Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA531177
`ESTTA Tracking number:
`04/09/2013
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91173963
`Plaintiff
`Mini Melts, Inc.
`ROBERT G OAKE JR
`OAKE LAW OFFICE
`825 MARKET STREET, SUITE 250
`ALLEN, TX 75013
`UNITED STATES
`rgo@oake.com
`Reply in Support of Motion
`Robert G. Oake, Jr.
`rgo@oake.com
`/Robert G. Oake, Jr./
`04/09/2013
`Motion to Compel Reply.pdf ( 10 pages )(97810 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
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`Mini Melts, Inc.,
`Opposer,
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`v.
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`Reckitt Benckiser LLC,
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`Applicant.
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`OPPOSER’S REPLY TO APPLICANT'S RESPONSE TO MOTION TO COMPEL ANSWERS
`TO INTERROGATORIES AND PRODUCTION OF DOCUMENTS RESPONSIVE TO
`REQUESTS FOR PRODUCTION
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`Opposer Mini Melts, Inc. replies to Applicant Reckitt Benckiser LLC's response to
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`§
`§
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`§ Opposition No. 91/173,963
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`§
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`Opposer's motion to compel answers to interrogatories and documents responsive to requests for
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`production, respectfully showing as follows:
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`1.
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`Before Opposer Mini Melts, Inc. begins a point-by-point reply to Applicant Reckitt
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`Benckiser's response, Mini Melts would like to mention three preliminary matters. First, in its
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`response, Reckitt does not challenge or object to any of Mini Melts' factual assertions - including
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`the assertion that this case presents the only known situation in the United States where a drug
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`company named a “use only as directed” medicine the same name as the federally registered
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`trademark of a popular children’s novelty treat. Second, Reckitt does not respond to Mini Melts'
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`central argument for why the subject discovery should be compelled by this Board. Mini Melts
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`anticipated that Reckitt would make the flawed argument that the safety principle contained in
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`this Board's pharmaceutical case law should only apply when two pharmaceuticals are involved.
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`And in anticipation of such an argument, Mini Melts on pages 16-18 of its motion offered four
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`reasons why such an argument is incorrect. Reckitt fails to refute or respond to these four
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`reasons. Finally, Reckitt's counsel continues its unprofessional habit of describing Mini Melts
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`argument as "bizarre" and accusing Mini Melts of trying to "distract and prejudice the judiciary."
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`Mini Melts will resist the temptation to respond in kind, will reply professionally, and will note
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`that this type of language and argument typically is used by a party with documents or
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`information to hide and no persuasive argument to keep them hidden.
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`2.
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`Reckitt begins its response by arguing that the controversy in this opposition already has
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`been determined in prior federal court litigation. That is incorrect. As this Board noted in its
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`order denying Reckitt's motion to dismiss, "it is well-settled that a claim for trademark
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`infringement is based on different transactional facts than those upon which an opposition to
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`registration of a mark is based." (Board Order dated July 20, 2012, page 9). And since Reckitt
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`defended the claims in the civil action by arguing that it uses the phrases "Mucinex Mini Melts"
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`and "Children's Mucinex Mini-Melts" in the marketplace (and not simply the marks Mini-Melts
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`and MiniMelts), the civil action and this opposition are not based on the same transactional facts.
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`Therefore, as this Board previously has ruled, the civil action did not determine this opposition.
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`3.
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`Reckitt next argues that the safety information was excluded from the civil action. As
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`explained in footnote four of Mini Melts' motion "[t]he federal court trial occurred in a district
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`court located in the Fifth Circuit. Unlike the Third Circuit, Second Circuit and the Trademark
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`Trial and Appeal Board, the Fifth Circuit has not yet recognized the relevancy of safety
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`considerations in the likelihood of confusion analysis (no case has yet addressed it), and the trial
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`court did not permit a jury instruction on the issue of safety considerations." But it also should
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`be noted that even with no Fifth Circuit precedent to support consideration of safety factors, the
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`voluntary mention of safety considerations by the prospective jury panel members made an
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`impression on the trial judge that safety considerations were at least something to talk about in
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`the case. Following Voir Dire, the following exchange occurred at the bench between the Court
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`and defense counsel: (Tr. 19:67, 68).
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`MR. SIEBMAN: The only two we were concerned about is Number Three and
`Number Four. They voluntarily got into the safety issue, which also I think is an
`issue that's off limits.
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`THE COURT: Well, I'm not sure it is off limits now, the more I hear about it. I
`think it might be -- it's something to talk about, but we can't represent to them that
`that's irrelevant in this case. All right. Which ones do you think --
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`Reckitt next argues, as mentioned above, that all the pharmaceutical safety cases cited by
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`4.
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`Mini Melts are distinguishable and irrelevant because they are set in a context where both of the
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`at-issue products were pharmaceuticals dispensed by a pharmacist and Mini Melts cold medicine
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`is sold, marketed, and administered in a different context than Mini Melts ice cream. Reckitt is
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`correct that Mini Melts has not cited a case involving a drug and a food product. But Reckitt
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`cannot cite to another single instance where a drug company has attempted to federally register a
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`drug trademark that is virtually identical to the name of a well-known children's novelty food
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`treat - so apparently no case such as this has ever presented itself for determination.
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`More importantly, Reckitt cannot refute the reasoning by which the rationale and
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`principles of this Board's pharmaceutical safety cases should be applied to this opposition.
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`Reckitt states that "[a]lthough, [sic] Mini Melts cough and cold medicine is a pharmaceutical
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`preparation, it is sold, marketed, and administered in completely different contexts than
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`Opposer's ice cream." (emphasis in original) (Reckitt Response, page 4). This is Reckitt's sole
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`argument for why this Board's pharmaceutical safety cases are supposedly irrelevant. As an
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`initial matter, Reckitt's argument is based upon the false assumption that an adult always will
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`administer the Mini Melts drug to a child and that children will never have unsupervised access
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`to the Mini Melts drug at home. Reckitt's own internal documents prove that this assumption is
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`absolutely and dangerously false.1
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`But further, Reckitt's argument does not address the important four reasons set forth in
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`Mini Melts' motion to compel for why this Board's pharmaceutical safety cases are relevant. The
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`first reason is that the Lanham Act is broad enough to cover confusion between products and not
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`just confusion as to source. The second reasons is that the danger is created not simply because
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`the two products are pharmaceutical products, but because the two products are (i) consumable
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`products that (ii) have identical or similar names, but (iii) dangerously different purposes and
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`results, and (iv) it is foreseeable that both products can be in the same environment. To be
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`specific, both products are named Mini Melts (Mini-Melts), and both products are small,
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`flavorful, colorful, free-flowing particles that are consumed primarily by children. Many
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`children are very familiar with "Mini Melts" as the name of something that can be eaten as a
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`treat. And the evidence is that children are gaining unsupervised access to the Mini-Melts drug
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`at home and eating it. There is likelihood for dangerous confusion in the mind of a child, which
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`Reckitt neither addresses nor refutes.
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`Reckitt also does not address the third and fourth reasons, which are that when the
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`purchasers and users of the products include professionals and non-professionals, the standard of
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`care considered is that which would be exercised by the least sophisticated purchaser or user -
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`1 MEDWATCH Reports produced by Applicant in the federal court litigation indicate Reckitt is
`aware that children are gaining access to Mini Melts medicine, taking it without parental
`supervision, and are taking too much. (Ex. P47). These reports state “Father reported that the five
`year-old child took 2 packets of Mucinex Mini-Melts (100 mg guaifenesin) granules unsupervised
`and the patient’s previous dose of Mini-Melts was given by the parent 10 hours prior to the
`accidental ingestion” (p.6); “Father reports his 4 year old son ingested 8 packets of Mucinex (100
`mg guaifenesin) granules at the same time because they tasted good” (p.3); “Mother reported patient
`took seven packets of Junior Strength Mucinex (100 mg guaifenesin) Mini-Melts at one time” (p.4);
`“Mother states her 3 y.o. daughter accidentally ingested about 3 packets of Mucinex® Mini-
`Melts™ (100 mg guaifenesin)” (p.5); “Mother reported that her four year-old child accidentally
`took approximately 4 packets of Mucinex Mini-Melts (100 mg guaifenesin) granules at once” (p.7).
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`which in this case is children. Reckitt states that its drug is intended to be administered by an
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`adult to a child, includes specific warnings to keep out of the reach of children, and the
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`individual packets are very difficult for a child to open. But such intentions, warnings, and
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`packets are naive, ineffective, and dangerous. Indeed, Reckitt's own Medwatch reports contain
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`irrefutable proof that children are gaining access to the Mini Melts drug, taking it without
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`parental supervision, and are taking too much.2 Therefore, it is incorrect to consider just the
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`pharmacist that dispenses the products or the adult who is "intended" to administer the drug.
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`Rather, the least sophisticated consumer must be considered, which in this case is a child who is
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`familiar with Mini Melts ice cream as an edible treat and who may see and have unsupervised
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`access to a box of Mini-Melts drugs at home.
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`5.
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`Reckitt argues that "Mini Melts cough and cold medicine is an exceptionally safe
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`product" and "[t]he active ingredient, guaifenesin, has been monographed by the Food and Drug
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`Administration (“FDA”) to be generally recognized as safe and effective such that its sale
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`according to published standards is automatically authorized by the FDA as well as the
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`Consumer Products Safety Commission." (Reckitt Response, pages 4 and 5). This argument
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`cannot be taken seriously. Reckitt’s own medicine box that was introduced into evidence at the
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`district trial states “Keep out of reach of children. In case of overdose, get medical help or
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`contact a Poison Control Center right away.” (Ex. P419). The directions on the box indicate that
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`“children 4 years to under 6 years” should only take “1 packet every 4 hours” and “children
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`under 4 years” “do not use.” (Ex. P419).
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`The Drugs.com website page (http://www.drugs.com/cdi/mucinex-cough-mini-melts-
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`granule-packets.html) related to Mucinex Mini-Melts states in relevant part as follows: (Ex. P420).
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`2 Id.
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`Do NOT use Mucinex Cough Mini-Melts Granule Packets if: you are allergic to
`any ingredient in Mucinex Cough Mini-Melts Granule Packets, you are taking or
`have taken a monoamine oxidase inhibitor (MAOI) (eg, selegiline) within the last
`14 days, you are taking a selective serotonin reuptake inhibitor (SSRI) (eg,
`fluoxetine). Contact your doctor or health care provider right away if any of these
`apply to you.
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`Some MEDICINES MAY INTERACT with Mucinex Cough Mini-Melts Granule
`Packets. Tell your health care provider if you are taking any other medicines,
`especially any of the following: MAOIs (eg, selegiline) and SSRIs (eg,
`fluoxetine) because the risk of serious side effects may be increased by Mucinex
`Cough Mini-Melts Granule Packets. This may not be a complete list of all
`interactions that may occur. Ask your health care provider if Mucinex Cough
`Mini-Melts Granule Packets may interact with other medicines that you take.
`Check with your health care provider before you start, stop, or change the dose of
`any medicine.
`….
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`Mucinex Cough Mini-Melts Granule Packets should not be used in CHILDREN
`younger than 4 years old; safety and effectiveness in these children have not been
`confirmed.
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`….
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`Seek medical attention right away if any of these SEVERE side effects occur:
`Severe allergic reactions (rash; hives; itching; difficulty breathing; tightness in the
`chest; swelling of the mouth, face, lips, or tongue).
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`Not only does Reckitt not challenge these facts regarding danger, Reckitt’s box now
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`contains the warnings set forth in the drugs.com website.
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`6.
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`Reckitt argues that this is not a product liability case and even if it were, the evidence
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`would not sustain it. (Response, pages 5,6). This straw man argument completely misses the
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`point. Mini Melts is not claiming that Mini Melts medicine should be taken off the market
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`because it is too dangerous. Rather, Mini Melts is arguing that it creates a danger to the public to
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`name a use only as directed medicine with potentially dangerous side effects the same name as a
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`popular children’s novelty ice cream treat.
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`7.
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`Reckitt argues that Mini Melts does not have “standing to challenge ‘public policy’ issues
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`related to the safety of Mucinex Mini Melts cough and cold medicine” and “Reckitt is in full
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`compliance with all FDA regulations with respect to product labeling, ingredients and
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`packaging.” (Response, page 6). The monograph had not been updated since the early 1980s and
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`certainly not since the Mini Melts medicine product came out. Further, Mini Melts has the right
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`to raise the issue of product and public safety because Mini Melts’ ice cream is named “Mini
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`Melts” and this Board considers product confusion and danger to the public as a relevant factor
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`in the trademark “likelihood of confusion” analysis.
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`8.
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`Reckitt argues that "[d]espite the fact that Reckitt has sold an estimated 779.3 million
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`doses of medicine under the Mucinex brand name, Opposer cannot cite to one incident that
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`supports its artificial “danger to the public” hypotheticals." (Response, page 6). First, Reckitt
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`includes all of the Mucinex product line in that number and not just its Mini Melts products.
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`Second, Reckitt does not state that such an incident has not occurred. Indeed, that is one of the
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`matters Mini Melts is seeking to find out through the subject discovery. By arguing that a lack
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`of evidence strengthens its case,3 Reckitt has in effect confirmed the relevancy of Mini Melts
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`discovery requests regarding public danger.
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`9.
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`Reckitt makes a confusing "numerous intervening premises" argument. First, this
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`argument is misplaced because it involves the standard for admitting evidence and not for
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`obtaining discovery. Second, it is incorrect. The presence of danger in this case does not require
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`numerous inferences. Reckitt's own Medwatch reports indicate that children are gaining access
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`to the Mini Melts drug, taking it without parental supervision, and are taking too much. And
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`Reckitt admits that a child can vomit if the child takes too much Mini Melts drug. These are not
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`inferences, these are facts.
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`3 Even now there is not a complete lack of evidence regarding danger as illustrated by Reckitt's
`Medwatch reports.
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`10.
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`Reckitt next sets forth a table of cases. Reckitt states all the cases "involved trademark
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`infringement issues concerning products which could be considered to be of a dangerous nature.”
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`(Response, page 7). Reckitt’s table misses the point. Mini Melts’ argument is not simply that a
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`product covered by a trademark could be considered dangerous, but that the public danger arises
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`due to potential product confusion, ie, that it is dangerous to name a use only as directed drug
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`with potentially dangerous side effects the same name as a popular children’s novelty treat. Only
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`one case in Reckitt’s chart fits into that general category. The case is Kos Pharmaceuticals, Inc.
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`v. Andrx Corp. 369, F3d 7000, 709 (3d Cir. 2004), and contrary to Reckitt’s assertion, in Kos
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`Pharmaceuticals, safety considerations were part of the likelihood of confusion analysis.
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`11.
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`Reckitt sets up another straw man argument by contending that “[w]ithout any proof
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`of injury to the Opposer, coupled with the danger of the product with a causal connection to an
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`injury, Opposer has no basis for any sort of products liability argument against Reckitt”
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`(Response, page 8). Again, Mini Melts is not making a product liability claim against Reckitt.
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`Rather, Mini Melts is seeking relevant discovery in its opposition against Reckitt's trademark
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`applications and is arguing that likelihood of product confusion and public safety considerations
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`are factors that this Board should consider.
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`12.
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`Finally, Reckitt strangely argues that under Federal Rule of Evidence 403, even if the
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`requested information is relevant, Mini Melts' motion to compel should be denied because the
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`information requested is highly prejudicial to Reckitt. This is a discovery motion and not an
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`effort to admit evidence at this time. The standards are different and a discovery request should
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`not be denied because the potential responses will be highly prejudicial to Reckitt.
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`Indeed, Reckitt's argument that the prejudicial nature of the danger to children should
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`outweigh its relevance for discovery purposes is nothing short of outrageous. Reckitt states “it is
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`difficult to imagine anything more prejudicial and emotional than the specter of a product being
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`harmful to small children.” (Response, page 27). That is true, because small children are active
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`and curious, and lacking experience and judgment, they are extremely vulnerable to all types of
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`dangers in their environment. They must be protected. Would anyone doubt the danger to a
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`child if a use only directed medicine with serious side effects was named, for example,
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`“M&Ms”? Based on the amount of time Mini Melts ice cream has been sold in malls, sporting
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`events and elsewhere, there are children and small children who are just as familiar with the
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`name “Mini Melts” as an edible treat as they are with the name “M&Ms.” It is confusing and
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`dangerous that Reckitt has named a use only directed medicine the same name as a popular
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`children’s novelty treat. No other company has ever done that before. Reckitt recognizes the
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`effect this danger will have, but then makes the argument that the public’s concern for the danger
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`and instinct to protect vulnerable children should be the reason that this Board should not hear
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`about it. Reckitt’s perverse argument should be rejected.
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`13.
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`Conclusion - For the reasons set forth above, Mini Melts moves for an order compelling
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`Reckitt to answer the subject interrogatories and to produce the requested documentation.
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`Respectfully submitted,
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`/s/ Robert G. Oake, Jr.
`Robert G. Oake, Jr.
`Texas State Bar No. 15154300
`Oake Law Office
`825 Market Street, Suite 250
`Allen, Texas 75013
`(214) 207-9066
`rgo@oake.com
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`Attorney for Opposer Mini Melts, Inc.
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`CERTIFICATE OF SERVICE
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`I certify that a true and correct copy of the foregoing reply was served upon the Applicant
`via e-mail on April 9, 2013 as follows:
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`Debra Deardourff Faulk
`Debra.Faulk@gray-robinson.com
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`/s/ Robert G. Oake, Jr.
`Attorney for Opposer Mini Melts, Inc.
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