Aloe Vera of America, Inc.

Trademark Trial and Appeal BoardMar 23, 2012

No. 77629648 (T.T.A.B. Mar. 23, 2012)

Mailed: March 23, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Aloe Vera of America, Inc. ________ Serial No. 77629648 _______ Elisabeth A. Evert of Hitchcock Evert LLP for Aloe Vera of America, Inc. Alex Seong Keam, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Holtzman, Wellington, and Ritchie, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Aloe Vera of America, Inc. (“applicant”) has filed an application to register on the Principal Register the mark FOREVER NUTRI-LEAN (in standard character form) for: Dietary and nutritional supplements in capsule, liquid and powdered form for weight management in International Class 5; and Aloe vera gel drinks in International Class 32.1 1 Serial No. 77629648, filed December 9, 2008, based on an allegation of first use anywhere and in commerce on August 21, 2008 for both classes of goods. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77629648 2 Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the previously registered mark NUTRILEAN+ (in standard character form) for “meal replacement in powder, liquid or bar form, excluding cereal based snack food bars or food bars in the snack food category” in International Class 5.2 Applicant concurrently appealed the final refusal of its application and a request for reconsideration. The examining attorney denied the request for reconsideration. Both applicant and the examining attorney have filed briefs. As discussed below, the refusal to register is affirmed. Our determination of the examining attorney's refusal to register the mark under Section 2(d) of the Trademark Act is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. 2 Registration No. 3753626, issued March 2, 2010. Serial No. 77629648 3 Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We first consider the relatedness of applicant's and registrant’s goods. In this regard, there is little dispute. The examining attorney has consistently asserted in the office actions and her appeal brief that the respective goods are “highly related” and applicant has not made any serious effort to rebut this or argue that the goods are unrelated. Indeed, applicant does not even address this du Pont factor in its brief. Regardless of applicant’s failure to address this factor, we note it is the examining attorney’s burden to establish at least a viable relationship between the goods. In this regard, we find the record created by the examining attorney establishes that registrant’s meal replacement products (in powder, liquid and bar form) are closely related to applicant’s dietary and nutritional supplements as well as applicant’s aloe vera gel drinks. For example, she has submitted several use-based, third-party registrations which individually cover both meal replacement products and applicant’s nutritional supplements and aloe vera gel drinks. This evidence serves to suggest that the listed goods are of a type that may emanate from a single source. See In re Albert Trostel & Serial No. 77629648 4 Sons, 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988), aff'd (unpublished) No. 88-1444 (Fed. Cir. Nov. 14, 1988). In further support, the examining attorney submitted internet evidence showing meal replacement products being offered for sale in proximity to dietary and nutritional supplements on the same websites. Other third-party websites tout their products which include meal replacement goods as well as nutritional and dietary supplements. Based on the record, we find that the goods are related and resolve the du Pont factor regarding the similarity of the goods against applicant. We now consider the similarity and dissimilarity between the marks. Our focus is on whether the marks are similar in sound, appearance, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Applicant's mark is a combination of the terms FOREVER and NUTRI-LEAN, and applicant maintains that FOREVER is its house mark. Brief, p. 2 (“Applicant has used the word FOREVER as a distinctive, ‘signature’ brand mark in many of its family of trademarks for the nutritional and wellness products it sells...”). The latter term in applicant's Serial No. 77629648 5 mark, NUTRI-LEAN, is nearly identical to registrant’s mark, NUTRILEAN+. The differences are slight -- a hyphen in applicant’s proposed mark and the “+” symbol at the end of registrant’s mark. The hyphen is a connector and the plus symbol will be perceived in a puffery manner suggesting some added value in the goods. In any event, neither the hyphen nor the plus symbol serves to distinguish applicant’s use of the NUTRI-LEAN term from the registered mark, NUTRILEAN+. Thymo Borine Laboratory v. Winthrop Chemical Co., Inc., 155 2d 402, 69 USPQ 512, 514 (CCPA 1946) (the hyphen in applicant's mark THY-RIN has no significance); Charette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989) (registrant's PRO-PRINT and petitioner's mark PROPRINT are identical except for the division of registrant's mark by a hyphen between the syllables); Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB 1978) (FAST-FINDER with a hyphen is substantially identical to the mark FASTFINDER without a hyphen). The two elements, NUTRI-LEAN and NUTRILEAN+, are nearly identical in appearance but they will also be pronounced in the same, or nearly the same, fashion depending on whether consumers decide to verbalize the “plus” symbol. Thus, we are presented with a situation where applicant seeks to register the combination of its Serial No. 77629648 6 house mark with a term that is essentially the same a registered mark. There is a line of cases holding that the addition of other matter, such as a house mark, primary mark or other material, to one of two otherwise similar marks, will not necessarily be sufficient to distinguish the marks as a whole. See, generally, First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988); In re Champion Oil Company, 1 USPQ2d 1920 (TTAB 1986); In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985); and In re C. F. Hathaway Company, 190 USPQ 343 (TTAB 1976). On the other hand, the addition of a house mark or other matter has been found sufficient to distinguish the marks under circumstances where the registered mark, or appropriated matter, is highly suggestive or merely descriptive or has been frequently used or registered by others in the field for the same or related goods or services. See, e.g., Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005); In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (MEN'S WEAR for a semi-monthly magazine not confusingly similar to MMI MENSWEAR for fashion consulting for men because “MENSWEAR” is merely descriptive of such services). Serial No. 77629648 7 With the above lines of cases in mind, we look at the nature of the term NUTRI-LEAN or NUTRILEAN+ in determining registrant’s mark’s scope of protection. We initially note that it is on the Principal Register, without a claim of acquired distinctiveness, and, as such, we must presume it is not descriptive. Applicant has attempted to show such a weakness by presenting copies of registrations for marks (covering goods in classes 5 and 32) that contain either the element NUTRI or LEAN. However, applicant does not point to any registration for a mark that combines both of these two elements, other than the registered mark. Applicant has not presented evidence of third-party use of such combination. Even if we are to conclude that NUTRI is an abbreviation for “nutrition/ nutritious” and LEAN is a commonly adopted term in marks and suggestive for food products, we are not persuaded that the combination of these terms is so commonplace or highly suggestive that consumers are unlikely to be confused when confronted with applicant’s use of FOREVER NUTRI-LEAN and registrant’s mark NUTRILEAN+. In other words, the record does not establish that the term NUTRILEAN is so suggestively weak that registrant’s mark should not be protected from others adopting the same term, or essentially the same, for use on related goods. Accordingly, applicant has not shown the Serial No. 77629648 8 circumstances of this case are akin to those found in cases such as Knight Textile. With regard to the commercial impression or meaning of the marks, as noted earlier, there is some suggestive nature of NUTRILEAN+ and NUTRI-LEAN when used in connection with “dietary and nutritional supplements,” “aloe vera gel drinks,” and “meal replacement in powder, liquid or bar form.” That is, NUTRI-LEAN and NUTRI-LEAN may conjure nutrition and weight-loss (“becoming lean”) attributes of the goods. To the extent that this suggestive meaning is perceived by potential consumers, both marks convey this same meaning. We must consider the marks in their entireties and, in doing so, do not ignore the FOREVER term in applicant’s mark. It appears first and, indeed, adds a slightly different connotation to applicant’s mark that is not found in the registered mark. However, the term FOREVER does not create such a significantly new or different meaning to applicant’s mark that distinguishes it, as a whole, from the registered mark. Rather, consumers are likely to attribute a “permanent” or “always” meaning to the term FOREVER inasmuch as it is modifying the term NUTRI-LEAN. In attempting to distinguish the marks, applicant places great emphasis on the FOREVER element of its Serial No. 77629648 9 proposed mark and ownership of registrations for marks that include this term: ...Applicant owns no fewer than forty-five (45) active United States trademark registrations containing the word FOREVER...[and] approximately 75-80% of all U.S. registrations presently existing in Class 005 that contain the word FOREVER and are used in connection with nutritional and wellness products owned by applicant. Of this group, Applicant’s registrations are the only ones to have the word FOREVER in the position of the initial (or prefix) word. Thus, Applicant’s use of FOREVER in the initial position, in Class 005, for a wide variety of marks, is substantially exclusive. Brief, p. 3. Applicant concludes: ...through its quarter-century of use of marks containing the initial word FOREVER for its line of nutritional and wellness products, Applicant’s house brand FOREVER has achieved distinctiveness and serves as a source indicator in the minds of the relevant consumer. The addition of Applicant’s well-known FOREVER prefix therefore renders FOREVER NUTRI-LEAN not confusingly similar to the NUTRILEAN+ mark of the cited registration. Brief, p. 5. The mere fact that applicant’s house mark appears first and may be well-known does not, by itself, remove the likelihood of confusion. See, generally, In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) (LE CACHET DE DIOR for shirts confusingly similar to CACHET for dresses); In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY'S ACCU TUNE for automotive service centers confusingly similar to Serial No. 77629648 10 ACCUTUNE for automotive testing equipment); and Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (MENNEN SKIN SAVERS for hand and body lotion confusingly similar to SKIN SAVERS for face and throat lotion). Consumers familiar with registrant’s mark NUTRILEAN+ on meal replacement products are likely to assume, upon encountering applicant’s mark FOREVER NUTRI- LEAN on closely related goods, that the goods derive from the same source and that the house mark simply identifies what had previously been an anonymous source for the goods. See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1367 (TTAB 2007)(“Indeed, a consumer who has been told about the advantages of registrant's MVP casino services is likely to believe that the CLUB PALMS MVP casino services is simply the now identified source of the previously anonymous MVP casino services.”) In view of the foregoing, we find that the marks, when considered as a whole, are similar in appearance, meaning, sound and commercial impression, and we resolve this du Pont factor against applicant. Again, our finding in this regard is based mainly on applicant’s incorporation of the term, NUTRI-LEAN, that is essentially identical to registrant’s mark, NUTRILEAN+. The evidence does not show NUTRILEAN or NUTRI LEAN to be so suggestively weak to Serial No. 77629648 11 permit such an adoption when both marks would be used on related goods. In conclusion, because of the similarity in the marks and the goods, as well as the similarity in the trade channels in part with respect to nutritional supplements and meal replacement products, we find that purchasers familiar with registrant's goods offered under the mark NUTRILEAN+ would be likely to believe, upon encountering applicant's mark FOREVER NUTRI-LEAN for the nutritional and dietary supplements as well as aloe vera gel drinks that they originate with or are somehow associated with the same entity. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.