Bluebonnet Nutrition Corp.

Trademark Trial and Appeal Board

Sep 27, 2007

No. 78260202 (T.T.A.B. Sep. 27, 2007)

Mailed:
27 September 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bluebonnet Nutrition Corp.
________

Serial No. 78260202
_______

John S. Egbert, Esq. for Bluebonnet Nutrition Corp.

Tracy Cross, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Grendel, Drost, and Cataldo, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 9, 2003, applicant Bluebonnet Nutrition Corp.
applied to register the mark RAINFOREST ANIMALZ (in typed
or standard character form) on the Principal Register for
goods ultimately identified as “nutritional supplements for
children” in Class 5. The application (Serial No.
78260202) is based on an allegation of a bona fide
intention to use the mark in commerce.
The examining attorney has refused to register
applicant’s mark on two grounds. First, the examining
THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Ser. No. 78260202
2
attorney has determined that applicant’s mark is not
registrable under Section 2(d) of the Trademark Act (15
U.S.C. § 1052(d)) because it is confusingly similar to the
registered mark RAINFOREST NATURALS in typed or standard
character form for “nutritional and dietary supplements” in
Class 5. The registration (No. 2978317) was issued on July
26, 2005, and it contains a disclaimer of the term
“Naturals.”
In addition, the examining attorney refused to
register applicant’s mark under Section 2(e)(1) of the
Trademark Act because the examining attorney found that the
term RAINFOREST ANIMALZ was merely descriptive of
applicant’s goods. 15 U.S.C. § 1052(e)(1).
After the examining attorney made the refusals to
register final, this appeal and a request for
reconsideration followed.
Descriptiveness
The first issue that we will address is the
descriptiveness issue. “A term is merely descriptive if it
immediately conveys knowledge of a quality, feature,
function, or characteristic of the goods or services with
which it is used.” In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). See also
In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
Ser. No. 78260202
3
1778, 1780 (Fed. Cir. 2003) (A “mark is merely descriptive
if the ultimate consumers immediately associate it with a
quality or characteristic of the product or service”); In
re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217 (CCPA 1978). In any mere
descriptiveness analysis, we do not consider the allegedly
descriptive term in the abstract, but rather in relation to
the goods or services with which it is, or intended to be,
used. MBNA, 67 USPQ2d at 1783 (“Board correctly found
MBNA’s emphasis on the regional theme through marketing
promotions and picture designs provides circumstantial
evidence of how the relevant public perceives the marks in
a commercial environment”). See also Abcor, 200 USPQ at
218. Furthermore, a term is merely descriptive even if it
only describes a single significant quality or property of
the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987); Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 120 USPQ 293, 294
(CCPA 1959).
The examining attorney submits that applicant admits
that its “supplements are shaped like ‘rainforest animals.’
A term that describes the form or shape of a product is
merely descriptive.” Brief at unnumbered p. 12. Applicant
Ser. No. 78260202
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in turn argues that the “[w]ithout the gathering of further
information, the relevant public would believe the mark to
be arbitrary, fanciful, or suggestive… [T]he present mark
is suggestive in that ‘RAINFOREST ANIMALZ’ elicits thoughts
of tropical and adventurous creatures and exotic locations,
but does not immediately convey to the consumer the thought
of nutritional supplements for children.” Brief at 11.
As we pointed out previously, the test is not whether
prospective purchasers can guess what the goods are when
they are presented with the mark in the abstract. In re
Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998). Indeed, we not only consider the mark in
“relation to the goods or services for which registration
is sought, [but we also consider] the context in which the
designation is being used on or in connection with said
goods or services, and the possible significance that it
would have, because of such manner of use, to the average
purchaser of the goods or services.” In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979).
In this case, applicant has acknowledged that its
nutritional supplements for children are “shaped like
various creatures found in the rainforest so as to make the
supplements more attractive to children.” Response dated
April 19, 2006 at 2-3. The examining attorney has
Ser. No. 78260202
5
submitted numerous articles to demonstrate that the term
“rainforest animals” or “animals of the rain forest” are
commonly used terms to describe creatures that inhabit the
rainforest areas1 of the world.
Amazing Rainforest Animals
A collection of rainforest animal pictures, wingspark
[sic] writings, and resource links.
http://asterix.ednet.lsu.edu

Animals of the Rainforest
Now that you have chosen your Rainforest Animal, you
are required to address several questions in your
written report.
www.mmonney49.1hwy.com

A Sampling of Tropical Rainforest Animals
Animals that Live in Rainforests: Ridiculously huge
numbers of animals live in rainforests, including
microscopic animals, invertebrates (like insects and
worms), fish, amphibians, birds, and mammals.
www.enchantedlearning.com

Rainforest Animals
African Forest Elephant
www.blueplanetbiomes.org

Rainforest Animals
There are many species of plants and animals in
rainforests. A common estimate is that approximately
half of the world’s animal species live in
rainforests.
www.rainforestanimals.net

Animals of the Rainforest
The rainforest is home to more than half of the
world’s animals. Colorful and unusual animals dwell

1 A “rainforest” is defined as “a tropical forest, usually of
tall, densely-growing, broad-leaved evergreen trees in an area of
high annual rainfall.” The Random House Dictionary of the
English Language (unabridged) (2d ed. 1987). We take judicial
notice of this definition. University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 78260202
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in all four layers of the forest. All types of
creatures are represented, from tiny insects to large
mammals.
www.srl.caltech.edu

Rain Forest Animals!
The rain forest is home to over 50% of all the animals
in the world. There are millions of different species
of animals in the world’s rain forests.
www.edtech.kennesaw.edu

The examining attorney also submitted evidence that
the term “Animals” is used to describe animal-shaped
nutritional supplements, particular ones intended for use
by children.
Twinlabs Animal Friends Children’s Chewable Vitamins
Bunch-O-Berry
www.vitacost.com

Nature’s Plus – Animal Parade – Grape
www.amazon.com

Children’s Chewable Animal Chews
These delicious animal-shaped tablets make vitamin
time fun time for kids.
www.puritan.com

Animal Shape Vitamin + Extra C Oral
www.webmed.com

Awesome Animals
With its great taste and fun shapes, this formula is
one that both kids and parents enjoy.
www.newvision.com

Therefore, the term “rainforest animals” is commonly
used to refer to the species of animals that live in the
rainforest regions of world. Furthermore, the term
“animals” is used to describe nutritional supplements that
Ser. No. 78260202
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are shaped like animals. Inasmuch as applicant’s goods are
shaped like rainforest animals, the term “rainforest
animals” describes a feature of the goods. A “term or word
which merely describes the form or shape of a product falls
under the proscription of Section 2(e)(1) of the Trademark
Act.” In re Metcal Inc., 1 USPQ2d 1334, 1335 (TTAB 1986).
See also In re Ideal Industries, Inc., 134 USPQ 416, 416
(TTAB 1962)(“It is apparent from the record that
applicant's electrical connector is a wing device with a
threading action ‘like a nut’ and falls within the
definition of a ‘wing nut’”).
We also note that applicant spells the term “animals”
with a “Z” rather than the traditional letter “S” for a
plural. This is not a significant difference. Fleetwood
Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962)
(“TINTZ [is] a phonetic spelling of ‘tints’”). They would
be pronounced identically and there is little difference in
their appearance. A slight misspelling does not convert a
descriptive term into a suggestive one. In re Quik-Print
Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980)
(QUIK-PRINT held descriptive; “There is no legally
significant difference here between ‘quik’ and ‘quick’”).
Therefore, we conclude that, when potential purchasers
encounter the mark RAINFOREST ANIMALZ on nutritional
Ser. No. 78260202
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supplements for children that are in the shape of animals
from the rainforest, they would immediately understand that
the term describes a feature of the goods, i.e., that the
goods are shaped like animals from the rainforest.
We, therefore, affirm the examining attorney’s refusal
to register on the ground that applicant’s mark is merely
descriptive.
Likelihood of Confusion
Now we address the likelihood of confusion issues. We
consider the evidence of record as it relates to the
factors set out in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003); and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The first question is whether registrant’s and
applicant’s goods are related. We must consider the goods
as they are identified in the identifications of goods in
Ser. No. 78260202
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the application and registration. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods [or
services] set forth in the application regardless of what
the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of
goods [or services] are directed”).
Registrant’s goods in this case are “nutritional and
dietary supplements.” Applicant’s goods are “nutritional
supplements for children.” Inasmuch as there are no
restrictions on registrant’s nutritional supplements, we
must assume that they include all types of nutritional
supplements including nutritional supplements for children.
Therefore, the goods are identical in part. “When marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
Ser. No. 78260202
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v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992).
Inasmuch as both applicant’s and registrant’s goods
include the same goods, nutritional supplements for
children, we must assume that there is no difference in the
channels of trade or purchasers.
Where the goods in the application at issue and/or in
the cited registration are broadly identified as to
their nature and type, such that there is an absence
of any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and
type described therein, but that the identified goods
are offered in all channels of trade which would be
normal therefor, and that they would be purchased by
all potential buyers thereof.

In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
See also In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). We
must also assume that registrant’s adult nutritional
supplements would move in similar channels of trade and be
purchased by some of the same consumers, e.g., parents of
small children.
Next, we compare the similarities and dissimilarities
of the marks in their entireties as to their appearance,
sound, meaning, and connotation. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The marks in
this case are RAINFOREST NATURALS and RAINFOREST ANIMALZ.
Ser. No. 78260202
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Both marks are depicted without any stylization so the
marks are similar because they both start with the same
word RAINFOREST. They are different because their second
words are not the same, NATURALS and ANIMALZ. Registrant
has disclaimed the word “Naturals” for its nutritional and
dietary supplements. The term would describe nutritional
and dietary supplements that contain natural ingredients.
“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
See also In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (Disclaimed matter is often “less significant
in creating the mark’s commercial impression”). Thus, we
determine that “Rainforest” is the dominant part of
registrant’s mark. As the first term in applicant’s mark,
“Rainforest” is also more significant than “Animalz” for
supplements, which are frequently shaped like animals.
Therefore, “Rainforest” would also be the dominant part of
applicant’s mark. Palm Bay Imports, 73 USPQ2d 1692 (“To be
sure, CLICQUOT is an important term in the mark, but VEUVE
nevertheless remains a ‘prominent feature’ as the first
Ser. No. 78260202
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word in the mark and the first word to appear on the label.
Not only is VEUVE prominent in the commercial impression
created by VCP's marks, it also constitutes ‘the dominant
feature’ in the commercial impression created by Palm Bay's
mark”).
Because the term “Rainforest” would dominate both
marks, the marks are more similar in appearance and sound
than they are different. Furthermore, both marks have
similar meanings because both would refer to something from
the rainforest, i.e., natural products or animals.
Finally, their commercial impressions are also similar
because consumers familiar with registrant’s nutritional
supplements for adults are likely to believe that
applicant’s identical products for children are simply a
different version of registrant’s supplements. Therefore,
we conclude that the marks in their entireties are similar
in appearance, sound, meaning, and commercial impression.
In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1946 (Fed. Cir. 2004) (“With respect to JOSE, the
Board correctly observed that the term simply reinforces
the impression that GASPAR is an individual’s name. Thus,
in accord with considerable case law, the JOSE term does
not alter the commercial impression of the mark.” The
marks JOSE GASPAR GOLD and GASPAR’S ALE were determined to
Ser. No. 78260202
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be similar) and Plantronics Inc. v. Starcom Inc., 213 USPQ
699, 702 (TTAB 1982) (“Accepting that the marks have
differences in sound and appearance, they are identical in
respect of their dominant features i.e. the prefix "STAR".
Similarity of dominant features must be accorded greatest
weight”).
Applicant does argue that:
Parents use extraordinary caution and care when
choosing nutritional supplements for their children.
The consumers of the Applicant’s goods will use the
utmost attention to detail, and the purchase will be
carefully scrutinized prior to a product selection.
Due to the extraordinary amount of caution and care
used in purchasing these goods, consumers, i.e.,
parents and other concerned adults purchasing
nutritional supplements for a child, will not be
confused as to the source of the [goods].”

Brief at 3.

Applicant bases its argument at least in part on its
understanding that this “is arguably where a consumer’s
sophistication is at its highest peak, especially given the
fact that these supplements are ingested into a child’s
body.” Reply Br. at unnumbered p. 2.
While we do not dispute that parents and others
purchasing nutritional supplements would exercise care when
purchasing these supplements that would be used as a health
aid, we cannot assume that it would be the “extraordinary
caution” that applicant is arguing. See, e.g., Miles
Ser. No. 78260202
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Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1
USPQ2d 1445, 1451 (TTAB 1986) (“We agree with applicant…
that purchasers of vitamins are likely to exercise special
care in making their product selections”). First, we point
out that applicant has submitted no evidence to support its
argument. Second, there is no per se rule that simply
because children “ingest” a product, parents exercise
extraordinary care in these purchasers. Children ingest
numerous products such as candy, French fries, hot dogs,
and cookies. Applicant’s argument should be equally
applicable to these items, but applicant points to no
similar rule for these items that are also ingested by
children. Finally, we add that even if such a rule
applied, we remain convinced that the result would not
change here. Even careful purchasers would most likely be
interested in the ingredients of the nutritional
supplements and their likely effect on the child. They
would not necessarily be able to distinguish the sources of
the marks in this case. In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999) (“We recognize applicant's
attorney's point that its software is expensive and that
purchasers of it are likely to be sophisticated. Suffice
it to say that no evidence in support of these assertions
was submitted. In any event, even careful purchasers are
Ser. No. 78260202
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not immune from source confusion”). Indeed, many careful
purchasers here are likely to believe that applicant’s
RAINFOREST ANIMALZ children’s nutritional supplements are
simply a children’s version of registrant’s supplements.
Finally, applicant argues that “the mark ‘RAINFOREST’
is a weak mark, which is used to describe numerous goods
and services outside of the scope of the Registrant’s
services. A customary search of the TESS list of
registrations and applications containing the term
‘RAINFOREST,’ in various forms, retained over 250
instances.” Brief at 8. Despite its reference to a list,
applicant has not made any registrations or even a list of
record and the mere reference to a search does not make the
evidence of record. Even if a list was actually submitted,
it would not be proper evidence. In re Duofold, Inc., 184
USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record”) and
In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB
1998) (“The Board does not take judicial notice of third-
party registrations, and the mere listing of them is
insufficient to make them of record”). Obviously, any list
submitted with an appeal brief would also have been
untimely. 37 CFR § 2.142(d); In re First Draft Inc., 76
USPQ2d 1183, 1192 (TTAB 2005) (“Submission of the TARR
Ser. No. 78260202
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printout with its appeal brief, however, is an untimely
submission of this evidence”). Therefore, we agree with
the examining attorney’s argument that this statement is
not proper evidence. We note that applicant’s own
description of the search results, to the extent that it
involves “numerous goods and services outside the scope of
the Registrant’s services” (Brief at 8, emphasis added),
indicates that the evidence, even if was properly made of
record, would have very limited relevance.
We add that while applicant argues that “‘RAINFOREST’
is therefore a undeniably dilute mark” (Brief at 9),
inasmuch as applicant has not submitted any evidence on
this point, we cannot agree with applicant. Even if it
were a weak term, it is still entitled to protection when
marks as similar as applicant’s and registrant’s are used
on identical goods. See In re Colonial Stores, 216 USPQ
793, 795 (TTAB 1982) and In re The Clorox Co., 578 F.2d
305, 198 USPQ 337, 341 (CCPA 1978).
We conclude that when the marks RAINFOREST NATURALS
and RAINFOREST ANIMALZ are used on the identified goods,
confusion would be likely.
Decision: The refusals to register the mark on the
grounds of mere descriptiveness and likelihood of confusion
are affirmed.