Charles L. Schel

Trademark Trial and Appeal BoardNov 3, 2011

No. 77756102 (T.T.A.B. Nov. 3, 2011)

Mailed: November 3, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Schel ________ Serial No. 77756102 _______ Steven L. Smith of O’Banion & Ritchey LLP for Charles L. Schel. Curtis W. French, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Quinn, Zervas and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Charles L. Schel (“applicant”) filed a use-based application for the mark CELLULIFE, in standard character form, for “dietary and nutritional supplements; dietary supplements for human consumption; nutraceuticals for use as a dietary supplement; nutritional supplements,” in Class 5. The examining attorney refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used in connection with the listed goods so resembles the THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77756102 2 registered mark CELLLIFE, in typed drawing form, for “vitamins, minerals and dietary food supplements,” in Class 5, as to be likely to cause confusion.1 As a preliminary matter, the examining attorney objected to 17 third-party registrations that applicant attached to his brief on the ground that they were not timely filed. The third-party registrations had not been previously made of record. Applicant provided no explanation for the late submission of the third-party registrations. Trademark Rule 2.142(d) reads as follows: The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. The examining attorney’s objection is sustained and we have not considered the third-party registrations attached to applicant’s brief. In his brief, applicant contends that “the Registrant does not appear to exist”2 and “there does not appear to be any products sold under the mark.”3 However, the certificate of registration is prima facie evidence of the 1 Registration No. 1785193, issued August 3, 1993; renewed. 2 Applicant’s Brief, p. 1. 3 Applicant’s Brief, p. 2. Serial No. 77756102 3 validity of the registration and the registrant's exclusive right to use the mark in connection with the goods specified in the registration. Section 7(b) of the Trademark Act of 1946, 15 U.S.C. § 1057(b). Applicant’s argument that applicant does not exist and that it does not sell any goods under the mark amounts to a collateral attack on the validity of the registration. An ex parte proceeding is not the proper forum for such a challenge. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970) (“it is not open to an applicant to prove abandonment of [a] registered mark” in an ex parte proceeding; thus, the “appellant's argument … that [a registrant] no longer uses the registered mark … must be disregarded.”). Cf. In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971) (applicant's argument that its use antedated a registered mark was effectively an improper collateral attack on the validity of the registration, which should have been made in a cancellation proceeding). According to the record before us, the registration is valid and we must give effect to its description of goods. Cosmetically Yours, Inc. v. Clairol Inc., 165 USPQ at 517 (“As long as the registration relied upon . . . remains uncanceled, it Serial No. 77756102 4 is treated as valid and entitled to the statutory presumptions.”). Our determination of likelihood of confusion 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 likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). A. The similarity or dissimilarity and nature of the services, channels of trade and classes of consumers. Applicant is seeking to register its mark for, inter alia, dietary and nutritional supplements. Registration No. 1785193, the cited registration, is registered for, inter alia, dietary food supplements.” Nutritional or dietary supplements are products intended to bolster a person’s health by adding a component believed to be inadequately supplied by diet. These products may be vitamins, minerals, herbs or other plant-derived Serial No. 77756102 5 preparations, amino acids or substances such as enzymes or organ tissues.4 Accordingly, the goods are in part legally identical. Since dietary and nutritional supplements are comprised of vitamins and minerals and registrant’s description of goods includes vitamins and minerals, to the extent that the goods are not legally identical, they are otherwise closely related. Because the goods described in the application and cited registration are, in part, legally identical, we must presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the 4 Fisher, Michele C., “Nutritional Supplements,” Grolier Multimedia Encyclopedia (2011). The Board may take judicial notice of standard reference works, B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (encyclopedias may be consulted); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001); Sprague Electric Co. v. Electrical Utilities Co., 209 USPQ 88, 96 n.3 (TTAB 1980), including online reference works that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 77756102 6 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”). In this regard, we note that nutritional supplements “are easy to find and can be purchased by anyone of any age in grocery stores, pharmacies, and health-food stores, through catalogs, and over the Internet.”5 B. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont factor focusing 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., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful that where, as here, the goods are, in part, legally identical or otherwise closely related, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between 5 Fisher, Michele C., “Nutritional Supplements,” Grolier Multimedia Encyclopedia (2011). Serial No. 77756102 7 the goods. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate 100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of E-Systems, Inc. v. Environmental Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980). Moreover, 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 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 USPQ2d 1835, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). In making this determination, we must consider the recollection of the average purchaser who normally retains only a general, rather than a specific, impression of the marks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, the average purchaser is a consumer interested in their health and fitness through the use of nutritional supplements. “People who take these supplements believe that they are getting exceptional Serial No. 77756102 8 health benefits, such as stronger bones, improved memory, superior athletic performance, or a reduced risk of developing certain chronic diseases.”6 The marks CELLLIFE and CELLULIFE are similar in appearance: both marks begin with the prefix word “Cell” and end with the suffix word “Life.” The only difference is the letter “U” in the middle of the mark CELLULIFE. For the same reason the marks sound similar. Both marks are coined terms. A “cell” is “the basic structural unit of all organisms.”7 To the extent that a consumer perceives the prefix “cellu” in applicant’s mark as representing the word “cellular,” “cellular” means “pertaining to or characterized by cellules [minute cells] or cells.”8 Accordingly, both marks engender the commercial impression of cell life or, more specifically, providing healthful benefits by promoting cell life. In this regard, applicant’s specimen states the following: CelluLife is a Dietary Supplement [sic] which has shown to be of value as a means to maintain a healthy immune system. The active ingredients in CelluLife help support the body’s natural cell regeneration process which helps fight illness, disease and 6 Fisher, Michele C., “Nutritional Supplements,” Grolier Multimedia Encyclopedia (2011). 7 The American Heritage Dictionary of the English Language (Unabridged), p. 333 (2nd ed. 1987). 8 Id. at 334. Serial No. 77756102 9 accelerate recovery from physical injury. In similar circumstances, the Board and courts have found that the slight differences in the marks were not sufficient to prevent a likelihood of confusion. V-M Corp. v. Mayfair Sound Products, Inc., 480 F.2d 898, 178 USPQ 477, 478 (CCPA 1973) (VOICE MAGIC so resembles VOICE-O- MATIC that confusion is likely); Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ 1701 (TTAB 2010) (MAG STAR for flashlights so resembles MAXSTAR for electric lanterns as to be likely to cause confusion); UMG Recordings Inc. v. O’Rourke, 92 USPQ 1042 (TTAB 2009) (MTOWN CLOTHING for clothing so resembles MOTOWN for clothing as to be likely to cause confusion); Brown Shoe Co. v. Robbins, 90 USPQ 1752 (TTAB 2009) (PALOMITA for clothing so resembles PALOMA for clothing as to be likely to cause confusion); Centraz Industries Inc. v. Spartan Chemical Co., 77 USPQ2d 1698 (TTAB 2006) (iSHINE for floor-finishing preparations so resembles ICE SHINE for the same products as to be likely to cause confusion); Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301 (TTAB 2004) (ONCASE for therapeutic compositions so resembles ONCONASE for pharmaceuticals as to be likely to cause confusion). Serial No. 77756102 10 Applicant argues that the examining attorney improperly dissected his mark by eliminating the letter “U” from consideration and that “[a] visual comparison between the marks CELLULIFE and CELLLIFE show differences that are immediately recognizable with even a casual look by a consumer. … This is particularly true with the sophisticated consumers that have an interest in the specialty products of the Applicant.”9 As indicated above, a side-by-side comparison of the marks is not the test. Moreover, we disagree with applicant’s contention that the differences between the marks are immediately recognizable with even more than a casual look. We find that the marks are very similar in appearance. Applicant’s reference in his brief to sophisticated consumers is not supported by any evidence in the record or the description of goods. As indicated above, what we were able to glean from a standard reference book was that nutritional supplements “are easy to find and can be purchased by anyone of any age in grocery stores, pharmacies, and health-food stores, through catalogs, and over the Internet.”10 Indeed, in the absence of any 9 Applicant’s Brief, pp. 5-6. 10 Fisher, Michele C., “Nutritional Supplements,” Grolier Multimedia Encyclopedia (2011). Serial No. 77756102 11 restriction in the descriptions of goods, consumers would include ordinary ones, who would be expected to exercise nothing more than ordinary care in making their purchases. Accordingly, applicant’s argument that his dietary food supplements are sold to discriminating, sophisticated purchasers who presumably pay close attention to trademarks is neither supported by the record nor reflected in the description of goods. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration). Applicant also argues that applicant’s mark engenders the commercial impression “sell you life,” suggesting that the products will provide life.11 First, applicant’s argument is contradicted by the information provided on the label stating that that the products “support the body’s natural cell regeneration,” thus, suggesting that CELLULIFE promotes cell life. Second, even if some consumers perceive the commercial impression of applicant’s mark to be “sell you life,” suggesting that the products will provide life, that commercial impression is not so 11 Applicant’s Brief, pp. 7-8. Serial No. 77756102 12 different from that of registrant’s mark (i.e., promoting cell life). In view of the foregoing, we find that the similarities between the marks outweigh the differences and that applicant’s mark CELLULIFE is similar to registrant’s mark CELLLIFE in terms of appearance, sound, meaning and commercial impression. C. Balancing the factors. The du Pont factors require to us to consider the thirteen factors for which evidence has been made of record in likelihood of confusion cases. In view of the facts that the marks are similar, the goods are, in part, legally identical, and the presumption that the goods move in the same channels of trade and are available to the same classes of consumers, we find that applicant’s mark CELLULIFE for “dietary and nutritional supplements; dietary supplements for human consumption; nutraceuticals for use as a dietary supplement; nutritional supplements” so resembles the mark CELLLIFE for “vitamins, minerals and dietary food supplements” as to be likely to cause confusion. In reaching this conclusion, we have carefully considered all of the evidence pertaining to the relevant Serial No. 77756102 13 du Pont factors, as well as all of applicant’s arguments with respect thereto (including any evidence and arguments not specifically discussed in this opinion). Decision: The refusal to register is affirmed.