Sage Therapeutics Prevails in USPTO: Trademark Trial and Appeal Board Opposition to SAGEFORTH Mark | Sunstein LLP
The USPTO Trademark Trial and Appeal Board issued a precedential decision on April 12, 2024, in favor of Sage Therapeutics, finding a likelihood of confusion between Sage’s SAGE CENTRAL mark and the mark SAGEFORTH, and refused registration of the SAGEFORTH trademark.
Sage Therapeutics (Sage) is an innovative biopharmaceutical company headquartered in Cambridge, Massachusetts. It focuses on the discovery and development of treatments for people with brain health diseases, such as postpartum depression and major depressive disorder. For example, it has developed the first two FDA-approved treatments for postpartum depression and has conducted clinical trials for treatment of several other brain diseases. It also offers extensive information and patient support services to patients, caregivers, friends and family, and healthcare providers through its SAGE CENTRAL portal. Sage uses its SAGE marks in connection with its pharmaceutical preparations and related services, including using its SAGE CENTRAL mark in connection with its informational and patient support services.
SageForth, a psychological services organization, filed an application with the United States Patent and Trademark Office (USPTO) to register the mark SAGEFORTH in connection with a broad list of services including psychological services, mental health services, and informational services relating to psychological counseling, assessment, diagnosis and treatment. Sage filed an opposition to this application because its SAGE-formative marks could be confused with SAGEFORTH in the population of patients and caregivers dealing with brain disorders.
After trial and an oral hearing, the USPTO’s Trademark Trial and Appeal Board (the Board) issued a precedential ruling in favor of Sage, finding a likelihood of confusion between the applicant’s mark SAGEFORTH for providing information in the field of psychological counseling, assessments, diagnosis, and treatment, and Sage’s SAGE CENTRAL mark for providing health and medical information about postpartum depression and treatment. Thus, the Board sustained Sage’s opposition and refused the registration of the SAGEFORTH mark.
In reaching its decision, the Board found the SAGEFORTH and SAGE CENTRAL marks to be similar, concluding that the word SAGE was the dominant element of both marks and explaining that “the common ‘sage’ element of the marks anchors them in a way to the same theme and creates a risk that consumers will mistakenly assume connections between the services provided under the marks.”
In its opposition to the SAGEFORTH registration application, Sage had asserted several SAGE-formative registrations covering a “house mark for pharmaceutical preparations” In Class 5 as well as the SAGE CENTRAL registration. The Board focused its decision on the likelihood of confusion between the SAGEFORTH mark in connection with its informational services in Class 44 and the SAGE CENTRAL mark in connection with its information and patient support services in Class 44.
Although the Board did not reach the question of the similarity between SageForth’s Class 44 psychological services and Sage’s Class 5 pharmaceutical preparations, the Board observed that the evidence of record reflected that both parties agreed that psychological conditions are treated with therapy and medication. The Board cited to the testimony of SageForth’s representative stating that “I am well aware that many patients will treat depression with both medicine and psychotherapy and therefore the treatments can said to be ‘complimentary,’” and noted that “[c]omplementary services are typically found to be related.”
Despite evidence in the record of Sage’s use of its SAGE marks in clinical trials to treat a wide range of diseases and disorders of the brain such as Huntington’s Disease, Parkinson’s Disease, and Alzheimer’s Disease, SageForth filed counterclaims seeking to narrow Sage’s registrations for goods in Class 5 to “a house mark for pharmaceutical preparations that treat post-partum depression” (seeking to limit the description to covering Sage’s FDA-approved medicines ZULRESSO and ZURZUVAE for treatment of post-partum depression).
In order to prevail on its counterclaims for restriction of Sage’s Class 5 registrations, SageForth needed to show that: (1) Sage is not using its marks on the goods sought to be canceled (i.e., pharmaceutical preparations other than those to treat postpartum depression); and (2) a finding of a likelihood of confusion would be avoided by entry of the proposed restriction. Eurostar v. “Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270 (TTAB 1994).
Because the Board sustained Sage’s opposition to the SAGEFORTH application on the basis of likelihood of confusion with SAGE CENTRAL, the Board concluded that a restriction on Sage’s registrations covering goods in Class 5 would have had no impact on the outcome of the opposition proceeding. Accordingly, the Board deemed the SageForth counterclaims to be moot, consistent with its prior decision in Eurostar, and dismissed them without prejudice.
In Eurostar, the Board set forth the elements required for a party to succeed in restricting the goods or services in a pleaded registrations in order to avoid likelihood of confusion, requiring that a party must prove: (1) the adverse party is not using the mark on the goods or services sought to be excluded by the proposed restriction; and (2) a finding of likelihood of confusion would be avoided by the entry of the restriction. Here, the Board did not evaluate the merits of SageForth’s counterclaims because the proposed restrictions to Sage’s registrations covering goods in Class 5 would not avoid a finding of likelihood of confusion between SAGEFORTH and SAGE CENTRAL. Because the Board did not consider the merits of the counterclaims, it dismissed them without prejudice, rather than conducting an analysis that would be advisory in nature. The Board characterized its decision to dismiss the counterclaims without prejudice as a “modest extension” of Eurostar. While the Board’s decision does not state it explicitly, this “modest extension” is likely the reason that the decision was designated as precedential.
