Martha Dare

Trademark Trial and Appeal Board

Oct 29, 1999

No. 75026172 (T.T.A.B. Oct. 29, 1999)

Paper No. 15
cmb
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Marthe Dare, d.b.a. Dare Enterprises
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Serial No. 75/026,172
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William H. Pavitt, Jr. of Beehler & Pavitt for Marthe Dare,
d.b.a. Dare Enterprises.
Tomas Vlcek, Trademark Senior Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Hohein and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed an application by which she seeks
to register the mark 21st CENTURY MANNA, in the stylized
lettering shown below,
Ser. No. 75/026,172
2
for goods identified in the application as “nutritional
herbal supplements to be taken internally as a digestive
aid for intestinal disturbances to both detoxify the system
and stimulate efficient removal of waste products from the
colon.”1
The Trademark Senior Attorney has refused registration
pursuant to Trademark Act Section 2(d), 15 U.S.C. §1052(d),
citing two registrations as bars to registration of
applicant’s mark. The first registration is of the mark
21st CENTURY and design, depicted below, for goods
identified as “vitamins, herbal remedies and nutritional
supplements.”2
The second cited registration is of the mark FOODFORM
MANNA, in typed form, for goods identified in the

1 Serial No. 75/026,172, filed November 30, 1995. The
application is based on use in commerce; applicant has alleged
August 9, 1995 as the date of first use of the mark anywhere and
August 15, 1995 as the date of first use of the mark in commerce.
2 Registration No. 1,790,110, issued on August 31, 1993 to Twenty
First Century Nutritional Products, Inc. Combined §§8 and 15
affidavit accepted and acknowledged.
Ser. No. 75/026,172
3
registration as “dietary food supplements for human
consumption.”3
When the refusals were made final, applicant filed
this appeal. Applicant and the Trademark Senior Attorney
have filed main briefs, and applicant has filed a reply
brief. No oral hearing was requested. After careful
consideration of the evidence and arguments offered by
applicant and the Trademark Senior Attorney, and for the
reasons discussed below, we affirm the refusal to register
which is based on Registration No. 1,790,110, but we
reverse the refusal which is based on Registration No.
1,983,524.
As to each of the refusals, 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 likelihood of confusion issue. See
In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). 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).

3 Registration No. 1,983,524, issued on July 2, 1996 to IntraCell
Nutrition Inc.
Ser. No. 75/026,172
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Registration No. 1,790,110.
The goods identified in applicant’s application, i.e.,
“nutritional herbal supplements to be taken internally as a
digestive aid for intestinal disturbances to both detoxify
the system and stimulate efficient removal of waste
products from the colon” are encompassed within, and thus
are legally identical to, the “herbal remedies” and
“nutritional supplements” identified in Registration No.
1,790,110. See In re Diet Center Inc., 4 USPQ2d 1975 (TTAB
1987).
Furthermore, because applicant’s goods and
registrant’s goods are legally identical, and in the
absence of any express limitations in either applicant’s or
registrant’s identification of goods, we must presume that
applicant’s goods and registrant’s goods move in the same
trade channels and that they are marketed to and purchased
by the same classes of purchasers. See In re Elbaum, 211
USPQ 639 (TTAB 1981). The catalog and advertising evidence
attached to the Trademark Senior Attorney’s December 20,
1996 final office action further supports this conclusion.
In short, applicant’s goods, trade channels and
classes of customers are legally identical to the
registrant’s goods, trade channels and classes of
Ser. No. 75/026,172
5
customers. These facts support a finding of likelihood of
confusion in this case.
We turn next to the issue of whether applicant’s mark
and the registered mark, when viewed in their entireties,
are similar in terms of appearance, sound, connotation and
commercial impression. 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 their overall commercial impressions
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). Furthermore, because applicant’s
goods are legally identical to registrant’s goods, the
degree of similarity between the marks that is required to
support a finding of likelihood of confusion declines.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Although the marks at issue must be considered in
their entireties, it is well-settled that 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
Ser. No. 75/026,172
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determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). We find that the literal portion of the
registered mark, “21st CENTURY,” is the dominant feature of
the registered mark, inasmuch as it is more likely than the
design element of the mark to be remembered and used by
purchasers in identifying and calling for the goods. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
We are not persuaded by applicant’s argument that “21st
CENTURY” lacks inherent distinctiveness as applied to
registrant’s goods, or that it is not the dominant feature
of registrant’s mark. “21st CENTURY” does not describe the
goods in any way, nor is there any evidence that the
distinctiveness of the designation has been weakened by any
third party use of the designation in connection with such
goods.
Applicant also uses the designation “21st CENTURY”
prominently in her mark. Applicant has added the word
MANNA, a word connoting food or nourishment which is, at
the least, somewhat suggestive as applied to applicant’s
goods, as applicant herself has acknowledged. (Applicant’s
brief at 7.) We take judicial notice of the definition of
“manna” set forth in Webster’s Ninth New Collegiate
Dictionary (1990), at 724:
Ser. No. 75/026,172
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manna 1 a: food miraculously supplied to the
Israelites in their journey through the
wilderness b: divinely supplied spiritual
nourishment c: a usu. sudden and unexpected
source of gratification, pleasure, or gain 2
a: the sweetish dried exudate of a European ash
(esp. Fraxinus ornus) that contains mannitol
and has been used as a laxative and demulcent
b: a similar product excreted by a scale insect
(Trabutina mannipara) feeding on the tamarisk
Comparing applicant’s and registrant’s marks in their
entireties, we find that, despite the presence of the
design element in registrant’s mark and the word MANNA in
applicant’s mark, the marks are similar in terms of their
overall commercial impressions because they both include
the designation “21st CENTURY.” The marks are sufficiently
similar that, when they are used on the legally identical
goods involved in this case, confusion is likely to result.
Applicant relies heavily on a document entitled
CONSENT AGREEMENT, which was executed by her and by the
owner of the cited Registration No. 1,790,110 on August 21,
1996, after applicant received the Trademark Senior
Attorney’s Section 2(d) refusal. However, we find that
this agreement is not entitled to dispositive weight in our
likelihood of confusion analysis in this case. In its
entirety, the text of the agreement reads as follows:
CONSENT AGREEMENT
Ser. No. 75/026,172
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21st Century Nutritional Products, 2445 W.
12th Street, Suite 2, Tempe, AZ 85281, owner of
the trademark “21st Century” for vitamins,
herbal remedies, and nutritional supplements
(Registration Number: 1790110), does hereby
agree to license the right to use of the name
“21st Century” to Dare Enterprises, 270 No.
Canon Drive, Suite 2046, Beverly Hills, CA,
90212, based upon the following agreement
entered into between Dare Enterprises and 21st
Century Nutritional Products. In consideration
of this use, Dare Enterprises will pay the sum
of one dollar annually to 21st Century
Nutritional Products.
Dare Enterprises agrees to cooperate with
21st Century Nutritional Products on all future
packaging of products to ensure that in no way
does 21st Century Manna duplicate or give the
commercial impression of emanating from 21st
Century Nutritional Products.
For good and valuable consideration receipt
of which is acknowledged, the parties have
signed the agreement below.
This agreement cannot be construed as registrant’s
consent to registration of applicant’s mark. As the
Trademark Senior Attorney has pointed out, by its very
terms the agreement instead appears to be a license to use
the mark, granted by registrant to applicant for a fee.
The agreement therefore is quite similar to the agreement
rejected by the Court in the case of In re Wilson Jones
Company, 337 F.2d 670, 143 USPQ 238 (CCPA 1964). The Court
stated:
Ser. No. 75/026,172
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While we have held that an agreement by the
owner of a reference registration giving
express consent to register should have an
important persuasive effect in determining
registrability, that situation is not here.
The agreement here conveys only the right to
use the reference mark. We do not see that
this agreement supports the inference that the
owner of the reference mark thought confusion
between the marks sought to be registered and
the reference mark to be unlikely.
143 USPQ at 239. (Emphasis in original; internal citation
omitted). See also J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition (4th Ed.) at §23:85.
Likewise, in the present case, the agreement does not
include registrant’s express consent to applicant’s
registration of the mark “21st CENTURY MANNA” for the goods
identified in applicant’s application. Registrant merely
has licensed to applicant, for a fee, “the right to use of
the name ‘21st Century.’” Accordingly, this case is
distinguishable from the cases relied on by applicant
involving consent agreements which have been found to be
acceptable, such as In re Four Seasons Hotels Limited, 987
F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1992).
Applicant argues that the agreement should not be
deemed to be a license because it fails to include any
provisions for registrant’s control over the nature and
quality of the goods on which applicant uses the mark.
Ser. No. 75/026,172
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However, the issue is not whether the agreement is
effective as a license agreement, but rather whether it is
effective as a consent to register. Clearly, it is not.
Applicant further argues that the agreement was
prepared by the applicant and registrant themselves,
without the assistance of intellectual property counsel,
and that any technical deficiencies in the agreement
accordingly should be overlooked. However, applicant has
been on notice since the Trademark Senior Attorney’s
issuance of the first final Office action on December 20,
1996 that the Office deemed the agreement to be deficient
as a consent agreement. Applicant has been represented by
counsel in this matter since at least as early as May 2,
1997, and has had ample time to submit a substitute
agreement which, under the case law cited by applicant in
her briefs, would constitute a valid and persuasive consent
agreement. For reasons which are not apparent from the
record, applicant has not obtained and submitted such a
substitute consent agreement. She will not now be heard to
argue that the deficiencies in the agreement (which are
substantive, not merely technical in nature) should be
overlooked or excused on account of her previous pro se
status.
Ser. No. 75/026,172
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After considering all of the evidence of record with
respect to the relevant du Pont factors, including, for
whatever it is worth, the so-called “consent agreement,” we
find that a likelihood of confusion exists as between
applicant’s mark and the mark in Registration No.
1,790,110. Accordingly, we affirm the Section 2(d) refusal
which is based on that registration.
Registration No. 1,983,524
However, we reverse the Trademark Senior Attorney’s
Section 2(d) refusal which is based on Registration No.
1,983,524, of the mark FOODFORM MANNA for “dietary food
supplements for human consumption.” Although applicant’s
goods are encompassed within, and thus legally identical
to, the goods identified in the cited registration, we find
that the marks are sufficiently dissimilar that confusion
is not likely to result.
As discussed above, the term MANNA is somewhat
suggestive as applied to these goods. The other features
of the respective marks, i.e., the word FOODFORM in
registrant’s mark and the designation 21st CENTURY in
applicant’s mark, are quite dissimilar in terms of
appearance, sound and connotation. This dissimilarity is
sufficient to give the marks different overall commercial
Ser. No. 75/026,172
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impressions, despite the presence of the word MANNA in both
marks.
Decision: The refusal to register based on
Registration No. 1,983,524 is reversed. The refusal to
register based on Registration No. 1,790,110 is affirmed.
R. F. Cissel
G. D. Hohein
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board