US: the need for medical prescription doesn’t avoid the risk of confusion between pharma trademarks

Symbole copyrightIn a recent decision (1), the Trademark Trial and Appeal Board (TTAB) sustained an opposition requesting the rejection of the trademark EPI-KEY based on a likelihood of confusion with the trademark EPIPEN.


The TTAB is a body within the United States Patent and Trademark Office (USPTO) responsible for hearing and deciding certain kinds of cases involving trademarks. More specifically, the Trademark Trial and Appeal Board decides adversary proceedings involving notably oppositions to the registration of trademarks and petitions to cancel trademark registrations.


The main point to emphasize in this decision is the rejection of the applicant’s argument that any risk of confusion can be avoided by the need that the medicines be prescribed by a doctor.
Both marks were used for medical treatment of allergies with epinephrine. The Board found plausible that the patient requests the wrong device to his doctor thinking it was the other one. Patients and even physicians can also have the mistaken belief that both medicines are manufactured by the same company.


So, even if the products are prescribed by professional intermediaries there may still be a risk of confusion between two marks.


(1)    Mylan, Inc. v. Beaufort County Allergy, opposition No. 91195868 (USPTO TTAB June 19, 2013)