trademark review | august 2012

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VOLUME 2 | ISSUE 3 MARCH 2012 VOLUME 2 | ISSUE 8 AUGUST 2012 Bayer Loses Trademark Fight Over Herbicide/Pesticide Marks The U.S. District Court for the Southern District of New York ruled that plaintiff Aceto’s “Profine 75” name did not infringe Bayer’s “Proline” trademark. The court found that farmers are not likely to confuse “Profine 75” for herbicide products with “Proline” plant disease treatment despite the similarities in sight and sound. First, farmers rely on expert advice when choosing pesticide product and carefully select, purchase and apply their pesticide products. Second, both products require reading the product labels before applying the product. The court also relied on significant differences in the packaging color and format. Thus, the court found it would be difficult for consumers to fail to notice the difference between the products. Aceto Agricultural Chemicals Corp. v. Bayer Aktiengesellschaft et al. (S.D.N.Y. July 30, 2012). The TTAB Finds Confusion Despite Sophistication of the Consumers Although the outcome in this case is not surprising, it highlights some important practice tips. The Trademark Office rejected Vibrynt’s application to register PREVAIL for “medical devices, namely, abdominal implants and delivery systems therefor” based on an earlier registration for PEEK PREVAIL for “surgical implants comprising artificial material.” In response, the applicant introduced evidence of third-party registrations, common law uses, business names and one website all involving PREVAIL for medical or healthcare goods and/or services. The applicant failed, however, to include any evidence of the extent of use of PREVAIL by third parties. The Trademark Trial and Appeal Board (TTAB) called this failure a “critical infirmity in applicant’s evidence.” In the absence of evidence to corroborate the extent of the third party uses, such as use on the Internet, evidence of advertising, availability in the marketplace, etc., the Board gave the applicant’s evidence only minimal probative value. Further, the applicant argued that registrant’s goods are limited to orthopedic implants, which the Board found to be “ill founded.” In Board proceedings, likelihood of confusion is determined on the basis of the goods as they are identified in the application and the cited registration, regardless of what the goods or services might be in the marketplace. In this case, the goods in the cited registration were not limited to any particular type of surgery and thus, the Board presumed the implants are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. In conclusion, the Board held that, although the purchasers were sophisticated, the similarity between the marks and the goods, and the presumption that the goods move in the same channels of trade and are sold to the same classes of purchasers were enough to find a likelihood of confusion. In re Vibrynt, Inc., TTAB July 20, 2012. In This Issue Bayer Loses Trademark Fight Over Herbicide/Pesticide Marks The TTAB Finds Confusion Despite Sophistication of the Consumers

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The Trademark Review is a monthly newsletter prepared by Knobbe Martens attorneys covering relevant and current issues in trademark law . In this Issue: "Bayer Loses Trademark Fight Over Herbicide/Pesticide Marks" "The TTAB Finds Confusion Despite Sophistication of the Consumers"

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Page 1: Trademark Review | August 2012

VOLUME 2 | ISSUE 3 MARCH 2012

Trademark Review

VOLUME 2 | ISSUE 8 AUGUST 2012

Bayer Loses Trademark Fight Over Herbicide/Pesticide MarksThe U.S. District Court for the Southern District of New York ruled that plaintiff Aceto’s “Profine 75” name did not infringe Bayer’s “Proline” trademark. The court found that farmers are not likely to confuse “Profine 75” for herbicide products with “Proline” plant disease treatment despite the similarities in sight and sound. First, farmers rely on expert advice when choosing pesticide product and carefully select, purchase and apply their pesticide products. Second, both products require reading the product labels before applying the product. The court also relied on significant differences in the packaging color and format. Thus, the court found it would be difficult for consumers to fail to notice the difference between the products. Aceto Agricultural Chemicals Corp. v. Bayer Aktiengesellschaft et al. (S.D.N.Y. July 30, 2012).

The TTAB Finds Confusion Despite Sophistication of the ConsumersAlthough the outcome in this case is not surprising, it highlights some important practice tips. The Trademark Office rejected Vibrynt’s application to register PREVAIL for “medical devices, namely, abdominal implants and delivery systems therefor” based on an earlier registration for PEEK PREVAIL for “surgical implants comprising artificial material.” In response, the applicant introduced evidence of third-party registrations, common law uses, business names and one website all involving PREVAIL for medical or healthcare goods and/or services. The applicant failed, however, to include any evidence of the extent of use of PREVAIL by third parties. The Trademark Trial and Appeal Board (TTAB) called this failure a “critical infirmity in applicant’s evidence.” In the absence of evidence to corroborate the extent of the third party uses, such as use on the Internet, evidence of advertising, availability in the marketplace, etc., the Board gave the applicant’s evidence only minimal probative value. Further, the applicant argued that registrant’s goods are limited to orthopedic implants, which the Board found to be “ill founded.” In Board proceedings, likelihood of confusion is determined on the basis of the goods as they are identified in the application and the cited registration, regardless of what the goods or services might be in the marketplace. In this case, the goods in the cited registration were not limited to any particular type of surgery and thus, the Board presumed the implants are marketed in all normal trade channels for such goods and to all normal classes of purchasers for such goods. In conclusion, the Board held that, although the purchasers were sophisticated, the similarity between the marks and the goods, and the presumption that the goods move in the same channels of trade and are sold to the same classes of purchasers were enough to find a likelihood of confusion. In re Vibrynt, Inc., TTAB July 20, 2012.

In This Issue• Bayer Loses Trademark Fight Over Herbicide/Pesticide Marks

• The TTAB Finds Confusion Despite Sophistication of the Consumers

Page 2: Trademark Review | August 2012

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Over 95% of our litigators hold technical degrees, including electrical engineering, computer science, mechanical engineering, chemistry, chemical engineering, biochemistry, biology, and physics. Many of our litigators are former Federal Circuit or district court clerks. With eight offices, Knobbe Martens represents clients in all areas of intellectual property law.• Exclusive practice in the area of intellectual property since 1962 • More than 250 lawyers, many of whom have advanced degrees in various technologies• Internationally recognized leaders in IP across a vast spectrum of technology areas

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© 2012 Knobbe Martens Olson & Bear LLP, a Limited Liability Partnership including Professional Corporations. All rights reserved. The information contained in this newsletter has been prepared by Knobbe, Martens, Olson & Bear, LLP and is for general informational purposes only. It does not constitute legal advice. While every effort has been made to ensure the accuracy of the information contained in this newsletter, Knobbe Martens Olson & Bear LLP does not guarantee such accuracy and cannot be held liable for any errors in or any reliance upon this information. Transmission of this newsletter is neither intended nor provided to create an attorney-client relationship, and receipt does not constitute an attorney-client relationship. You should seek professional counsel before acting upon any of the information contained in this newsletter.

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