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"

1. VOLUME 2 | ISSUE 3 MARCH 2012
Trademark Review
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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