Syntex Laboratories, Inc. v. Norwich Pharmacal Co.

• Decision Date: 30 June 1970
• Docket Number: No. 69 Civ. 4687.,69 Civ. 4687.
• Parties: SYNTEX LABORATORIES, INC., Plaintiff, v. The NORWICH PHARMACAL COMPANY, Defendant.
• Court: U.S. District Court — Southern District of New York

315 F. Supp. 45

SYNTEX LABORATORIES, INC., Plaintiff, v. The NORWICH PHARMACAL COMPANY, Defendant.

No. 69 Civ. 4687.

United States District Court, S. D. New York.

June 30, 1970.

COPYRIGHT MATERIAL OMITTED

Weil, Lee & Bergin, New York City, for plaintiff; Alfred T. Lee, New York City, of counsel.

Bradford S. Allen, Norwich, N. Y., for defendant.

MANSFIELD, District Judge.

In this trademark infringement suit brought by the owner of the mark Vagitrol to prevent defendant's use of the mark Vagestrol on a similar prescription drug, plaintiff has moved for summary judgment or, in the alternative, for preliminary injunctive relief pending trial of its claims. Defendant's prior motion to change venue to the Northern District of New York, filed with its answer, is now countered by plaintiff's additional motion for a change of venue to the Central District of California. Plaintiff's motion for preliminary injunctive relief is granted. Its motion for summary judgment and the motions for a change of venue are denied.

Plaintiff's mark Vagitrol was originally adopted in early 1963 by Provident Pharmaceuticals, Inc., a Tennessee corporation, for use on a sulfanilamide prescription drug in cream form intended for the treatment of various vaginal infections (e. g., bacterial vaginitis and cervicitis) by internal application in the vaginal tract. Pursuant to an application filed on September 23, 1963, the Patent Office issued Registration No. 770,263 to Provident Pharmaceuticals on May 26, 1964, for such use of the Vagitrol mark.

During the year 1964 Provident was merged into Reid-Provident Laboratories, Inc., a Georgia corporation, to which it assigned all rights in the Vagitrol mark. Reid-Provident thereafter continued production of the Vagitrol product in modest quantities for distribution and sale primarily in a 12-state area in the southeastern part of the country, achieving a sales volume of $61,068 during the period 1968-69.

In early 1969 plaintiff Syntex Laboratories, a national drug manufacturer incorporated in Delaware with principal offices in Palo Alto, California, entered into negotiations with Reid-Provident for the purchase of the Vagitrol product and registered trademark. These negotiations culminated in an assignment of all rights in the mark and product to Syntex on April 10, 1969, subject to certain limited rights in Reid-Provident to continue manufacture and to sell off its inventory of the product during the transition period before Syntex began actual manufacture and distribution of the Vagitrol cream. Syntex commenced shipping the product to the drug trade on September 23, 1969, and is currently distributing and promoting sales of Vagitrol cream on a nationwide basis.

Sometime in the latter part of 1968, the Eaton division of defendant Norwich Pharmacal Company, a national drug manufacturer incorporated in Delaware with principal offices in Norwich, New York, began consideration of a trademark for use on a form of suppository to be used for the treatment of atrophic vaginitis through replenishment of the diethylstilbestrol estrogen, or female hormone. A preliminary search of the current pharmaceutical reference books revealed plaintiff's mark Vagitrol, as well as a number of other marks employing the "vag-" prefix. After a subsequent, more formal trademark search had been completed, the word Vagestrol was adopted by Eaton for use on its suppositories on January 24, 1969, by a shipment in interstate commerce to physicians conducting clinical investigations of the product.

On March 17, 1969, Eaton filed an application for registration of the word Vagestrol for use on "an ethical pharmaceutical estrogen suppository for vaginal use." Three months later, on June 17, the Patent Office refused registration of the word on grounds of a confusing resemblance to plaintiff's Vagitrol mark. Eaton promptly responded, setting forth its arguments for concurrent registration of the Vagestrol and Vagitrol marks, and continued with its plans to market the Vagestrol suppositories. National promotion, advertising and distribution of the product were initiated on September 2, 1969.

Eight days after the filing of Eaton's application for registration of the Vagestrol mark, on March 25, 1969, Reid-Provident wrote to Eaton pointing out its own registration of the Vagitrol mark and requesting Eaton to refrain from further use of the word Vagestrol. Eaton replied that the products were different, and that the connotations and pronunciation of the two names (it being claimed that Vagitrol was accented on the first syllable and Vagestrol on the second) were sufficiently distinct to obviate any danger of confusion between them. Continued correspondence, first with Reid-Provident and later with Syntex, failed to persuade defendant to forego use of the Vagestrol mark, and following defendant's national marketing of the Vagestrol product plaintiff filed this suit on October 27, 1969. Defendant thereupon requested the Patent Office to suspend further consideration of its application for registration of the Vagestrol mark, pending judicial resolution of this litigation.

Plaintiff's contention is that the similarities between the Vagitrol and Vagestrol marks are such that, when the words are used in connection with products intended for such closely similar purposes, it is likely that confusion and mistake will result among prescribing physicians, dispensing pharmacists and members of the public. Such confusion, it argues, is an infringement of its commercial rights in the Vagitrol mark and, in the context of potent prescription drugs with different active ingredients, dangerous to the public as well. Defendant denies any real likelihood of confusion, and contends that in any case the purported assignment of the Vagitrol mark to Syntex on April 10, 1969, is of no effect, rendering Syntex the junior user if any likelihood of confusion should be found.

Counsel for both sides have furnished us with extensive undisputed documentary proof and lengthy briefs of unusual quality and thoroughness, which we have carefully reviewed. Were it not for the disfavor with which this Circuit has viewed summary judgment in trademarks suits, see the oft-cited comment in Marcus Brier Sons Inc. v. Marvlo Fabrics Inc., 173 F.2d 29 (2d Cir. 1949), that "Disputes between parties as to trade-mark validity and infringement can rarely be determined satisfactorily on a motion for summary judgment," we would be inclined to grant such relief here. No genuine issue as to a material fact is raised, with the possible exception of the issue of confusion, as to which defendant has furnished unsupported, conclusory medical opinions to the effect that prescriptions for defendant's product Vagestrol would always contain sufficient information to distinguish it from plaintiff's product Vagitrol. Under the stringent standard by which we are governed under Rule 56, F.R.Civ.P., this meager offering probably precludes summary judgment. However, it would not necessarily call for denial of preliminary injunctive relief. From our examination of all of the evidence submitted we are convinced that there is a very strong likelihood that plaintiff will prevail on the merits. Accordingly, after weighing the balance of hardships, including the serious injury that might be caused to the public if such relief were denied, we believe that this presents an appropriate case for the issuance of preliminary injunctive relief in the exercise of our discretion.

Infringement — Likelihood of Confusion

"Confusion as to source of origin is * * * the keystone of an action based upon infringement of a registered mark. 15 U.S.C.A. § 1114(1)." Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607, 612 (2d Cir.), cert. denied, 364 U.S. 909, 81 S.Ct. 271, 5 L.Ed.2d 224 (1960). In a garden-variety trademark infringement suit, where the chief interest affected by the alleged infringement is the plaintiff's economic interest in preventing others from trading on its name and good will, the confusion question reduces to whether there is a likelihood that an appreciable number of ordinary prudent purchasers of the defendant's product may, by reason of its labelling with the allegedly infringing mark, be misled into believing that the product comes from the same source as plaintiff's goods. Avon Shoe Co. v. David Crystal, Inc., supra at 612; Haig v. Haig, Inc. v. Maradel Products, Inc., 249 F.Supp. 575, 577 (S.D.N.Y.1966).

Confusion on the part of "ordinary prudent purchasers" is not, however, the only form of confusion relevant in trademark infringement litigation. Title 15 U.S.C. § 1114(1) provides a remedy for trademark infringement against

"any person who shall, without the consent of the registrant —

"(a) use in commerce any * * * colorable imitation of a registered mark in connection with the sale * * * of any goods * * * on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. * * "

Here the products in question are prescription drugs, chosen by physicians and dispensed upon their prescriptions by pharmacists. Except for the remote possibility of confusion on the part of a patient who has a quantity of both products, prescribing physicians and dispensing pharmacists constitute the class within which confusion between plaintiff's and defendant's products is of concern to us. A. Seidel, S. Dubroff & E. Gonda, Trademark Law and Practice ¶ 16.08 at 424 (1963).

The factors to be considered in deciding whether or not one mark infringes trademark rights in another "are variable and relative and no single one, because of its presence or absence, is, in itself, determinative of a case." Kiki Undies Corp. v. Promenade Hosiery Mills, Inc., 411 F.2d 1097, 1099 (2d Cir. 1969). See also Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). Among the relevant considerations...