argument in a request for reconsideration of the

Final Refusal in this case was that the registrant is no longer using the PsoriastatPE2 mark.

Applicant’s argument that the registration owner of the cited mark has abandoned its trademark is

information relevant to a formal cancellation proceeding and is not appropriate matter for ex parte

examination. TMEP §1207.01(d)(iv). Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b),

provides that a certificate of registration on the Principal Register shall be prima facie evidence of

the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s

exclusive right to use the mark in commerce in connection with the goods or services specified in

the certificate. During ex parte prosecution, an applicant will not be heard on matters that

constitute a collateral attack on the cited registration such as a registrant’s nonuse of the mark. In

re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988). Nevertheless, the fact

remains that U.S. Registration No. 2,689,045 is still a valid, live and active trademark registration.

III. CONCLUSION

For the foregoing reasons, the refusal to register the mark under Section 2(d) of the Trademark

Act should be affirmed.

Respectfully submitted,

/Ronald McMorrow/

Examining Attorney

Law Office 105

(571) 272-9306

Thomas G. Howell

Managing Attorney

Law Office - 105