Fertility Nutraceuticals, LLC

Trademark Trial and Appeal BoardJul 23, 2014

No. 85662647 (T.T.A.B. Jul. 23, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 23, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Fertility Nutraceuticals, LLC _____ Serial Nos. 85662647 and 85738741 _____ Elliott J. Stein of Stevens & Lee, P.C. for Fertility Nutraceuticals, LLC. Meghan Reinhart, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _____ Before Quinn, Lykos and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Fertility Nutraceuticals, LLC (“Applicant”) seeks registration of the marks OVOENERGEN, in standard characters, for “Nutraceuticals not containing ginseng for use as a dietary supplement for fertility enhancement,” and ANDROENERGEN, in standard characters, for “Dietary supplements not containing ginseng for fertility enhancement.”1 The Examining Attorney refused registration of both marks under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that 1 Application Serial Nos. 85662647 and 85738741, filed June 27 and September 26, 2012, respectively, based on Applicant’s allegation of a bona fide intent to use each mark in commerce under Section 1(b) of the Trademark Act. Serial Nos. 85662647 and 85738741 2 Applicant’s marks, when used in connection with Applicant’s goods, so resemble the previously-registered mark ENERGIN, in standard characters, for the following goods: Herbal preparations containing ginseng for medicinal purposes; Liquid herbal preparations containing ginseng for medicinal purposes; Herbal preparations containing ginseng for medical purposes; Liquid herbal preparations containing ginseng for medical purposes; Herbal preparations containing ginseng for use as a nutritional supplement; Liquid herbal preparations containing ginseng for use as a nutritional supplement; Herbal preparations containing ginseng for use as a dietary supplement; Liquid herbal preparations containing ginseng for use as a dietary supplement2 that use of Applicant’s marks in connection with Applicant’s goods is likely to cause confusion or mistake or to deceive. After the refusal became final, Applicant appealed and filed motions for reconsideration which were denied. Applicant and the Examining Attorney filed briefs. Appeals Consolidated These appeals involve common questions of law and fact and the records are substantially similar. Accordingly, we decide both appeals in this single decision. See, In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (2014). Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all 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 USPQ 563, 567 2 Registration No. 3089477, issued May 9, 2006; Section 8 affidavit accepted, Section 15 affidavit acknowledged. Serial Nos. 85662647 and 85738741 3 (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. 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.”). Turning first to the goods, they need not be identical or even competitive in order to support a finding of likelihood of confusion. It is enough that the goods are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used, to a mistaken belief that Applicant’s and Registrant’s goods originate from or are in some way associated with the same source or that there is an association between the sources of the goods. Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods. In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984). Serial Nos. 85662647 and 85738741 4 In this case, although Applicant’s identification of goods is worded slightly differently for OVOENERGEN than for ANDROENERGEN, the two identifications are quite similar, if not entirely identical. Indeed, we take judicial notice that “nutraceutical” is defined as “a foodstuff (as a fortified food or dietary supplement) that provides health benefits in addition to its basic nutritional value.” Merriam- Webster Dictionary.3 Applicant’s identified goods are intended to be used for fertility enhancement, while Registrant’s goods are herbal preparations containing ginseng for medicinal purposes and for use as a dietary supplement. Because the broadly worded “medicinal purposes” for which Registrant’s goods are used encompass “fertility enhancement,” and because Applicant’s “dietary supplements” and “neutraceuticals” encompass or are at the very least closely related to Registrant’s “herbal preparations” for “medicinal” and “medical” purposes, “for use as a dietary supplement” and “for use as a nutritional supplement,” and vice versa, there is scant difference between the parties’ goods. In fact, the only substantive difference between the goods in this case is that Registrant’s contain ginseng and Applicant’s do not. That distinction is not significant. As the Examining Attorney points out, consumers are highly unlikely to be aware of the exclusion of ginseng from Applicant’s identifications of goods. Moreover, while there is no evidence of record that any consumers seek to avoid 3 http://www.merriam-webster.com/dictionary/nutraceutical. The Board may take judicial notice of dictionary definitions. 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). Serial Nos. 85662647 and 85738741 5 ginseng in fertility enhancement or other products, there is evidence that some fertility enhancement products contain ginseng and promote its ability to enhance fertility. For example, a printout from the “natural-health-for fertility.com” website promoting FERTILE XX herbal blend touts its inclusion of Siberian Ginseng, stating that the herb is used “to promote healthy blood flow to the reproductive organs and stimulate conception … Siberian Ginseng is part of a group of fertility herbs that boost both male and female fertility.” Denial of Request for Reconsideration, December 11, 2013. Similarly, a printout from the “conceiveeasy.com” website indicates that Siberian Ginseng “helps men to increase semen production and helps fertility disorders in both men and women … It improves the health of the uterus cells, which may increase your chances of conceiving.” Id. And a printout of the PreconceptionWeekly column from “parentingweekly.com” indicates that Ovulex, an herbal fertility supplement for women, and Amberoz, an herbal fertility supplement for men, both contain ginseng as well as other herbs. Id. In other words, Registrant’s “herbal preparations containing ginseng for medical purposes” could be used to enhance fertility, and consumers may believe that Applicant’s dietary supplements for fertility enhancement would contain ginseng, as do Registrant’s products, notwithstanding Applicant’s exclusion of ginseng from its identifications of goods. The evidence also establishes that herbal supplements for enhancing fertility which do not contain ginseng are sold under the same mark as herbal supplements for enhancing fertility Serial Nos. 85662647 and 85738741 6 which do contain ginseng. Id. (printout from “natural-health-for fertility.com” website). In short, because both Applicant and Registrant offer dietary supplements for medicinal purposes, their goods are quite similar, notwithstanding that Registrant’s contain ginseng while Applicant’s do not. This factor weighs in favor of finding a likelihood of confusion. As for the channels of trade, neither Applicant’s nor Registrant’s identifications of goods contain any limitations as to channels of trade or classes of consumers, and their goods are therefore presumed to move in all normal channels of trade for those goods and to be available to all classes of consumers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also, Stone Lion Capital, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“Even assuming there is no overlap between Stone Lion’s and Lion’s current customers, the Board correctly declined to look beyond the application and registered marks at issue. An application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”). Furthermore, the evidence establishes that herbal supplements containing ginseng are sold in the same channels of trade as supplements for fertility enhancement not containing ginseng, namely online retailers. Denial of Request for Reconsideration December Serial Nos. 85662647 and 85738741 7 13, 2013 (printout from “natural-health-for fertility.com” website). This factor therefore also weighs in favor of finding a likelihood of confusion. Turning to the marks, Applicant is correct that we must compare them “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) (quoting du Pont, 177 USPQ at 567). That is, we may not dissect the marks into their various components. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). At the same time, however, one feature of a mark may be more significant than another, and it is not improper to give more weight to the dominant feature of a mark in determining its commercial impression. In re Nat’l. Data Corp., 224 USPQ at 751 (“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. Indeed, this type of analysis appears to be unavoidable.”). Here, Applicant argues and relies on evidence that neither “ovo” nor “andro” is “just a random prefix,” but that they instead have “robust significance” and connote “a product strongly associated with female fertility” in the case of OVOENERGEN and “a product strongly associated with male fertility” in the case of ANDROENERGEN. Applicant’s Appeal Briefs at 8 (emphasis supplied); Applicant’s Requests for Reconsideration, November 18, 2013 Exs. A (printouts Serial Nos. 85662647 and 85738741 8 from Merriam-Webster dictionary defining “ovo” and forms thereof as meaning “egg,” and “andro” and forms thereof as meaning “male human being”). In other words, assuming that Applicant’s evidence as to the meaning of “ovo” and “andro” is accurate, these prefixes, which are the primary difference between Applicant’s marks and Registrant’s, are descriptive or at best suggestive of a purpose or characteristic of Applicant’s goods. They are therefore entitled to less weight than the ENERGEN component of Applicant’s mark, because there is no evidence that ENERGEN is anything but arbitrary for Applicant’s goods.4 See, Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d at 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d at 1534 (BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S ROADHOUSE). While these prefixes appear first in Applicant’s mark, that is not compelling in this case, because the ENERGEN component of Applicant’s marks is longer than either prefix and almost identical to Registrant’s mark, differing from Registrant’s mark by only a single letter. In fact, consumers familiar with Registrant’s mark 4 We are unpersuaded by Applicant’s argument that ENERG “is descriptive of dietary supplements with energy-boosting properties,” Applicant’s Appeal Briefs at 7, because Applicant seeks registration of its marks for fertility enhancement rather than energy- boosting products, and the cited mark is not registered for energy-boosting products specifically (and there is no evidence that it is promoted as having energy-boosting properties). Serial Nos. 85662647 and 85738741 9 who encounter Applicant’s marks may perceive them as special-purpose versions of Registrant’s goods, perhaps focused on enhancing fertility, which Applicant admits is the intended connotation of the prefixes. Applicant’s Requests for Reconsideration, November 18, 2013. Applicant’s argument that the difference between ENERGEN and ENERGIN is significant, because the “GIN” in Registrant’s mark connotes ginseng, is not well- taken. This difference will quite likely be lost on those hearing (and for that matter seeing) the marks, especially because the first five out of seven letters comprising ENERGEN and ENERGIN are identical, as is the last letter, and the vowels “e” and “i” may be pronounced the same. Moreover, ginseng is a common ingredient in dietary supplements, including supplements sold under marks which begin with ENERG, but which do not contain “gin” or other abbreviations for ginseng. Applicant’s Office Action response of April 24, 2013 Ex. A (copies of packaging and advertisements for HI-ENER-G, ENERGEX and EnergION, all of which contain ginseng). In short, ENERGEN and ENERGIN differ by only a single letter, look and sound quite similar and convey similar meanings; considered in their entireties, the similarity between Applicant’s marks and Registrant’s mark also weighs in favor of finding a likelihood of confusion.5 5 Applicant’s reliance on Giorgio Beverly Hills Inc. v. Revlon Consumer Products Corp., 869 F.Supp. 176, 33 USPQ2d 1465 (SDNY 1994) is misplaced because in that case the Court focused in large part on the parties’ trade dress and display of their word marks. Similarly, in Wachovia Bank and Trust Co. v. Crown National Bancorp, Inc., 835 F.Supp. 882, 27 USPQ2d 1698 (W.D.N.C. 1993) the marks at issue differed by more than those at issue in this case. Here, by contrast, the cited mark and Applicant’s marks are all comprised of a single term in standard characters. Applicant’s reliance on Champagne Louis Roederer S.A. v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir. 1998), In re Sears, Serial Nos. 85662647 and 85738741 10 Applicant argues that Registrant’s mark is weak as a result of third-party “usage and registration of multiple marks containing ‘energ’” for dietary supplements. Applicant’s Appeal Briefs at 7. We disagree. As for the third-party registrations upon which Applicant relies, they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). Moreover, Applicant has not cited any third-party registrations which include ENERG followed by IN or EN or similar suffixes such as Applicant’s and Registrant’s marks in this case; rather, all of the third-party registrations merely contain the conceptually weak term ENERG, or a variation thereof.6 Applicant’s evidence of actual third-party use of marks including ENERG is unpersuasive for the same reason. In fact, Applicant’s Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987), In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984) and In re Sydel Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) is also misplaced, because in those cases the marks at issue conveyed different meanings with respect to the products for which they were used, whereas here, the dominant portions of the marks at issue differ by only a single letter and the evidence fails to establish that this difference impacts the meaning of the marks, which are all used for dietary supplements. Moreover, in Sears Roebuck, the applicant and owner of the cited mark entered into a consent agreement which was evidence that there was no likelihood of confusion. 6 In its Reply Briefs at page 6, Applicant cites the registration numbers for REVITAL ENERGEN and PROPOLIS ENERGEN, but even if Applicant indicated that these registrations remain valid and subsisting, which it did not, these registrations are not of record and have therefore been given no consideration. See, Trademark Rule 2.142(d) (“The record in the application should be complete prior to the filing of an appeal.”) In re Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010) (“applicant’s mere listing of registrations … clearly have not been made of record”); TBMP § 1208.02 (2014) (“Mere listings of registrations … are not sufficient to make the registrations of record.”). Serial Nos. 85662647 and 85738741 11 only evidence of use of a mark similar to Applicant’s and Registrant’s marks in this case is an advertisement for ENERGEN-B vitamin supplement, which standing alone is insufficient to establish that Registrant’s mark is diluted or weak or that consumers will focus on the descriptive or at best suggestive OVO and ANDRO components of Applicant’s marks. There is no relevant evidence or argument concerning the remaining likelihood of confusion factors, and we therefore treat them as neutral. Conclusion After considering all of the evidence of record as it pertains to the relevant du Pont factors, including all of Applicant’s arguments and evidence, even if not specifically discussed herein, we find that confusion is likely because the goods are highly similar, the channels of trade overlap and the marks are similar. Decision: The Section 2(d) refusals to register Applicant’s marks are affirmed.