Recently, the Trademark Trial and Appeal Board (TTAB) decided the case of Mylan Inc. v. Medikit, LLC, 2017 WL 3102600. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.
Medikit, LLC submitted an application for trademark registration of the mark “EPI-KIT” for “injectable pharmaceuticals for treatment of anaphylactic reactions.” Medikit sought to register this mark under International Class 5, a category that includes “pharmaceuticals and other preparations for medical or veterinary purposes.”
Mylan Inc. owns a registered trademark for EPIPEN. Mylan’s mark also refers to “injectable pharmaceuticals for treatment of anaphylactic reactions” under International Class 5.
Relevant to this discussion is a 2004 settlement agreement between Medikit and Mylan. Medikit attempted to register the EPI-KIT mark back in 2002. Mylan opposed that registration. To resolve the dispute, both parties entered into a settlement agreement.
In the settlement, both parties made certain representations:
- Medikit agreed to use the mark EPI-KIT solely for a “medical kit for the treatment of anaphylactic shock”;
- Medikit agreed not to use the words “EPI” or “PEN” for “any auto-injector products or goods”;
- Mylan agreed that Medikit owned the EPI-KIT mark; and
- Mylan agreed not to any trademark applications by Medikit for the EPI-KIT mark.
Returning to the present case, Mylan opposed Medikit’s requested registration of EPI-KIT on two grounds:
- Under 15 U.S.C. 1052(d) of the Trademark Act, Mylan argued that registration of the EPI-KIT mark was likely to cause confusion, due to similarities with Mylan’s registered mark of EPIPEN.
- Under 15 U.S.C. 1052(c) of the Trademark Act, Mylan contended that registration of the EPI-KIT mark would result in dilution, due to similarities with Mylan’s registered mark of EPIPEN.
Medikit responded that the settlement agreement prevented Mylan from opposing registration of the EPI-KIT mark.
Trademark Settlement Agreements Analysis
The TTAB reviewed the arguments from both parties and evidence on the record. Focusing on the plain language of the trademark settlement agreements, the TTAB underlined that Medikit agreed not to use the words “EPI” or “PEN” for “any auto-injector products or goods.”
Nonetheless, Medikit applied for the EPI-KIT mark for use with “injectable pharmaceuticals for treatment of anaphylactic reactions.” The TTAB considered this a clear breach of the settlement agreement.
In light of this breach, the TTAB determined that Mylan was permitted to challenge Medikit’s trademark application. Mylan was seeking to enforce – not breach – the settlement agreement.
Overall, the TTAB granted Mylan’s request and denied Medikit’s trademark application for the EPI-KIT mark.
Do You Need Legal Advice from a Tradmark Attorney?
Navigating the ins and outs of trademark law can be a challenge. There are various legal regulations and considerations at play, which can make it difficult to understand the proper course of action. Legal counsel is always advised before enetring into any trademark settlement agreements. Knowledgeable patent and trademark attornies can make all of the difference and help you avoid pitfalls and resolve any issues that might arise.
If you have a legal issue you need help with, the attorneys at Whitcomb, Selinsky Law PC would love to share their expertise with you. Please call (303) 543-1958.