A.D. 1619 Company

Trademark Trial and Appeal Board

Jul 28, 2003

No. 78052872 (T.T.A.B. Jul. 28, 2003)

Mailed: July 24,2003
Paper No.11
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nutritional Services, Inc.
________
Serial No. 78/052,872
_______
Michael J. Greathouse, General Counsel, for Nutritional Services,
Inc.
Patty Evanko, Senior Attorney, Law Office 112 (Janice O'Lear,
Managing Attorney).
_______
Before Hohein, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Nutritional Services, Inc. has filed an application to
register the mark "NSI" and design, as reproduced below,
for the services of a "retail distributorship featuring dietary
supplements."1
1 Ser. No. 78/052,872, filed on March 13, 2001, which alleges a date of
first use anywhere and in commerce of June 13, 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78/052,872
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
following marks, which are registered by the same registrant for
the goods and services set forth below, as to be likely to cause
confusion, mistake or deception: (i) the mark "NSI," which is
registered for "dietary supplements and vitamins, minerals,
herbs, herbal extracts and herbal combinations, all for use as
dietary supplements;"2 and (ii) the mark "NSI NUTRACEAUTICAL
SCIENCES INSTITUTE" and design, as illustrated below,
for "computerized on-line ordering services in the field of
vitamins and dietary supplements; [and] mail order services
featuring vitamins and dietary supplements."3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
2 Reg. No. 2,411,431, issued on December 5, 2000, which sets forth a
date of first use anywhere in commerce of September 14, 1999.
3 Reg. No. 2,491,928, issued on September 25, 2001, which sets forth a
date of first use anywhere and in commerce of September 14, 2001. The
term "NEUTRACEUTICAL" is disclaimed. The stippling is for shading
purposes only and does not indicate color.
Ser. No. 78/052,872
3
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and/or services and the similarity of the marks.4
Turning first to consideration of the respective goods
and services, it is well settled that the issue of likelihood of
confusion must be determined on the basis of the goods and
services as they are set forth in the involved application and
the cited registrations, and not in light of what such goods and
services are shown or asserted to actually be. See, e.g.,
Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus, where applicant's
and services and registrant's goods and services are broadly
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks."
Ser. No. 78/052,872
4
described as to their nature and type, it is presumed in each
instance that in scope the application and registrations
encompass not only all goods and services of the nature and type
described therein, but that the identified goods and services
move in all channels of trade which would be normal for those
goods and services, and that they would be purchased by all
potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
Moreover, it is well established that applicant's
services need not be identical or even competitive in nature with
registrant's services and/or compete with its goods in order to
support a finding of likelihood of confusion. Instead, it is
sufficient that the services and/or goods are related in some
manner and/or that the circumstances surrounding their marketing
are such that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with the
same producer or provider. See, e.g., Monsanto Co. v. Enviro-
Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
Applicant, as supported by the declaration of its owner
and chief executive officer, Jill Bjorndahl-Jay, argues in its
initial brief that it "operates through the referral of its
customers from two East Coast physicians and, as such, does not
compete with any [other] dietary supplement companies." However,
Ser. No. 78/052,872
5
as the Senior Attorney correctly observes in her brief,
"[n]either the registrant nor the applicant has limited the
recitation of [their respective] services in any way as to
channels of trade, class of purchasers, etc." The Senior
Attorney also accurately notes that "inasmuch as online ordering
and mail order services are a form of retail distribution" of
dietary supplements, registrant's services are in part
encompassed by and are otherwise closely related to applicant's
services. Moreover, it is obvious that registrant's goods, which
constitute dietary supplements as such as well as vitamins,
minerals, herbs, herbal extracts and herbal combinations for use
as dietary supplements, are closely related to applicant's retail
distributorship services featuring dietary supplements inasmuch
as the former are precisely the kinds of products which are
offered through the latter.
Clearly, therefore, customers for dietary supplements
may seek to purchase such products by utilizing applicant's
retail distributorship services or they may avail themselves of
registrant's computerized on-line ordering services and its mail
order services. As the Senior Attorney additionally points out,
even the kind of purchaser who is a "pre-selected" medical
patient and "has obtained dietary supplements through physician
referral in the past, is not limited to that type of purchase in
the future." We consequently agree with the Senior Attorney that
"[i]t is highly likely that purchasers would mistakenly assume
that dietary supplements available through different distribution
Ser. No. 78/052,872
6
methods ... emanate from a single source" when offered under the
same or highly similar marks."
Turning, then, to consideration of the marks at issue
herein, applicant maintains in its initial brief that its "NSI"
mark, which it insists "is a unique design consisting of a green-
colored swirl positioned above blue, slanting letters," "is
radically different" from registrant's "NSI" mark, which is
"without any other distinctive ... characteristics," and is
"considerably different" from registrant's "NSI NUTRACEUTICAL
SCIENCES INSTITUTE" and design mark, which "consists of a maze-
like pattern" forming the letters "NSI" inside a pill or vitamin-
like design above the wording. In addition, applicant contends
that the letters "NSI" in its mark "are broader and wider" than
those in registrant's marks, "thereby eliminating the possibility
of any confusion." Applicant, insisting that the case of In re
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed.
Cir. 1990), "is strongly supportive of its argument that
registration should be granted to its proposed trademark,"
asserts that when the respective marks are considered in their
entireties, its mark is readily distinguishable from both of
registrant's marks. In particular, applicant urges in its reply
brief that, as to registrant's service mark, "the predominant
feature of the mark is the phrase 'Nutraceutical Sciences
Institute'" rather than the term "NSI."
While there are plainly differences between applicant's
mark and registrant's marks which are apparent upon a side-by-
side comparison, such a comparison is not the proper test to be
Ser. No. 78/052,872
7
used in determining the issue of likelihood of confusion inasmuch
as it is not the ordinary way that customers will be exposed to
the marks. Instead, it is the similarity of the general overall
commercial impression engendered by the marks which must
determine, due to the fallibility of memory and the concomitant
lack of perfect recall, whether confusion as to source or
sponsorship is likely. The proper emphasis is accordingly on the
recollection of the average purchaser, who normally retains a
general rather than a specific impression of marks. See, e.g.,
Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573, 574 (CCPA 1973); Envirotech Corp. v. Solaron Corp.,
211 USPQ 724, 733 (TTAB 1981); and Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975). Moreover, as the
Senior Attorney properly notes in her brief, when a mark consists
of a literal portion and a design portion, it is "the literal
portion [which] is more likely to be impressed upon a purchaser's
memory and [to be] used in calling for the goods or services."
See, e.g., In re Appetito Provisions Co. Inc., 3 USPQ2d 1553,
1554 (TTAB 1987).
Keeping the above principles in mind, we concur with
the Senior Attorney that, when considered in their entireties,
"[t]he dominant feature of the applicant's mark is the acronym
NSI," which is identical to registrant's "NSI" mark. Such
acronym is also the dominant, or at the very least a prominent,
feature of registrant's "NSI NUTRACEUTICAL SCIENCES INSTITUTE"
and design mark given the descriptiveness of the pill or vitamin
design and the term "NEUTRACEUTICAL," which appears along with
Ser. No. 78/052,872
8
the words "SCIENCES INSTITUTE" in smaller lettering than the
acronym "NSI." As to the latter, we further note that our
principal reviewing court has indicated that, in articulating
reasons for reaching a conclusion on the issue of likelihood of
confusion, "there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"that a particular feature is descriptive ... with respect to the
involved goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark ...." Id.
In the present case, it accordingly is apparent that
applicant's "NSI" and design mark is essentially identical to
registrant's "NSI" mark in sound, appearance, connotation and
overall commercial impression. In particular, it is pointed out
with respect to the virtual identity in appearance between such
marks that, contrary to applicant's contentions, the fact that
registrant's "NSI" mark is in typed form means that the display
thereof could include not only a similar green and blue color
scheme5 but also the same stylized manner of lettering as that
utilized by applicant for its "NSI" and design mark. See, e.g.,
Phillips Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170
USPQ 35, 36 (CCPA 1971) [a mark registered in typed format is not
5 As the Senior Attorney accurately observes in her brief, however,
"color has never been claimed as a feature of the [applicant's] mark."
Ser. No. 78/052,872
9
limited to the depiction thereof in any special form]; and INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992)
["[a]s the Phillips Petroleum case makes clear, when [an]
applicant seeks a typed or block letter registration of its word
mark, then the Board must consider all reasonable manners in
which ... [the word] could be depicted"]. The presence,
therefore, of a swirl design in applicant's "NSI" and design mark
is simply insufficient to distinguish such mark from registrant's
"NSI" mark, especially in view of the arbitrary nature of the
shared acronym "NSI". The latter, as the Senior Attorney
persuasively argues in her brief, "clearly distinguishes" this
appeal from In re Electrolyte Laboratories Inc., supra, in which
"the feature of the marks ["K+" and design and "K+EFF" and
design] that was common to both was the descriptive term K+"
inasmuch as "K+ is the symbol for potassium ion and the goods
were [in each instance potassium] dietary supplements."
Furthermore, with respect to applicant's "NSI" and
design mark and registrant's "NSI NEUTRACEUTICAL SCIENCES
INSTITUTE" and design mark, the Senior Attorney is correct that
none of the "additional matter [in registrant's mark] obviates
the similarity of the marks because use of the identical acronym
NSI as the dominant feature of the marks is more significant."
Such an arbitrary term, while presented in registrant's mark in
what applicant refers to as a "maze-like pattern," is still the
principal source-indicative element of the mark, just as is the
case with applicant's "NSI" and design mark. Thus, even though
purchasers and potential consumers of registrant's services can
Ser. No. 78/052,872
10
be expected to notice other elements in the mark besides the
prominently displayed term "NSI," such as the pill or vitamin-
like design on which the term is displayed and the words
"NEUTRACEUTICAL SCIENCES INSTITUTE," from which the acronym "NSI"
is obviously derived, which appear immediately below the design,
customers for registrant's services would be likely to assume,
upon encountering applicant's closely related services, that
those services are provided or authorized by the same source as
renders registrant's services, given the presence of the
arbitrary term "NSI" in applicant's "NSI" and design mark.
Applicant nonetheless further argues, in both its
initial and reply briefs, that "there is no evidence that any
actual customers have been confused" by the contemporaneous use
of the respective marks" and that, "[a]ccordingly, this is yet
another [du Pont] factor which weighs heavily in favor of ...
registration" of applicant's mark. While, of course, it is the
case that evidence of the absence of any instances of actual
confusion over a significant period of time is a du Pont factor
which is indicative of no likelihood of confusion, it is a
meaningful factor only where the record demonstrates appreciable
and continuous use by applicant of its mark in the same markets
as those served by registrant under its mark(s). See, e.g.,
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). In particular, there must be evidence showing that there
has been an opportunity for incidents of actual confusion to
occur. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000).
Ser. No. 78/052,872
11
It is pointed out, however, that the record herein
contains absolutely no evidence of any kind with respect to the
nature and extent of any instances of actual confusion. Plainly,
assertions by applicant's counsel are not evidence. Moreover,
the declaration of Ms. Bjorndahl-Jay, which constitutes the sole
evidentiary submission offered by applicant, contains no
averments concerning the presence or absence of any incidents of
actual confusion and the extent to which, if any, applicant's
services and registrant's goods and services have coexisted in
the same markets under the respective marks. Because the absence
of evidence of actual confusion is not evidence of the absence of
actual confusion, the length of time and conditions under which
there has been contemporaneous use of the marks at issue without
any incidents of actual confusion is accordingly not a relevant
du Pont factor in this appeal.
Finally, applicant maintains in its initial brief that
there is no likelihood of confusion inasmuch as purchasers of its
services "are highly sophisticated customers who do not shop for
competitive dietary supplements ... offered by any other company
selling dietary supplements," including registrant. However, as
indicated earlier in this opinion, the customers for the dietary
supplements sold by applicant through its retail distributorship
services for such products are not limited to pre-selected
medical patients who are referred to applicant by two physicians
on the East Coast. Instead, in light of the absence of any
restrictions as to classes of purchasers or channels of trade in
the recitation of applicant's services as set forth in its
Ser. No. 78/052,872
12
application, customers for its services must be considered to
encompass consumers of all types, including ordinary consumers
who have elected to try various dietary supplements without first
obtaining the advice of a medical practitioner. Nevertheless,
even assuming that purchases of dietary supplements, through the
services offered by such providers thereof as applicant and
registrant, will be made with at least some degree of care, it is
well settled that the fact that consumers may indeed exercise
deliberation in choosing the respective goods and services "does
not necessarily preclude their mistaking one trademark [or
service mark] for another" or that they otherwise are entirely
immune from confusion as to source or sponsorship. Wincharger
Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA
1962). See also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB
1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983).
We accordingly conclude that consumers and potential
customers, who are familiar or acquainted with registrant's "NSI"
mark for "dietary supplements and vitamins, minerals, herbs,
herbal extracts and herbal combinations, all for use as dietary
supplements," and its "NSI NEUTRACEUTICAL SCIENCES INSTITUE" and
design mark for "computerized on-line ordering services in the
field of vitamins and dietary supplements; [and] mail order
services featuring vitamins and dietary supplements," would be
likely to believe, upon encountering applicant's "NSI" and design
mark for the services of a "retail distributorship featuring
dietary supplements," that the respective goods and services
Ser. No. 78/052,872
13
emanate from, or are sponsored by or associated with, the same
source.
Decision: The refusal under Section 2(d) is affirmed.