Cal India Foods Intl.

Trademark Trial and Appeal Board

May 15, 2012

No. 77689799 (T.T.A.B. May. 15, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: May 15, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cal India Foods Intl.
________

Serial No. 77689799
_______

Charles C. Valauskas of Valauskas Corder LLC for Cal India
Foods Intl.

Fong Hsu, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).1
_______

Before Bucher, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Cal India Foods Intl. filed an application to register
on the Principal Register the mark AST (in standard
characters) for, inter alia, the following goods, as
amended:
Dietary and nutritional supplements, namely
enzyme supplements for use in maintaining healthy
joint function, cardiovascular health, intestinal

1 The above application originally was examined by another
examining attorney, but was reassigned during prosecution to the
attorney whose name is shown.

Ser. No. 77689799
2
health, and digestive health not sold through
mail order channels

in International Class 5.2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark AST SPORTS SCIENCE (in typed or standard
characters),3 previously registered on the Principal
Register for the following goods:
Vitamin food supplements, namely, muscle building
powders, metabolic tablets and meal replacement
drinks for use in exercise, nutrition, body-
building, and weight training, sold through mail
order channels

in International Class 54 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Likelihood of Confusion
Turning now to the matter under appeal, our
determination of the issue of likelihood of confusion is

2 Application Serial No. 77689799 was filed on March 12, 2009,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce.
3 Trademark Rule 2.52(a) was amended in 2003 to refer to “typed
drawings” as “standard character” drawings. See Trademark Rule
2.52(a); 37 C.F.R. 2.52(a).
4 Registration No. 2333274 issued on March 21, 2000. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
Ser. No. 77689799
3
based on an analysis of all of the probative facts in
evidence that are relevant to the factors outlined 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key,
though not exclusive, considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533 (Fed. Cir. 1997).
Similarity of the Goods
Turning first to our consideration of the recited
goods, we must determine whether consumers are likely to
mistakenly believe that they emanate from a common source.
It is not necessary that the goods at issue be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient instead that the respective goods are related
in some manner, and/or that the conditions and activities
surrounding the marketing thereof are such that they would
or could be encountered by the same persons under
circumstances that could give rise to the mistaken belief
Ser. No. 77689799
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that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s goods are identified as
Dietary and nutritional supplements, namely
enzyme supplements for use in maintaining healthy
joint function, cardiovascular health, intestinal
health, and digestive health not sold through
mail order channels

while registrant’s goods are identified as
Vitamin food supplements, namely, muscle building
powders, metabolic tablets and meal replacement
drinks for use in exercise, nutrition, body-
building, and weight training, sold through mail
order channels.

To state the obvious, both applicant and registrant provide
dietary or food supplements intended to improve a user’s
health, nutrition or fitness. Thus, applicant’s goods
appear on their face to be related to those of registrant.
The examining attorney further has submitted evidence
from informational and commercial Internet web sites
suggesting that both applicant’s and registrant’s types of
goods may emanate from a common source.5 These include
vitaminshoppe.com; gnc.com; goodearthnaturalfoods.com;
dixienutrition.com; and vitacost.com. In addition, the
examining attorney has made of record seven use-based

5 Examining attorney’s January 22, 2010 Office action.

Ser. No. 77689799
5
third-party registrations which show that various entities
have adopted a single mark for both dietary and nutritional
supplements as well as vitamin and food supplements. See,
for example:
Registration No. 2039784 for vitamin, mineral,
herbal supplements; nutritional food supplements
nutritional drink mix used as a meal replacement;

Registration No. 3687319 for, inter alia, dietary
and nutritional supplements, food supplements;

Registration No. 2891450 for, inter alia, dietary
supplements, vitamin supplements, mineral
supplements, nutritional supplements, vitamins,
dietary food supplements; and

Registration No. 2443047 for nutritional
supplements, namely vitamins and dietary
supplements.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
In this case, the evidence of record supports a
finding that the same marks are used to identify goods of a
kind that are identified in both the application at issue
and the cited registration. This evidence demonstrates the
related nature of the goods at issue, and this du Pont
factor favors a finding of likelihood of confusion.
Ser. No. 77689799
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Channels of Trade and Classes of Consumers
We note applicant’s argument that the goods identified
in the subject application and cited registration recite
specific trade channel limitations. Specifically,
registrant’s goods are available by mail order and
applicant’s goods specify that they are not available by
mail order. However, there is no evidence of record that
these trade channels are mutually exclusive. Furthermore,
and as noted above, it is not necessary for the goods to be
directly competitive or move in the same trade channels to
support a finding of likelihood of confusion. See In re
International Telephone & Telegraph Corp., 197 USPQ at 911.
In this case, applicant and registrant use similar
marks to identify dietary, nutritional, vitamin and food
supplements. The Internet evidence and third-party
registrations made of record by the examining attorney show
that these goods are related and may emanate from a common
source. Moreover, the evidence of record points to
potential overlap in consumers. Specifically, purchasers
of dietary and nutritional supplements may also purchase
vitamin food supplements. As a result, we find this du
Pont factor either to be neutral or to only slightly favor
a finding that confusion is unlikely.
Ser. No. 77689799
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Similarity of the Marks
We now consider whether the marks are similar or
dissimilar in their entireties as to appearance, sound,
connotation and commercial impression. Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The test
under the first du Pont factor 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
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. See Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
In comparing applicant’s AST mark and registrant’s AST
SPORTS SCIENCE mark, we first note that applicant has
incorporated the registered mark in its entirety. In cases
such as this, a likelihood of confusion has frequently been
Ser. No. 77689799
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found. “When one incorporates the entire arbitrary mark of
another into a composite mark, the inclusion of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion. [Internal citations
omitted]. An inclusion of a merely suggestive or
descriptive element, of course, is of much less
significance in avoiding a likelihood of confusion.” The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design is similar the mark CONCEPT). See also Coca-Cola
Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer
soldier design is similar to the mark BENGAL); and In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (E-CELL is similar to the mark E).
In this case, there is no evidence of record that AST
has any meaning in connection with applicant’s or
registrant’s goods.6 While applicant made of record
evidence from an Internet dictionary that “AST has over 100
meanings”7 none of these meanings appears relevant as
applied to applicant’s goods or those of registrant. As
such, AST appears to be arbitrary as applied to both. As

6 We note that in its application applicant indicates it does
business as “Advanced Supplemental Therapies.”
Ser. No. 77689799
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for the term SPORTS SCIENCE in registrant’s mark, applicant
made of record the following definition: “the study of
anatomy and physiology, kinesiology, and psychology as
related to athletes and sports.”8 We observe that SPORTS
SCIENCE is not disclaimed in registrant’s mark.
Nonetheless, the definition supplied by applicant indicates
that SPORTS SCIENCE suggests a function or feature of
applicant’s vitamin food supplements for use in exercise,
nutrition, body building and weight training, namely, that
they are intended to improve the performance of athletes.
Although we must compare the marks in their
entireties, one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, (Fed. Cir. 1985)
(“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 the ultimate conclusion rests
on consideration of the marks in their entireties.”). In
this case, the suggestive term SPORTS SCIENCE in

7 Applicant’s June 11, 2010 request for reconsideration, p. 6 and
Exhibit F.
8 Dictionary.com, submitted as Exhibit A to applicant’s December
7, 2009 communication.
Ser. No. 77689799
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registrant’s mark clearly has less source-identifying
significance as compared to the arbitrary first term AST.
Based upon the foregoing, we find that when
encountering applicant’s AST mark and registrant’s AST
SPORTS SCIENCE mark in connection with their respective
goods, consumers are likely to view both marks as
variations of each other, and therefore as indicators of a
single source. Thus, despite the fact that the
registrant’s mark includes additional, less-distinctive
wording SPORTS SCIENCE, the marks are more similar than
dissimilar in appearance, sound, connotation and commercial
impression. Accordingly, this du Pont factor favors a
finding of likelihood of confusion.
Strength of Mark in the Cited Registration
Applicant argues that “a number of registrations have
issued that include the ‘AST’ component for use on goods
that the Examining Attorney has opined are related.”9 In
support of its position, applicant made of record, inter
alia, copies of the following three third-party
registrations of AST and AST-formative marks:10

9 Applicant’s brief, p. 13.
10 Applicant made of record additional third-party registrations
and applications for marks that include the letters “AST” in
context that renders them unlike the marks at issue herein, and
thus not probative on the issues before us. These include such
marks as EQUASTASIS; BLAST; and ASTON. Furthermore, it is
settled that pending applications are not probative on the issue
Ser. No. 77689799
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Registration No. 3315499 for the mark AST for
Inactive vehicles for use in compounding of
pharmaceuticals and medicines, and

Inactive vehicles for use in the delivery of
pharmaceuticals and medicines;

Registration No. 3460974 for the mark AST-120 for
Pharmaceutical preparations for use in the
treatment of renal disease, liver disease,
diabetes mellitus, Crohn's disease, and gastro-
intestinal disease; and

Registration No. 3206836 for the mark CONTROL AST (AST
disclaimed) for
Medical diagnostic reagents for diabetes
monitoring; and Medical diagnostic test strips
for use in diabetes monitoring, and

Medical equipment, namely instruments and
biofeedback sensors for biotechnology
applications, namely, instruments and sensors for
measuring glucose levels and instruments and
sensors for diabetes monitoring; Medical drug
delivery systems comprised of instruments and
apparatus for measuring dosages and delivering
pharmaceuticals, namely, medical pumps, pens and
syringes; and Medical instruments and apparatus
for drawing or sampling blood or other bodily
fluids.

Applicant’s evidence of third-party registrations is
entitled to limited probative value. Registrations are not
evidence of use of the marks shown therein; thus, they are
not proof that consumers are familiar with such marks so as

of the strength of the mark in a cited registration.
Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463
(TTAB 2003) (applications show only that they have been filed).

Ser. No. 77689799
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to be accustomed to the existence of the same or similar
marks in the marketplace. See Smith Bros. Mfg. Co. v.
Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973);
AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1407, 177
USPQ 268 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). However,
these registrations, similar to a dictionary definition,
may be used to demonstrate that a particular term has some
significance in an industry. In this case, the third-party
registration evidence, consisting of three probative third-
party registrations, tends to indicate that AST may possess
significance in the field of medical diagnostic and
pharmaceuticals. However, this evidence falls short of
establishing that the term has a specific meaning in this
field such that consumers would look to other elements to
determine source.
It further is settled that while third-party
registrations may be used to demonstrate that a term may be
weak in a particular field, the existence of such
registrations “cannot justify the registration of another
confusingly similar mark.” See Plus Products v. Star-Kist
Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). In any event,
even if we were to find, based on applicant’s evidence,
that registrant’s mark is weak and entitled to a narrow
Ser. No. 77689799
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scope of protection, the scope is still broad enough to
prevent the registration of a highly similar mark for
related goods. See In re Farah Manufacturing Co., Inc.,
435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971). As a result,
this factor is neutral in our likelihood of confusion
determination.
Summary
In summary, weighing all of the relevant du Pont
factors, we find that a likelihood of confusion exists.
Decision: The refusal to register is affirmed.