A pharmaceutical company named after the Lupine flower was successful in a recent trademark opposition before the U.S. Trademark Trial and Appeal Board.

Background.  In Lupin Pharmaceuticals, Inc. v. Ampel, LLC, the Applicant had filed for registration of the mark LuPPiN (in stylized characters) for education services and support groups pertaining to medical treatments for lupus in Classes 41 and 45.  Lupin Pharmaceuticals opposed the application, relying on its prior registrations of LUPIN and LUPIN and Design for a wide variety of pharmaceutical preparations and goods in International Class 05.  Although Applicant raised certain affirmative defenses it did not file any counterclaims to cancel Opposer’s registrations in whole or in part.  The Opposer had the burden of establishing standing, priority, and a likelihood of confusion on its claim.

Analysis.  Opposer successfully established its standing and priority by introducing its LUPIN registrations that were pre-dated Ampel’s application.  With regard to a likelihood of confusion, the Board analyzed the du Pont factors used to determined whether a likelihood of confusion exists between two trademarks.  Although the du Pont factors include thirteen different criteria, the Board often focuses on two primary factors, as it did here.  These are similarity of the parties’ trademarks and the similarity of the parties’ goods and services.  The Board also referenced three-other factors of interest:  similarity of the parties’ trade channels; the conditions under which sales are made; and the fame of the Opposer’s pleaded trademarks.

The Board found that the parties’ marks were similar in sight, sound, and meaning.  This factor weighed in Opposer’s favor.  It also found that the parties’ respective goods and services were related as pharmaceutical companies often provide education and support group services to affected patients and their families.  Here, it did not matter that Opposer did not presently engage in such services.  The issue is what relevant consumers would be likely to think based on common industry practice.  The Board also ruled that the parties’ trade channels were sufficiently similar based on the parties’ respective identification of goods and services as written.  Finally, with regard to the sophistication of purchasers, the Board held that this factor favored Applicant.  This is because consumers of pharmaceutical products are likely to exercise greater care in their purchasing decisions.

Result:  The totality of relevant likelihood of confusion factors resulted in judgment if favor of Opposer.