Jarrow Formulas, Inc.v.Ford Albritton, IV Ford Albritton, IV v. Jarrow Formulas, Inc.

Trademark Trial and Appeal Board

May 16, 2012

No. 91186397 (T.T.A.B. May. 16, 2012)

MBA Mailed: May 16, 2012

Opposition No. 91186397

Jarrow Formulas, Inc.

v.

Ford Albritton, IV

Opposition No. 91186980

Ford Albritton, IV

v.

Jarrow Formulas, Inc.

Before Bucher, Zervas and Bergsman, Administrative Trademark
Judges.

By the Board:
These consolidated cases now come up for consideration
of Jarrow Formulas, Inc.’s (“Jarrow”) motion for summary
judgment on: (1) Ford Albritton, IV’s (“Albritton”) claim
in Opposition No. 91186980 that Jarrow’s mark SUSTAIN is a
“phantom mark;” (2) Albritton’s claim in Opposition No.
91186980 that Jarrow’s mark SUSTAIN is merely descriptive;
and (3) Jarrow’s claim of priority and likelihood of
confusion in Opposition No. 91186397. The motion is fully
briefed.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition Nos. 91186397 and 91186980
2
By way of background, Albritton seeks registration of
SUSTAIN BIOLOGICS, in standard characters and with BIOLOGICS
disclaimed, for “Vitamins and nutritional and dietary health
supplements.”1 In its amended notice of opposition in
Opposition No. 91186397,2 Jarrow alleges prior use and
registration of a “family of SUSTAIN marks” for dietary
and/or nutritional supplements, including JOINT SUSTAIN,
with JOINT disclaimed,3 ALPHA LIPOIC SUSTAIN, with ALPHA
LIPOIC disclaimed,4 MELATONIN SUSTAIN, with MELATONIN
disclaimed,5 NAC SUSTAIN, with NAC disclaimed6 as well as
SUSTAIN (each mark is presented in standard characters),7
and that use of Albritton’s mark would be likely to cause
confusion with Jarrow’s marks. In its answer, Albritton
admits that Jarrow “is the registrant” of its pleaded marks,
but otherwise denies the salient allegations in the amended
notice of opposition.

1 Application Serial No. 77141160, filed March 27, 2007, based
on an alleged intent to use the mark in commerce.
2 Jarrow’s motion for leave to amend its notice of opposition
in Opposition No. 91186397, filed December 7, 2011, is granted as
conceded, because Albritton failed to respond thereto. Trademark
Rule 2.127(a). Albritton’s answer to the amended notice of
opposition, filed December 27, 2011, is accepted and made of
record.
3 Registration No. 2735038, issued July 8, 2003, from an
application filed July 2, 1999.
4 Registration No. 3087209, issued May 2, 2006, from an
application filed August 3, 2004.
5 Registration No. 3301658,, issued October 2, 2007, from an
application filed July 30, 2004.
6 Registration No. 3301674, issued October 2, 2007, from an
application filed November 5, 2004.
7 Application Serial No. 78892606, filed May 25, 2006, based
on dates of first use of September 1994.
Opposition Nos. 91186397 and 91186980
3
In Opposition No. 91186980, Albritton is the opposer,
and therein alleges that Jarrow’s application to register
SUSTAIN in standard characters should be refused because the
mark “is a mutilation of [Jarrow’s] Registered Marks,”
Jarrow “is seeking in effect a phantom registration for the
mark xxxx SUSTAIN” and the SUSTAIN mark is “merely
descriptive of a characteristic, function, feature, and
purpose of Applicant’s goods.” Jarrow denies the salient
allegations in Albritton’s notice of opposition.
Summary judgment is only appropriate where there are no
genuine disputes as to any material facts, thus allowing the
case to be resolved as a matter of law. Fed. R. Civ. P.
56(a). The party seeking summary judgment bears the burden
of demonstrating the absence of any genuine dispute of
material fact, and that it is entitled to a judgment under
the applicable law. See Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir.
1987). A factual dispute is genuine if, on the evidence of
record, a reasonable fact finder could resolve the matter in
favor of the non-moving party. See Opryland USA Inc. v.
Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d
1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v.
Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed.
Cir. 1992).
Opposition Nos. 91186397 and 91186980
4
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, and all justifiable
inferences are to be drawn in the non-movant’s favor.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d
at 1472. The Board may not resolve genuine disputes as to
material facts; it may only ascertain whether genuine
disputes as to material facts exist. See Lloyd’s Food
Products, 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at
1542.
Turning first to Jarrow’s motion for summary judgment
that SUSTAIN in standard characters is not a “phantom mark,”
the motion is hereby GRANTED. “A ‘phantom’ trademark is one
in which an integral portion of the mark is generally
represented by a blank or dashed line acting as a
placeholder for a generic term or symbol that changes,
depending on the use of the mark.” In re International
Flavors & Fragrances, Inc., 183 F.3d 1361, 51 USPQ2d 1513,
1515 n.1 (Fed. Cir. 1999). Here, however, there is no
dispute that Jarrow seeks to register a mark consisting of
the single word SUSTAIN, in standard characters, and the
application does not include a drawing with “a blank or
dashed line,” or a “placeholder” of any kind, and nothing
about the involved mark changes depending on use of the
Opposition Nos. 91186397 and 91186980
5
mark. Rather, the mark is simply SUSTAIN, in standard
characters, and will not change.8
Turning next to Albritton’s claim that SUSTAIN is
merely descriptive, Jarrow’s registrations for the marks
ALPHA LIPOIC SUSTAIN and JOINT SUSTAIN are both over five
years old, and both registrations issued without Jarrow
being required to disclaim the word SUSTAIN (although Jarrow
was required to disclaim both ALPHA LIPOIC and JOINT).
Jarrow now seeks to register SUSTAIN alone for the exact
same goods as those identified in the ALPHA LIPOIC SUSTAIN
registration, and for goods which are in part identical to
those identified in the JOINT SUSTAIN registration. Under
these circumstances, Albritton’s mere descriptiveness claim
is untenable. The issue before us is analogous to the issue
presented in In re The American Sail Training Ass’n, 230
USPQ 879 (TTAB 1986).
In the present case, the portion of
applicant’s mark (“TALL SHIPS”) required
to be disclaimed is identical to the
subject matter of applicant’s
incontestable registration … the
services described in applicant’s
application are identical to those
recited in the prior incontestable
registration. We have a situation,

8 Our decision herein does not affect Albritton’s mutilation
claim, and would not necessarily preclude Albritton from claiming
that the mark SUSTAIN is not in use, or that it has been
abandoned. See, Cineplex Odeon Corp. v. Fred Wehrenberg Circuit
of Theatres Inc., 56 USPQ2d 1538, 1540 & n.5 (TTAB 2000); see
also, The Institut National des Appellations D’Origine v.
Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d 1190,
1197 (Fed. Cir. 1992).
Opposition Nos. 91186397 and 91186980
6
therefore, where the mark “TALL SHIPS”
for organizing, arranging and sponsoring
sailing races cannot be challenged on
the ground that the mark is merely
descriptive of the services … To hold
the term “TALL SHIPS” an unregistrable
component of a mark when the same term
is not only registrable for the
identical services, but is the subject
of an incontestable registration appears
illogical on its face and would be
highly prejudicial to the applicant.

Id. at 880; see generally, In re Strategic Partners Inc.,
102 USPQ2d 1397 (TTAB 2012). In fact, in Strategic
Partners, the Board held that it “would conclude, under
usual circumstances, that confusion is likely to occur”
between the two marks at issue in that case, but found no
likelihood of confusion in the “unusual situation”
presented, because “applicant already owns a registration
for a substantially similar mark for the identical goods,”
and “applicant’s [prior] registration and the cited
registration have coexisted for over five years.” In re
Strategic Partners Inc., 102 USPQ2d at 1399. In short,
because Jarrow already owns registrations for the marks
ALPHA LIPOIC SUSTAIN and JOINT SUSTAIN, which are both over
five years old, and Jarrow was not required to disclaim the
word SUSTAIN in either registration, Albritton may no longer
challenge the mark SUSTAIN, for goods identical to those
identified in the prior registrations, as “merely
descriptive.” Accordingly, Jarrow’s motion for summary
judgment is also GRANTED with respect to this claim.
Opposition Nos. 91186397 and 91186980
7
Turning finally to Jarrow’s claim of priority and
likelihood of confusion, on the record presented, we find
that there are genuine disputes as to material facts
remaining for trial. At a minimum, genuine disputes exist
as to the strength of Jarrow’s marks,9 the commercial
impression created by the parties’ marks and the similarity
or dissimilarity thereof. Accordingly, Jarrow’s motion is
DENIED with respect to its claim of priority and likelihood
of confusion in Opposition No. 91186397.
In conclusion, Jarrow’s motion for leave to amend its
notice of opposition in Opposition No. 91186397 is granted.
Jarrow’s motion for summary judgment is granted with respect
to Albritton’s claims in Opposition No. 91186980 that
Jarrow’s mark SUSTAIN is merely descriptive and a phantom
mark. Jarrow’s motion for summary judgment is denied with
respect to Jarrow’s claim of priority and likelihood of
confusion in Opposition No. 91186397. Proceedings herein
are resumed, and trial dates are reset as follows:

9 Jarrow is correct that evidence of third party registrations
does not constitute evidence of use of the registered marks. 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);
see also, In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB
1983) (“third party registration evidence proves nothing about
the impact of the third-party marks on purchasers”). However,
Jarrow’s reply brief includes evidence which at the very least
creates a genuine dispute as to whether the mark ULTRACLEAR
SUSTAIN is currently in use. Supplemental Declaration of Susan
Schlesinger Ex. B.

Opposition Nos. 91186397 and 91186980
8
Jarrow’s 30-day testimony period as
plaintiff in Opposition No. 91186397
to close July 3, 2012
Albritton's Pretrial Disclosures Due July 18, 2012

Albritton’s 30-day testimony period
as defendant in Opposition No.
91186397 and as plaintiff in
Opposition No. 91186980 to close September 1, 2012

Jarrow's pretrial disclosures for
rebuttal in Opposition No. 91186397
and as defendant in Opposition No.
91186980 due
September 16, 2012
Jarrow’s 30-day testimony period as
defendant in Opposition No. 91186980
and for rebuttal as plaintiff in
Opposition No. 91186397 to close October 31, 2012

Albritton's Rebuttal Disclosures as
plaintiff in Opposition No. 91186980
due November 15, 2012

Albritton’s 15-day rebuttal testimony
period as plaintiff in Opposition NO.
91186980 to close
December 15, 2012
Brief for Jarrow as plaintiff in
Opposition No. 91186397 due February 13, 2013

Brief for Albritton as defendant in
Opposition No. 91186397 and as
plaintiff in Opposition No. 91186980
due
March 15, 2013
Brief for Jarrow as defendant in
Opposition No. 91186980 and reply
brief, if any, as plaintiff in
Opposition No. 91186397 due
April 14, 2013
Reply brief, if any, for Albritton as
plaintiff in Opposition No. 91186980
due April 29, 2013

Opposition Nos. 91186397 and 91186980
9
In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.
***