Specialty Pharmacy Mgmt. v. Walgreen Co.

• Decision Date: 15 September 2021
• Docket Number: Opposition 91236453
• Parties: Specialty Pharmacy Management, LLC v. Walgreen Co.
• Court: Trademark Trial and Appeal Board

Specialty Pharmacy Management, LLC v. Walgreen Co.

Opposition No. 91236453

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 15, 2021

THIS OPINION IS NOT A PRECEDENT OF THE TTAB

Ellen S. Simpson of Simpson & Simpson PLLC, for Specialty Pharmacy Management, LLC.

Tamara A. Miller, Michelle Zimmerman, and Laura Schaefer, of Leydig Voit & Mayer Ltd., for Walgreen Co.

Before Cataldo, Taylor, and Lebow, Administrative Trademark Judges.

OPINION

Lebow Administrative Trademark Judge

Walgreen Co. ("Applicant") seeks registration of the mark ALLIANCERX WALGREENS PRIME, in standard characters, on the Principal Register for:

Retail drug store services; retail pharmacy services; retail pharmacy services featuring specialty pharmaceuticals; retail pharmacy services featuring specialty pharmaceuticals provided via the Internet; retail pharmacy services featuring retrospective drug utilization review programs; specialized retail pharmacy services for patients with particular medical conditions; mail order services via a global computer network featuring pharmacy products and retail pharmacy services and medical supplies, in International Class 35;

Educational services, namely, providing courses in the fields of health and wellness; providing medication administration and health and wellness education services through live printed, telephonic, and online classes and instruction educational services, namely, providing lectures, seminars and individual training for patient self-care of chronic disease states, in International Class 41; and

Healthcare and medical services, namely, infusion therapy services; injectable therapies, ambulatory care and nursing care services; rental of medical equipment; dispensing of specialty pharmaceuticals; healthcare services, namely, reporting of results relating to clinical programs, therapy management programs, and disease management programs; interactive medical monitoring and alert services for reminding clients of medical information, namely, medicinal dosages, allergic sensitivity and prescription refills clinical pharmacy services, namely, preparing and dispensing home infused medication; prescription refill reminder services; web-based health assessment services, namely, a series of health-related questions for response from the user that result in a report that provides health-related information in the form of recommended education resources and treatment information, in International Class 44.^[1]

Specialty Pharmacy Management, LLC ("Opposer") has opposed registration of Applicant's mark, asserting priority and likelihood of confusion with its registered marks RELIANCE RX (in standard characters)^[2] and the composite mark RELIANCE/RX SPECIALTY PHARMACY YOU CAN RELY ON and (Image Omitted) Design,, ^[3] under Section 2(d) of the Trademark Act, 15 1U.S.C. § 1052(d).^[4] Both registrations identify the following services:

Specialty pharmacy services, namely, distributorship services in the field of special purpose high-cost, infusion-based, injectable and oral pharmaceuticals featuring the provision of pharmaceuticals ordered by health care providers for use by health benefit plan subscribers; administering pharmacy reimbursement programs and services in the field of specialty pharmaceuticals for health benefit plan subscribers, in International Class 35; and

Specialty pharmacy services, namely, dispensing of special purpose pharmaceuticals, namely, infusion, injectable, and oral therapies, to health care providers for use by health benefit plan subscribers, in International Class 44.

Opposer also claims prior common law use of its marks for the same services.^[5]

Applicant denied the salient allegations in its amended answer to the notice of opposition, and counterclaimed to cancel the '886 Registration for the standard character mark RELIANCE RX on the ground that the underlying intent-to-use application for that registration (application Serial No. 85062516, "the '516 Application") was improperly assigned during prosecution, in violation of Section 10(a)(1) of the Trademark Act, 15 U.S.C. § 1060(a)(1), thus rendering the application and resulting registration void.^[6]

Opposer denied the salient allegations in its answer to the counterclaim, and raised a prior registration ("Morehouse") defense: "Applicant will not be damaged by the continued existence of [the '886 Registration] for the mark RELIANCE RX because Opposer owns the '300 Registration "for the substantially same mark for use in association with identical services to those set forth in [the '886 Registration] owned by Opposer."^[7]

The case is fully briefed. After carefully reviewing all of the evidence and arguments presented, we dismiss both the opposition and counterclaim.

I. The Record

The evidentiary record in this case consists of the pleadings, the files of the Application and the '886 Registration by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following evidence, comprising more than 5, 000 pages of testimony and documents, made of record by the parties during their respective testimony periods:

A. Opposer's Trial Evidence

• Notice of Reliance on Opposer's Registrations including copies of the registration certificates and printouts from the USPTO's TESS database showing the current status and title of the registrations.^[8]

• Notices of Reliance on the discovery depositions of Applicant's 30(b)(6)-designated witnesses: Melissa Pitsoulakis, Applicant's Director of Brand and Patient Experience;^[9] Crystal Fouchard, Applicant's Senior Director of Brand Marketing;^[10] and Joel Wright, CEO of Walgreens Specialty Pharmacy Holdings LLC (d/b/a AllianceRx Walgreens Prime).^[11]

• Notice of Reliance on Applicant's objections and responses to Opposer's first set of interrogatories, ^[12] and first requests for admission. ^[13]

• Notice of Reliance on Internet articles, pages from Opposer's and Applicant's websites, and Google search results.^[14]

• Testimony depositions of John Rodgers, Executive Vice President and Chief Operating Officer of Independent Health Association, Inc.;^[15] and Amy Nash, President of Opposer.^[16]

B. Applicant's Trial Evidence

• Notice of Reliance on Opposer's responses to Applicant's first and second set of interrogatories, and first requests for admission.^[17]

• Notice of Reliance on other registrations owned by Applicant, including copies of the registration certificates and TESS database status printouts.^[18]

• Notices of Reliance on third-party registrations, including copies of registration certificates, TESS database status printouts, and Internet evidence of marks containing the terms RELIANCE, RELIANT, ALLIANCE and/or RX, for healthcare-related goods and/or services.^[19]

• Notice of Reliance on Internet evidence relating to use of Applicant's WALGREENS mark.^[20]

• Notice of Reliance on Walgreens Boots Alliance, Inc.'s Form 10-K filings for fiscal years 2017 and 2019.^[21]

• Notices of Reliance on third-party registrations for marks including the term PRIME and owned by Prime, including copies of registration certificates, TESS database status printouts, and Internet evidence related thereto;^[22] and on various Internet articles, ^[23] and dictionary definitions of the terms RELIANCE, ALLIANCE, and RX.^[24]

• Notices of Reliance on portions of the discovery depositions of Amy Nash^[25] and John Rodgers.^[26]

• Testimony depositions of Applicant's witnesses: Laura Terry, Vice President of Marketing at Prime Therapeutics, LLC;^[27] Joel Wright;^[28]Melissa Pisoulakis;^[29] and Crystal Fouchard.^[30]

C. Opposer's Rebuttal Evidence

1. Rebuttal testimony declaration of John Rodgers.^[31]

1. Notice of Reliance on pages from Opposer's website.^[32]

2. Notices of Reliance on USPTO TESS database search results, copies of third-party registrations, and Internet printouts regarding the marks in those registrations;^[33] printouts from Applicant's Facebook page, and the Better Business Bureau;^[34]and a news article.^[35]

D. Applicant's Rebuttal Evidence on Counterclaim

1. Cross-examination of John Rodgers.^[36]

II. Preliminary Issues

A. Opposer's Over-designation of Evidence as Confidential

The parties filed a Stipulated Protective Order in place of the Board's Standard Protective Order, which the Board approved.^[37] The parties were advised that only confidential or trade secret information should be filed pursuant to a stipulated protective agreement, and that such an agreement may not be used as a means of circumventing Trademark Rules 2.27(d) and (e), which provide that the file of a published application or issued registration, and all proceeding filings relating thereto, should otherwise be available for public inspection.^[38]

Having carefully reviewed the evidence, it is clear to us that much of what Opposer designated as "confidential," is not in fact truly confidential. By way of example, Opposer designated as confidential significant portions of the testimony of its main witness, John Rodgers, including his testimony regarding Opposer's ultimate parent company Independent Health Association, Inc.'s ("IHA") decision to assign the intent-to-use application for the mark RELIANCE RX to Opposer, which matured into the '886 Registration that is the subject of Applicant's counterclaim; whether IHA ever used the mark itself; and the manner of its control and management of Opposer's activities.^[39]

Board proceedings are designed to be public, and the improper designation of material as confidential thwarts that objective. Respondent's over-designation of testimony and evidence as confidential and commercially sensitive leaves us uncertain as to what is intended to be truly confidential or a trade secret. It is more difficult...