One area of dispute between pharmaceutical companies
is marks for over the counter (OTC) products.
There is often an OTC branded product that is well known to the
consumer. Generic companies try to make
their generic OTC product look the same, and have a name that is as similar as
possible to the branded product, so that the consumer would readily associate
the generic as an alternative to the branded product.
A mark cannot be registered with the USPTO if it so
resembles a registered mark as to be likely to cause confusion. The following two factors are key
considerations in any likelihood of confusion determination: 1) The similarity
or dissimilarity of the marks in their entirety as to
appearance, sound, connotation and commercial impression; 2) The relatedness of
the goods or services as described in the application and registration(s).
A generic company is in a difficult position since
the mark that it chooses should ideally have some similarity to the branded product to
take sales from the branded product, and yet be sufficiently dissimilar to
avoid a likelihood of confusion. Picking
such a mark is made more complicated by the fact that the generic product is identical
to the branded product, so the second factor of the test, relatedness of the
goods, will always be a factor against the generic company.
A popular OTC product is the allergy drug that is
sold under the name ZYRTEC. Walgreen
named the generic version of its ZYRTEC product WAL-ZYR, borrowing the first
three letters of the name ZYRTEC to clearly convey to consumers that the
product is a generic version of ZYRTEC.
After the examiner allowed the WAL-ZYR mark, McNeil, the owner of ZYRTEC,
filed an opposition.[1] The TTAB (Trademark Trial & Appeal Board)
sided with McNeil, finding the mark ZYRTEC to be “strong” and “distinctive:”
Applicant’s mark combines the first portion, WAL, of
its house mark WALGREENS with the distinctive first portion, ZYR, of opposer’s
fanciful mark ZYRTEC. Certainly, if the ZYR portion is recognized as referring
to ZYRTEC, as applicant intends, an appreciable number of consumers could
believe some sort of sponsorship or affiliation exists between the two sources
where they have taken the first and most prominent portion of the respective
marks to create a combined mark identifying both of them. Whatever applicant’s intent was, such
affiliation goes beyond merely “calling to mind” a prior user’s mark. See Am.
Express Co. v. Payless Cashways, Inc., 222 USPQ 907 (TTAB 1984); Jacobs v.
Int’l Multifoods Corp., 212 USPQ 641 (CCPA 1982). We find that because ZYRTEC
is a strong mark, applicant’s incorporation of the distinctive first portion of
the mark creates a substantially similar mark to opposer’s previously-used
mark.
The fall of WAL-ZYR, however, does not mean that a
generic company cannot borrow at least some portion of the branded mark. The other generic ZYRTEC product, named ALLER-TEC
(Reg. No. 3537949), has been
registered since 2008 and is currently sold by Costco under the Kirkland
brand. No opposition was filed for the ALLER-TEC
mark.
The ALLER-TEC mark uses the less distinctive portion
of the ZYRTEC mark. The “tec” portion is
not as distinctive as the “Zyr” portion.
The success of ALLER-TEC and the failure of WAL-ZYR illustrate that a
generic company can use a less distinctive portion of the branded mark in its mark
without causing a likelihood of confusion among consumers.
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