Edom Laboratories, Inc.v.Glenn Lichter

Trademark Trial and Appeal Board

Mar 30, 2012

No. 91193427 (T.T.A.B. Mar. 30, 2012)

Mailed: March 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Opposition No. 91193427

Edom Laboratories, Inc.

v.

Glenn Lichter

_____

Alec J. McGinn of Kunzler Needham Massey & Thorpe for Edom
Laboratories, Inc.

Todd Wengrovsky of the Law Offices of Todd Wengrovsky, PLLC.
for Glenn Lichter.
______

Before Taylor, Ritchie, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

On August 12, 2009, Glenn Lichter (“applicant”) filed
an application for the standard character mark SUPER CHIRO
TEA for “herbal teas for medicinal purposes” in
International Class 5.1 Edom Laboratories, Inc.,
(“opposer”) opposes registration of the mark on the ground

1 Trademark application Serial No. 77803465, filed August 12,
2009 on the basis of applicant’s bona fide intent to use the mark
in commerce. The word “TEA” in the mark has been disclaimed.
THIS OPINION IS A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91193427

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that it so resembles opposer’s previously used mark CHIRO-
KLENZ for a detoxifying herbal tea, as to be likely to cause
confusion among purchasers.2
In the notice of opposition, opposer pleaded ownership
of trademark application Serial No. 77843368 for the mark
CHIRO-KLENZ for “herbal teas for medicinal purposes;
nutritional supplement for eliminating toxins from the
body.” Because the application issued as a registration on
October 4, 2011,3 prior to the close of opposer’s testimony
period, opposer is entitled to rely on the registration in
this proceeding, as the issued registration has been
properly made of record. See authorities discussed in
TBMP § 314 (3d ed. 2011).
Applicant has denied the salient allegations in the
notice of opposition.
THE RECORD
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b).
The parties have stipulated that they would seek
determination of the merits of this case through the Board’s
Accelerated Case Resolution procedure (“ACR”). In

2 Opposer’s additional claims for lack of bona fide intent to use
and non-ownership of the mark have been withdrawn. In addition,
although this case was consolidated with Opp. No. 91194813 during
the pendency of the proceeding, on August 25, 2011,
Opp. No. 91194813 was withdrawn and dismissed with prejudice.
3 Reg. No. 4033118.

Opposition No. 91193427

3
accordance therewith, the parties agreed to jointly file a
stipulation of undisputed facts, and submit any additional
evidence with their ACR briefs. The parties filed a
stipulation of undisputed facts on November 18, 2011 and
each party filed additional evidence with its or his ACR
brief during the briefing period.4
Applicant’s evidence consists of the Declaration of
Glenn Lichter with accompanying exhibits. Opposer’s
evidence consists of a copy of the registration certificate
for Reg. No. 4033118 as well as a TARR printout for the
registration showing its current status and that title is
vested in opposer; and the following declarations with
accompanying exhibits as noted:
1. Declaration of Arthur Pollack, opposer’s president.
2. Declaration of Allison Pollack, an employee of opposer.
3. Declaration of Martina Washington, a Naturopath at New
Life Wellness Center in Washington, D.C.

4. Declaration of Harold Mitchell, owner of H and M Herbs
and Vitamins in Ft. Oglethorpe, Georgia.

5. Declaration of Charles Joseph Reardon, private
investigator.

6. Declaration of Alec J. McGinn, attorney with Kunzler,
Needham, Massey and Thorpe, with accompanying exhibits.

7. Second Declaration of Alec J. McGinn, with an exhibit.

4 Additional information regarding ACR is available in TBMP
§§ 528.05(a)(2) and 705 (3d ed. 2011), and on the Trademark Trial
and Appeal Board web page of the United States Patent and
Trademark Office (USPTO) website at www.uspto.gov.
Opposition No. 91193427

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FINDINGS OF FACT
Based on the evidence of record and the undisputed
stipulated facts, we make the following findings:
Background Facts
1. Opposer has been in the business of selling CHIRO-KLENZ
tea since at least as early as the mid-1990’s. Stip.
Facts #6; Arthur Pollack Dec., ¶2.
2. Applicant is the President of, manages the day-to-day
operations of, and is in a privity relationship to,
Special Tea Plus, Inc. (“Special Tea”) and Herb
Naturals, Inc. (“Herb Naturals”). Stip. Facts #3.
3. The mark CHIRO-KLENZ was first used in connection with
herbal tea in 1992. Stip. Facts #4.5
4. Special Tea owned a registration for CHIRO-KLENZ (Reg.
No. 1760128) for “tea,” which issued in 1993. Stip.
Facts #5.
5. In 1997, Special Tea entered into a license agreement
with opposer. Stip. Facts #6. Special Tea assigned its
rights in the CHIRO-KLENZ mark, including Reg. No.
1760128, to opposer in exchange for a license back to
Special Tea to use the CHIRO-KLENZ mark for tea as
opposer’s exclusive supplier. Stip. Facts #9 and #10;
Assignment recorded at Reel/Frame 1982/0867.

5 The parties dispute who, between them, originally developed the
name CHIRO-KLENZ. Stip. Facts #5.
Opposition No. 91193427

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6. Reg. No. 1760128 was cancelled pursuant to Section 8 in
the year 2000 due to opposer’s failure to file an
affidavit or declaration of use. Arthur Pollack Dec.,
¶10.
7. Opposer re-filed for the mark CHIRO-KLENZ for “herbal
tea for food purposes,” and obtained Reg. No. 2459470
on June 12, 2001. Ibid.
8. Special Tea, and later Herb Naturals, continued to
supply tea to opposer until opposer terminated the
agreement in 2004. Stip. Facts #11 and #12.
9. Following termination of the agreement, opposer
continued to sell tea under the mark CHIRO-KLENZ.
Stip. Facts #13.
10. In January 2006, Special Tea filed a petition to
cancel opposer’s Reg. No. 2459470. Cancellation No.
92045380. The registration was cancelled on August 14,
2006, following entry of default judgment.
11. In May 2006, applicant filed an application of its
own, and in October 2007 obtained, Reg. No. 3327764 for
the mark CHIRO-KLENZ for “herb tea.” Applicant sold
tea under the mark until July or August of 2009, when
applicant’s registration was cancelled on the ground
that applicant was not the owner of the mark. Stip.
Facts #17, #19, #22 and #23; Cancellation No. 92049824,
filed by opposer.
Opposition No. 91193427

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Opposer’s Present Use of CHIRO-KLENZ
12. Opposer’s use of the mark CHIRO-KLENZ for herbal tea
continues to the present. Arthur Pollack Dec., ¶2.
13. Opposer sells CHIRO-KLENZ tea “through a network of
health care professionals such as chiropractors,
naturopaths, doctors, alternative health practitioners,
[and] health spas.” Some practitioners also sell
online. Arthur Pollack Dec., ¶4.
14. Opposer’s product is sold by the box; each box
contains 30 bags. Typical retail price falls between
“about $11.50 to $20.00.” Id., ¶6.
15. Sales for opposer’s CHIRO-KLENZ brand tea from 2000
through November 2011 were “around 453,000 units of
regular CHIRO-KLENZ and around 106,000 units of lemon
CHIRO-KLENZ.” Id., ¶11.
16. Opposer’s advertising expenses since 1992 were about
$500,000 and included “expenses associated with
attending trade shows, magazine advertising, direct
mailings, [and] catalogs.” Ibid.
Applicant’s Present Use of SUPER CHIRO TEA

17. Applicant began using the mark SUPER CHIRO TEA on or
about August 12, 2009. Lichter Dec., ¶32 and ¶33.
18. Applicant sells products under the mark SUPER CHIRO
TEA “solely online directly to lay consumers.” Lichter
Dec., ¶43, Stip. Facts # 27.
Opposition No. 91193427

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19. Applicant owns the domain names www.superchirotea.com
and www.chiroklenzforless.com, which he has configured
to redirect visitors to www.superchirotea.com. Stip.
Facts # 29. Applicant also owns the domain name
chiroteaforless.com. Lichter Dec., ¶65.
20. Applicant sells his product at a retail price of
$8.49 for a box of 30 packets. Id., ¶ 45.
STANDING AND PRIORITY
On March 1, 2011, the Board issued an order in this
case, holding that “opposer has established its common law
ownership of [the mark CHIRO-KLENZ] through use, thereby
providing opposer with standing and priority in this
matter.” Board Order, p. 6.
In addition, because opposer’s registration is of
record, Section 2(d) priority is not an issue in this case
as to the mark and the goods covered by the registration.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).
LIKELIHOOD OF CONFUSION
We now turn to a discussion of likelihood of confusion
under Trademark Act § 2(d), 15 U.S.C. § 1052(d).
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
Opposition No. 91193427

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F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, Palm
Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); 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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”).
A. Strength of Opposer’s Mark CHIRO-KLENZ/Third-party Uses

Applicant argues that opposer’s CHIRO-KLENZ mark is
inherently weak because “the product is sold to
chiropractors and is for the purpose of cleansing.”
Applicant’s Brief, p. 13. This argument is unavailing.6
Although the term “klenz” may be seen as a variant spelling
of “cleanse,” suggesting, in connection with these goods,
that the herbal tea purports to rid the body of toxins, this
does not make the mark descriptive but suggestive only.

6 Moreover, as applicant has not filed a counterclaim to cancel
opposer’s registration, any attempt by applicant to attack the
validity of opposer’s registration, such as by contending that
the mark is merely descriptive, constitutes an impermissible
collateral attack on the validity of the registration and has not
been considered. See Trademark Rule 2.106(b)(2)(ii); Fort James
Opposition No. 91193427

9
Further, to the extent the term “chiro” has any meaning
because opposer sells its product to some chiropractors,7 or
may be a “popular root form meaning ‘hand’ or ‘by the hand’”
as applicant contends,8 the term has not been shown to
convey any information about the goods and does not make the
mark descriptive. The mark as a whole is, at worst,
suggestive.
Applicant also argues that opposer’s mark is “further
weakened by extensive third party use of CHIRO….”9 However,
applicant has not shown any relevant third-party uses of
marks that include either “chiro” or, for that matter,
“klenz” (or “cleanse”) for similar or related products. The
two web pages that applicant submitted for this purpose are
inadmissible. There is no URL or date appearing on either
page, as required under Safer Inc. v. OMS Investments Inc.,
94 USPQ2d 1031 (TTAB 2010). As for the Google® search
summary, it is further inadmissible because it merely offers
links to information not otherwise of record. Cf. Calypso
Technology, Inc. v. Calypso Capital Management, LP, 100
USPQ2d 1213, 1219 (TTAB 2011)(Google search results

Operating Co. v. Royal Paper Converting, Inc., 83 USPQ2d 1624,
1626 fn. 1 (TTAB 2007).
7 Mr. Pollack states that opposer has sold its product in over
4,000 chiropractic offices across the country and has conducted
some direct advertising “in publications for chiropractors and
other healthcare professionals.” Arthur Pollack Dec., ¶11.
8 Applicant’s Brief, p. 13.
9 Applicant’s Brief, p. 13.

Opposition No. 91193427

10
summaries “which are more in the nature of listings of
documents, i.e., the website pages that the summary links
to, than to the documents per se” may not be made of record
by notice of reliance).10
Likewise, while the listing that applicant has
submitted, of third-party marks downloaded from the USPTO’s
Trademark Electronic Search System (TESS), is of record, the
registrations listed therein are not of record, and the list
itself has little, if any, probative value. The list
consists of marks and their application or registration
number, as well as a marker indicating whether, in the case
of a registration, it is “dead” or “live.” We cannot
determine from a mere listing like this the nature of the
goods or services for which these purported marks have been
applied-for or registered and many of the marks themselves
appear to contain substantial additional matter. The Board
does not take judicial notice of registrations or
applications residing in the Office,11 and further, with
respect to the applications, they are evidence of nothing
more than that they were filed with the USPTO. In re Jack
B. Binion, 93 USPQ2d 1531, 1535 fn.3 (TTAB 2009); Glamorene

10 Even if admissible, the web pages have limited probative value.
A web page for “chirojava” for coffee and a Google search summary
consisting of a list of references touting various ways to lose
weight or detoxify, have no bearing on how consumers would
perceive “chiro” or “klenz/cleanse” for medicinal tea.
11 In re Jonathan Drew, Inc. d/b/a Drew Estate, 97 USPQ2d 1640,
1644 fn. 11 (TTAB 2011).
Opposition No. 91193427

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Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090,
1092, fn.5 (TTAB 1979). For the same reason, applicant’s
inclusion, in his brief, of a list of 4 live, and 3 dead,
registrations that allegedly use the term “CHIRO” in
International Class 5 is of no probative value.12
Applicant has not shown that opposer’s pleaded mark
CHIRO-KLENZ is so weak that it is entitled only to a narrow
scope of protection.
B. Similarity of the Goods/Trade Channels/Purchasers
We turn next to the du Pont factors which pertain to
the similarity or dissimilarity of the goods, channels of
trade and classes of purchasers. It is well settled that
likelihood of confusion is determined on the basis of the
goods as identified in the application and in the pleaded
registration. Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Applicant’s goods are identified as “herbal teas for
medicinal purposes.” Opposer’s goods are identified as
“herbal teas for medicinal purposes; nutritional supplement
for eliminating toxins from the body.” The goods, as
identified in the application and pleaded registration, are
in part identical. We need not consider applicant’s

12 Needless to say, the three pages from third-party websites
showing herbal tea offered under the marks REVOLUTION and TRIPLE
LEAF are entirely irrelevant.

Opposition No. 91193427

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remaining goods because likelihood of confusion as to one of
the products listed in applicant’s description of goods in
that class is sufficient to support a conclusion that the
opposition should be sustained. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) (likelihood of confusion must be found if
there is likely to be confusion with respect to any items
that come within the identification of goods in the
application). See also, General Mills, Inc. and General
Mills IP Holdings II, LLC v. Fage Dairy Processing, 100
USPQ2d 1584, 1588 n.1 (TTAB 2011).
Because the goods in opposer’s registration and
applicant’s application are the same in part, such goods are
presumed to travel in similar trade channels and be purchased
by the same classes of consumers. See Genesco Inc. v. Martz,
66 USPQ2d 1260, 1268 (TTAB 2003) (Where goods in applicant’s
application were in-part identical to those in registrant’s
registration, lack of restrictions as to trade channels or
purchasers gives rise to presumption that goods “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 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”). Additionally, there is nothing in the recital
Opposition No. 91193427

13
of goods in either the cited registration or the application
that limits either registrant’s or applicant’s channels of
trade, except for the common limitation, “for medicinal
purposes.” In other words, there is nothing that prevents
applicant’s “herbal teas for medicinal purposes” from being
sold in the same stores and to the same classes of consumers
as registrant’s “herbal teas for medicinal purposes” (and
vice-versa). Accordingly, we find that these du Pont factors
weigh in favor of finding a likelihood of consumer confusion.
C. Similarity of the Marks

We now turn to a consideration of the marks, keeping in
mind that when marks would appear on identical goods, as
they do here, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); Barbara’s Bakery, Inc.
v. Landesman, 82 USPQ2d 1283, 1288 (TTAB 2007). In
determining the similarity or dissimilarity of marks, we
must consider the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Nonetheless, it is
not improper to accord more or less weight to a particular
feature of a mark. In re National Data Corp., 753 F.2d
1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). Descriptive
Opposition No. 91193427

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matter, and matter that has been disclaimed because it is
descriptive, is typically less significant or less dominant
when comparing marks. See In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531, 153334 (Fed. Cir. 1997); In re Nat'l
Data Corp., 224 USPQ2d at 752. See also, Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000); In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001) (a descriptive term is less significant in
creating the mark’s commercial impression).
We are further reminded that when comparing marks, 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 their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. The purchaser’s
fallibility of memory over a period of time must be kept in
mind. See Spoons Restaurant Inc. v. Morrison Inc., 23
USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir. 1992);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). As discussed further below, herbal teas are
purchased by ordinary consumers who exercise no more than
ordinary care in making their purchasing decisions.
In this case, applicant’s mark consists of three words,
the first being the laudatory word SUPER and the final word,
Opposition No. 91193427

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TEA, being generic for the goods.13 To the extent the term
CHIRO has any meaning, as noted above it is suggestive only.
Thus, unlike the descriptive or generic terms SUPER and TEA,
the dominant and distinguishing portion of applicant’s mark
is the term CHIRO.
Turning to opposer’s mark CHIRO-KLENZ, it is
appropriate that we consider the term CHIRO to be the
dominant portion of the mark and to accord greater weight to
this dominant element in determining whether there is a
likelihood of confusion between the parties’ marks. The
term CHIRO, as the first part of opposer’s mark, is “most
likely to be impressed upon the mind of a purchaser and
remembered.” Presto Products Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See also, Palm Bay
73 USPQ2d at 1692 (“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); Wet Seal
Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007).
Comparing applicant’s mark with opposer’s mark, the
overall similar commercial impressions created by the common
presence of CHIRO in both marks creates a similar commercial
impression that is not significantly changed by the addition

13 Applicant recognized the descriptive nature of this term when
he stated that he selected “the key term ‘SUPER’ [because the
product] provides super results.” Lichter Dec., ¶33.

Opposition No. 91193427

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of the terms SUPER and TEA in applicant’s mark, and the term
KLENZ in opposer’s mark. In fact, consumers may believe
that SUPER CHIRO TEA and CHIRO-KLENZ are different varieties
of the CHIRO line of tea.
Hence, despite the obvious differences in appearance
and sound, we find the similarities of the marks in meaning
and their overall commercial impression, when the marks are
considered in their entireties, to outweigh their
differences. Accordingly, the du Pont factor of similarity
of the marks favors a finding of likely confusion.
D. Conditions of Sale

Although applicant argues that opposer’s health care
professional customers are “highly sophisticated, and
certainly able to differentiate between the products at
issue,”14 the same has not been alleged with respect to the
end users of opposer’s products or as to the ultimate users
of applicant’s goods. Applicant has not provided any
showing that the end users of these products are
sophisticated, and, as we have often noted, even consumers
who exercise a higher degree of care are not necessarily
knowledgeable regarding the trademarks at issue, and
therefore immune from source confusion. In re Wilson, 57
USPQ2d 1863, 1865-66 (TTAB 2001). See also, Carlisle

14 Lichter Dec., ¶48.

Opposition No. 91193427

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Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers … are not infallible.”).
With respect to the conditions under which the parties’
goods are or will be purchased, despite the health benefits
each party claims to result from using the goods, and even
assuming, as applicant argues, that the products are
relatively expensive when compared with non-medicinal teas,
the low price of the products suggests that purchases are
made by ordinary consumers who exercise no more than
ordinary care in making their purchasing decisions. The
conditions of sale are such that they would in no way
diminish the likelihood of confusion in this case.
Accordingly, this du Pont factor is neutral.
E. Actual Confusion

Opposer contends that there have been numerous
instances of actual confusion among potential consumers of
opposer’s CHIRO-KLENZ tea, and has submitted four
declarations in support of its contention.
Allison Pollack answers phones for opposer as part of
her responsibilities as opposer’s employee.15 She states
that she has received “between 10 and 15 phone calls where
the caller either asked us for SUPER CHIRO TEA, or asked

15 Allison Pollack Dec., ¶2.
Opposition No. 91193427

18
what [opposer’s] relationship is to SUPER CHIRO TEA.”16 She
detailed six of these calls. For example, Ms. Pollack
reports that one of the callers asked her if he could buy
SUPER CHIRO TEA.17 Another caller told her “he was not
happy with the SUPER CHIRO TEA product.”18 These
misdirected telephone calls are admissible under the hearsay
exceptions set forth under Fed. R. Evid. 803(1)(present
sense impression), as evidence of what Ms. Pollack heard and
experienced during the conferences, or under Fed. R. Evid.
803(3)(state of mind), as statements revealing the
declarant’s state of mind. The statements are not offered
for the truth of the statements but rather simply for the
fact that they were made. See, e.g., Toys “R” Us, Inc. v.
Lamps R Us, 219 USPQ 340, 346 (TTAB 1983)(out-of-court
statements admissible to show “that people have, in fact,
made an association” between the parties); Finance Company
of America v. Bank-America Corp., 205 USPQ 1016, 1035 (TTAB
1979, as amended 1980)(employees’ testimony regarding
receipt of misdirected mail or telephone calls not hearsay),
aff’d in unpub’d opinion, Appeal No. 80-558 (CCPA February
12, 1981). See also, Armco, Inc. v. Armco Burglar Alarm
Co., 693 F.2d 1155, 217 USPQ 145, 149 n.10 (5th Cir.

16 Id., ¶3.
17 Id., ¶8.
18 Id., ¶9.

Opposition No. 91193427

19
1982)(testimony of plaintiff’s employees regarding
purchasers attempting to reach defendant admissible);
CCBN.com Inc. v. c-call.com Inc., 53 USPQ2d 1132, 1137 (D.
Mass. 1999) (“Statements of customer confusion in the
trademark context fall under the ‘state of mind exception’
to the hearsay rule”).
Accordingly, we find that Ms. Pollack, opposer’s
employee, received telephone calls from actually confused
consumers inquiring about applicant’s SUPER CHIRO TEA.
Nevertheless, the testimony is of minimal probative value in
the absence of testimony from the third parties themselves
“as to whether they were confused and, if so, what caused
their confusion. To the extent that this testimony has any
probative value, however, it serves to buttress our
conclusion of likelihood of confusion.” Corporate Fitness
Programs, Inc. v. Weider Health and Fitness, Inc., 2 USPQ2d
1682, 1691 (TTAB 1987)(finding third-party testimony as to
alleged incidents of actual confusion of “little probative
value”), set aside on other grounds by Corporate Fitness
Programs Inc. v. Weider Health and Fitness Inc., 7 USPQ2d
1828 (TTAB 1988).
Opposer introduced additional testimony of alleged
actual confusion. Martina Washington, a Naturopath at New
Life Wellness Center, (“New Life”) stated that she sells
CHIRO-KLENZ tea to her clients at New Life and that she
Opposition No. 91193427

20
recently conducted an online search for CHIRO-KLENZ tea.
During this search, Ms. Washington located applicant’s SUPER
CHIRO TEA and states that “I assumed that SUPER CHIRO was a
new product from [opposer].”19
Harold Mitchell, the owner of H and M Herbs and
Vitamins (“H and M”) stated that he sells CHIRO-KLENZ herbal
tea at H and M; that he “recently searched for CHIRO-KLENZ
using google.com”; that based on the results of the search,
he became concerned that opposer was selling CHIRO-KLENZ tea
below the price at which H and M sold the product; and
realized only after checking with opposer, that “I had
mistaken the SUPER CHIRO tea being sold on the website for
CHIRO-KLENZ tea manufactured and distributed by
[opposer].”20
The existence of actual confusion is normally very
persuasive evidence of likelihood of confusion and undercuts
any possible claim that the marks are so dissimilar that
there can be no likelihood of confusion. See Thompson v.
Haynes, 305 F.3d 1369, 64 USPQ2d 1650 (Fed. Cir. 2002);
Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 208
USPQ 384, 389 (5th Cir. 1980)(“The best evidence of
likelihood of confusion is provided by evidence of actual
confusion”).

19 Washington Dec., ¶¶1-4.
20 Mitchell Dec., ¶¶1-7.
Opposition No. 91193427

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Given the evidence of specific instances of actual
confusion, this du Pont factor favors opposer.
F. Applicant’s Intent

Under the thirteenth du Pont factor, evidence of
applicant’s bad faith adoption of his mark is relevant to
our likelihood of confusion analysis. L.C. Licensing Inc.
v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008)(bad faith is
strong evidence that confusion is likely, as such an
inference is drawn from the imitator’s expectation of
confusion). See also, J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991);
and L’Oreal S.A. and L’Oreal USA, Inc. v. Robert Victor
Marcon, ___ USPQ2d ___, Opp. No. 91184456 (TTAB March 20,
2012) slip op. at 25 (applicant’s “demonstrated pattern of
filing applications to register various well-known marks
convinces us that applicant’s adoption of [opposer’s] mark
was in bad faith”).
Opposer argues that applicant took “affirmative steps
to cause confusion and to associate SUPER CHIRO TEA with
CHIRO-KLENZ tea.”21 We agree.
In particular, opposer has produced copies of packaging
of applicant’s tea that include the tag line: “FROM THE
ORIGINAL MAKERS OF CHIRO-KLENZ™”. Stip. Facts #26 and #27;

21 Opposer’s Brief, p. 43.

Opposition No. 91193427

22
Exs. E and F. Applicant also admits that he owns the domain
name www.chiroklenzforless.com, and that he has configured
it to redirect visitors to his www.superchirotea.com
website. Stip. Facts #29.
Applicant states that he did not intend to use
testimonials from CHIRO-KLENZ tea users to promote SUPER
CHIRO TEA, but does not deny that such testimonials were on
his website.22 He also states that he did not intend “to
substitute delivery of SUPER CHIRO TEA for an order of
CHIRO-KLENZ,” but again, does not deny that such delivery
occurred.23 Mr. Charles Joseph Reardon, a private
investigator, testified that on or about November 5, 2009,
he placed an order for CHIRO-KLENZ tea through applicant’s
website www.superchirotea.com; that the electronic receipt
he received indicated that the order had been placed,
“referring to it as ‘CK Original’”; but that when he
received the shipment, “instead of CHIRO-KLENZ, the package
I ordered contained SUPER CHIRO tea.” See Tiffany & Co. v.
Classic Motor Carriages Inc., 10 USPQ2d 1835, 1839 fn.5
(TTAB 1989)(materials received by witnesses from businesses
they contacted considered to the extent that they prove that
the businesses send out such materials upon request).

22 Lichter Dec., ¶61.
23 Id., ¶62.
Opposition No. 91193427

23
Applicant further declares that he uses “disclaimers
and a highly-detailed product comparison page to make it
crystal clear that I am not [opposer]”24 and that he has
removed all references to the mark CHIRO-KLENZ from his
website.25 The record belies applicant’s assertions. None
of the sample packaging submitted with applicant’s or
opposer’s brief contains any disclaimer. The product
comparison page does contain the following wording in small
print: “Herb Naturals, Inc. is not affiliated with Edom
Laboratories, Inc., the owner of the trademark “CHIRO-
KLENZ™’”; however, the same webpage declares in large
letters:
“From the ORIGINAL Formulators
of CHIRO-KLENZ™ Tea
SUPER CHIRO™ TEA
… Available NOW!”

The website www.SuperChiroTea.com also includes the
disclaimer in small print, but prominently displays the
“original makers” tag line directly above the mark SUPER
CHIRO on the product packaging.26
Further, applicant’s actions with respect to opposer’s
registrations for the CHIRO-KLENZ mark show a pattern of bad
faith. Under the terms of the 1997 manufacturing and
distribution agreement between the parties, the mark CHIRO-

24 Lichter Dec., ¶56.
25 Id., ¶¶59-60.
Opposition No. 91193427

24
KLENZ, including Reg. No. 1760128, was assigned by Special
Tea to opposer.27 Nonetheless, in 2006, applicant filed a
petition to cancel opposer’s second registration for the
mark28 and continued to use the mark until, on June 18,
2009, upon opposer’s petition to cancel, the Board
determined that applicant did not own the CHIRO-KLENZ mark
and cancelled applicant’s registration No. 3327764.29
Further, applicant was aware that on February 16, 2010,
the Federal District Court for the Eastern District of New
York determined that opposer was likely to succeed on its
trade dress claims, brought against applicant’s use of
opposer’s blue box trade dress and yellow box trade dress.30
Nonetheless, except for changing the color of his blue box to
silver, applicant continues to use the trade dress (similar
fonts, similar wording) that opposer uses for its CHIRO-KLENZ
tea (regular); no changes were made to the yellow trade dress

26 Web page from www.chiroteaforless.com accessed 12/5/11,
attached to Opposer’s Brief.
27 Stip. Facts #18; Ex. C. In January 2008, the Supreme Court of
the State of New York ruled that opposer did not breach the
contract between the parties by terminating it in 2004. Special
Tea, Inc. v. Edom Laboratories, Inc., Case No. 000934/2005.
28 Reg. No. 3327764; opposer obtained this registration after it
failed to file a timely Section 8 affidavit in Reg. No. 1760128
and that registration was cancelled.
29 Edom Laboratories, Inc. v. Glenn Lichter, slip. op.,
Cancellation No. 92049824 (TTAB June 18, 2009).
30 Edom Laboratories, Inc. v. Special Tea Plus, Inc., et. al., in
the United States District court Eastern District of new York,
Case No. CV-09-5185 (SJF)(ETB). The case has been suspended
pending our determination of the question of likelihood of
confusion in this proceeding.
Opposition No. 91193427

25
used by applicant for his lemon-flavored tea.31 Applicant
also does not appear to have discontinued use of his domain
name www.chiroklenzforless.com, which he admits redirects
visitors to his website www.superchirotea.com.
This overwhelming evidence makes clear applicant’s bad
faith intent to cause, and profit from, consumer confusion.
This du Pont factor thus weighs in opposer’s favor.
G. Conclusion

We find that the mark SUPER CHIRO TEA is similar
overall in sight, sound, meaning and commercial impression
to opposer’s mark CHIRO-KLENZ; that the goods are legally
identical and available to the same classes of consumers
through similar trade channels; and that applicant has been
trading off the goodwill in opposer’s mark to opposer’s
detriment. Accordingly, applicant’s mark SUPER CHIRO TEA
for “herbal teas for medicinal purposes” is likely to cause
confusion with opposer’s mark CHIRO-KLENZ for herbal teas
and nutritional supplements.
Decision: The opposition is sustained under Trademark
Act Section 2(d) and registration to applicant is refused.

31 Ordinarily, we do not look to the trade dress, which can be
changed at any time. But just as the trade dress may provide
evidence of whether the word mark projects a confusingly similar
commercial impression, see Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir.
1984), here we look to applicant’s retention of similar trade
dress as providing evidence of whether he intended to cause
confusion.