Biotab Nutraceuticals, Inc.v.Life Smart Labs, Inc.

Trademark Trial and Appeal BoardSep 27, 2012

No. 92052031 (T.T.A.B. Sep. 27, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 27, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Biotab Nutraceuticals, Inc. v. Life Smart Labs, Inc. _____ Cancellation No. 92052031 _____ Jay Stein of Finestone & Richter for Biotab Nutraceuticals, Inc. Life Smart Labs, Inc., pro se. _____ Before Holtzman, Bergsman and Wellington, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Biotab Nutraceuticals, Inc. (“petitioner”) has filed a petition to cancel Registration No. 3715209 for the mark EXTENGIN, in standard character form, for “herbal male enhancement capsules,” in Class 5.1 As the ground for cancellation, petitioner has alleged that respondent’s mark is likely to cause confusion with petitioner’s registered mark ExtenZe, in standard character form, for “vitamin supplements,” in Class 5.2 Petitioner alleged that its vitamin supplements are a “male enhancement product.” Respondent, in its answer, admits that petitioner is the owner of its pleaded registration, but denies the remaining allegations in the petition for cancellation. 1 Issued November 24, 2009. 2 Registration No. 3401265, issued on March 25, 2008. Cancellation No. 92052031 2 The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), respondent’s registration file. In addition, petitioner introduced the following testimony and evidence: 1. A notice of reliance on a copy of Registration No. 3401265 for the mark ExtenZe printed from the electronic database records of the U.S. Patent and Trademark Office, showing that the registration is subsisting and owned by petitioner; 2. The testimony deposition of Robert Winter, Jr., petitioner’s General Manager and Marketing Manager; 3. The testimony deposition of Marc E. Hankin, a trademark lawyer, purporting to testify as an expert witness on trademark law; 4. A notice of reliance on the file for abandoned application Serial No. 77726639 for the mark EXTENZITE for “dietary supplements; herbal male enhancement capsules,” in Class 5, filed by respondent; 5. A notice of reliance on the file for cancelled Registration No. 3831324 for the mark XEXTENZITE for “dietary food supplements,” in Class 5, owned by respondent; and 6. A notice of reliance on the file for abandoned application Serial No. 85016507 for the mark EXPANZITE for “herbal male enhancement capsules,” in Class 5, owned by a third party to this proceeding. Respondent did not introduce any testimony or evidence during its testimony period, nor did respondent file a brief. Cancellation No. 92052031 3 Standing As petitioner has properly made its pleaded registration of record, petitioner has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (C.C.P.A. 1982). Priority In a cancellation proceeding, where both parties own registrations, petitioner must prove priority of use. Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) and cases cited therein. Because petitioner's registration is of record, petitioner may rely on the registration as proof that the mark was in use as of the filing date of the underlying application (i.e., July 18, 2007) for the products set forth in the description of goods. See J. C. Hall Company v. Hallmark Cards, Incorporated, 340 F.2d 960, 144 USPQ 435, 437 (CCPA 1965); Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d at 1284. Further, as noted below, petitioner’s witness testified that petitioner has been using the mark ExtenZe in connection with male enhancement products for penis enlargement since 1999. Respondent has not submitted any evidence of use. Consequently, the earliest date on which respondent may rely is the filing date of its underlying application (i.e., May 8, 2009). Brewski Beer Co. v. Brewski Brothers Inc., 47 USPQ2d at 1284 (a respondent may rely on its registration for the purpose of proving that its mark was in use as of the application filing date). In view of the foregoing, petitioner has priority of use both in connection with “vitamin supplements” and male enhancement products. Cancellation No. 92052031 4 Petitioner’s Trademark and Products Petitioner has used its mark in connection with dietary vitamin supplements and nutraceuticals for penis enlargement since November 1999.3 Q. And since when has the ExtenZe mark been used in commerce? A. The ExtenZe mark has been used in commerce since November of 1999. Q. In connection with which goods has the ExtenZe mark been used? A. The ExtenZe mark has been used on consumer goods in International Class 5 on dietary or vitamin supplements, also known as nutraceuticals. Q. And specifically what goods has the ExtenZe mark been used in connection with? A. In particular, the ExtenZe mark has been used on the brand name for the nutraceutical goods aimed at male enhancement, more commonly known as penis enlargement, and female sexual sensitivity.4 Mr. Winter asserts that ExtenZe is the leading brand of male enhancement nutraceutical product in the “entire world.”5 Q. Describe for us, please, the extensiveness in the marketplace of the ExtenZe brand? [sic] A. ExtenZe is the leading brand of male enhancement nutraceutical in the entire world. Q. Describe the extent to which [petitioner] has marketed and promoted the ExtenZe branded goods? [sic] * * * A. Okay. For over a decade the Extenze product has been the subject on an extensive and comprehensive marketing and 3 Winter Dep., p. 5. 4 Winter Dep., p. 5. 5 Winter Dep., p. 6. Cancellation No. 92052031 5 promotional campaign, saturating all forms of media with its advertising, including, television, radio, print media, and the internet. And, in fact, [petitioner] has spent over a hundred million dollars in the last ten years marketing in those manners. The trademark has been promoted at live events, such as sporting events, and trade shows, and conventions. It has had celebrity endorsers, including actors and actresses, athletes and professional race car driver [sic]. In fact ExtenZe has even been the sponsor of the race team of professional driver Kevin Conway. The ExtenZe name is displayed prominently on the race car and on the Nascar driver Kevin Conway’s fire suit. 6 Mr. Winter opined that the ExtenZe mark is famous. Q. Has [petitioner] conducted any market research with respect to the consumer recognition of its ExtenZe mark? A. Yes. Our market research shows that the ExtenZe name has extremely broad name recognition, uniquely points to make enhancement products, and uniquely points to [petitioner’s] goods. In other words, the ExtenZe trademark is famous.7 According to Mr. Winter, ExtenZe is sold by direct marketing, including sales by telephone, internet, and mail order, and by sales in retail stores, including convenience stores, gas stations, grocery stores, health product and specialty stores, and large retail chains such as Wal-Mart and 7-11.8 Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). 6 Winter Dep., pp. 6-7. 7 Winter Dep., p. 7. 8 Winter Dep., pp. 7-8. Cancellation No. 92052031 6 A. The fame of petitioner’s mark. This du Pont factor requires us to consider the fame of petitioner's mark. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by the marks at issue, “by the length of time those indicia of commercial awareness have been evident,” widespread critical assessments and through notice by independent sources of the products identified by the marks, as well as the general reputation of the products and services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and 1309. Although raw numbers of product sales and advertising expenses may have sufficed in the past to prove fame of a mark, raw numbers alone may be misleading. Some context in which to place raw statistics may be necessary (e.g., the substantiality of the sales or advertising figures for comparable types of products or services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1309. Finally, because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it. Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007). While the ExtenZe product is commercially successful, petitioner’s mark does not rise to the level of a famous mark. Petitioner purports to market the leading brand of male enhancement Cancellation No. 92052031 7 nutraceutical but there is no evidence regarding the extent of its sales or the size of the market for such products. Petitioner also asserts that it has spent over hundred million dollars advertising its products over the last ten years. While that is a significant amount of advertising, there is no evidence regarding the number of impressions that the advertising created or how many sales the advertising generated. Petitioner asserted that it conducted market research, but it did not introduce into evidence any market research studies or reports. Finally, there is no evidence on which we can assess consumer awareness of petitioner’s mark such as newspaper articles reporting on the reputation of ExtenZe products. Based on this record, petitioner failed to clearly prove that ExtenZe is a famous mark. B. The similarity or dissimilarity and nature of the goods in the registrations, likely-to- continue channels of trade and classes of consumers. Respondent is seeking to register its mark for “male enhancement capsules.” Petitioner’s mark is registered for “vitamin supplements.” As noted above, Mr. Winter, petitioner’s General Manager and Marketing Manager, testified that the ExtenZe vitamin supplements are specifically “aimed at male enhancement, more commonly known as penis enlargement.” In addition, Mr. Winter testified that petitioner uses the mark ExtenZe as its male enhancement product trademark. Accordingly, petitioner’s vitamin supplements for male enhancement and respondent’s “male enhancement supplements” are legally identical. Because petitioner’s “vitamin supplements” are broad enough to encompass respondent’s male enhancement capsules, we must presume that the channels of trade and classes of purchasers are the same. See American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). Cancellation No. 92052031 8 See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Furthermore, Mr. Winter identified petitioner’s channels of trade during his above noted testimony deposition. Because there are no limitations as to channels of trade or classes of purchasers in the description of goods in respondent’s registration, it is presumed that respondent’s goods move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods, see Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992), including the trade channels identified by Mr. Winter. In view of the foregoing, we find that the goods at issue are identical and that the channels of trade and classes of consumers are the same. C. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the first DuPont factor, which focuses on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. E.g., In re White Swan Ltd., 8 U.S.P.Q.2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, 1042 n.4 (TTAB 1987). In comparing the marks, we are mindful that where, as here, the goods are identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 Cancellation No. 92052031 9 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Further, the test is not whether the marks can be distinguished when subjected to a side- by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Petitioner’s mark is ExtenZe and respondent’s mark is EXTENGIN. The marks are similar in appearance to the extent that they both begin with the prefix term “Exten.” We note that the marks have different suffixes. However, the similar prefix term weighs more heavily in our analysis because upon encountering the marks, consumers will first notice the identical lead prefix. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). While there is no correct pronunciation of a mark, when ExtenZe is used in connection with a male enhancement nutraceutical for the purpose of penis enlargement, it is likely to be Cancellation No. 92052031 10 pronounced as “extends.” Likewise, when respondent’s mark EXTENGIN is used in connection with a male enhancement capsule, it is likely to be pronounced as “extension.” “Extends” and “extension” have similar meanings. “Extends” is defined, inter alia, as “to increase the length or duration of; lengthen; prolong; to extend a visit.”9 A synonym is “lengthen.” “Extension” is defined, inter alia, as “an act or instance of extending.”10 A synonym is “lengthening.” Accordingly, the terms ExtenZe and EXTENGIN have similar meanings and engender similar commercial impressions (i.e., the product will lengthen the user’s penis). In view of the foregoing, we find that the marks are similar in appearance, sound, meaning and commercial impression. D. Balancing the factors. Petitioner’s mark ExtenZe is highly suggestive when used in connection with a male enhancement product for penis enlargement and, therefore, it is entitled to only a narrow scope of protection or exclusivity of use. However, in view of petitioner’s commercial success and market strength, the similarity of the marks, and the identity of the goods, channels of trade and classes of consumers, we find that respondent’s mark EXTENGIN for male enhancement capsules is likely to cause confusion with petitioner’s mark ExtenZe for male enhancement products for penis enlargement. Decision: The petition for cancellation is granted and Registration No. 3715209 will be cancelled in due course. 9 Dictionary.com derived from the RANDOM HOUSE DICTIONARY (2012). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 10 Id.