NutraChamps Inc.

Trademark Trial and Appeal BoardJul 9, 2021

88362697 (T.T.A.B. Jul. 9, 2021)

This Opinion is not a Precedent of the TTAB Mailed: July 9, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re NutraChamps Inc. _____ Serial No. 88362697 _____ Gene Bolmarcich of Law Offices of Gene Bolmarcich, for NutraChamps, Inc. Maureen Reed, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Goodman, English and Lebow, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: NutraChamps, Inc. (“Applicant”) seeks registration on the Principal Register of the mark SPOTLYTE (in standard characters) for Dietary and nutritional supplements containing Electrolyte Concentrate Hydration Powder in International Class 5.1 1 Application Serial No. 88362697 was filed on March 29, 2019, based upon Applicant’s assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Page references to the application record refer to the online database pages of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal Serial No. 88362697 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the mark DIETSPOTLIGHT (in standard characters) for “Dietary supplements; Dietary and nutritional supplements containing testosterone” in International Class 5.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Likelihood of Confusion Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or to deceive. 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). refer to the Board’s TTABVUE docket system. Applicant’s brief is at 4 TTABVUE and the Examining Attorney’s brief is at 9 TTABVUE. 2 Registration No. 5290442 issued September 19, 2017. Serial No. 88362697 - 3 - In every Section 2(d) case, two key factors are the similarity or dissimilarity of the marks and the goods or services. 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. Similarity or Dissimilarity of the Goods We first consider the second DuPont factor, “[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration.” DuPont, 177 USPQ at 567. See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-63 (Fed. Cir. 2014). The goods need not be identical or even competitive to find a likelihood of confusion. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). It is sufficient for a finding of likelihood of confusion as to a particular class if relatedness is established for any item of identified goods or services within that class in the application or cited registration. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Serial No. 88362697 - 4 - Applicant’s goods are “Dietary and nutritional supplements containing Electrolyte Concentrate Hydration Powder” and Registrant’s goods are “Dietary supplements; Dietary and nutritional supplements containing testosterone.” Registrant’s “dietary supplements” encompass Applicant’s “dietary supplements” “containing Electrolyte Concentrate Hydration Powder.” See e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). We find the goods are legally identical in part. In addition, the evidence submitted by the Examining Attorney shows that Registrant’s dietary and nutritional supplements containing testosterone are related to Applicant’s dietary and nutritional supplements containing electrolyte concentrate hydration powder. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). The third-party website evidence submitted by the Examining Attorney shows direct-to-consumer companies that manufacture and sell both types of goods, often under the same house mark. June 13, 2019 Office Action at TSDR 8-30 and October 2, 2020 Office Action at TSDR 2-19. The second DuPont factor favors a finding of likelihood of confusion. B. Similarity or Dissimilarity of the Channels of Trade and Classes of Consumers We now turn to the third DuPont factor which requires us to consider “the similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Serial No. 88362697 - 5 - Because there are no restrictions as to trade channels for Applicant’s and Registrant’s goods, and Registrant’s and Applicant’s goods are legally identical in part, we must presume that these legally identical goods will move in the same trade channels. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). In addition, the Examining Attorney’s third-party website evidence shows that the channels of trade overlap, as both Applicant’s and Registrant’s dietary and nutritional supplements, including Registrant’s dietary and nutritional supplements containing testosterone, are offered on the same direct-to-consumer websites. See, e.g., In re Davey Prods., 92 USPQ2d at 1203-04; In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-73 (TTAB 2009) (website evidence shows same or overlapping channels of trade and classes of customers). As to the class of purchasers, ordinary consumers are the potential purchasers of Applicant’s and Registrant’s dietary and nutritional supplements. Therefore, Applicant’s and Registrant’s dietary and nutritional supplements move in some of the same channels of trade and are sold to same class of purchasers. The third DuPont factor favors a finding of likelihood of confusion. C. Similarity or Dissimilarity of the Marks We now turn to the first DuPont factor, which requires us to determine the similarity or dissimilarity of the marks in terms of appearance, sound, connotation, Serial No. 88362697 - 6 - and overall commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The test under the first DuPont factor 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 impression that confusion as to the source of the goods offered under the respective marks is likely to result. Coach Servs., 101 USPQ2d at 1721. In comparing the marks, we consider them in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). It is nevertheless appropriate, for rational reasons, to regard certain features of the marks as being more dominant or otherwise significant, and to give those features greater weight. Stone Lion 110 USPQ2d at 1161; In re Nat’l Data Corp., 224 USPQ at 751. In this regard, descriptive terms are entitled to less weight in our analysis. 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 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (DELTA was the dominant portion of THE DELTA CAFÉ and design; the generic word “café” and the design were given less weight in the analysis). “When marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Serial No. 88362697 - 7 - Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Here, the goods are legally identical in part. Applicant provided third-party registrations of marks registered for goods in Class 5 that include the suffix “lyte” as evidence that consumers understand “lyte” to refer to electrolytes. December 7, 2020 Request for Reconsideration at TSDR 2-63. Third- party registrations can be used to show that a particular mark or element of a mark has a suggestive or commonly understood meaning in a particular field. Conde Nast Publ’ns Inc. v. Miss Quality, Inc., 180 USPQ 149 (TTAB 1973), aff’d, 184 USPQ 422 (CCPA 1975). The Examining Attorney provided a dictionary definition of spotlight as “a projected spot of light used to illuminate brilliantly a person, object, or group on a stage.” December 31, 2020 Denial of Reconsideration at TSDR 2.3 The Examining Attorney’s dictionary evidence also showed that “spotlyte” is not in the dictionary. Id. at 3. Applicant argues that “[t]he marks at issue look different, sound different and most importantly have very different meanings and overall commercial impressions.” 3 We take judicial notice that “lyte” is defined as “indicating a substance that can be decomposed or broken down: electrolyte” (American Heritage Dictionary of the English Language, https://www.thefreedictionary.com); that “lyte” is a variation of “lite” (Webster’s New World College Dictionary, https://www.collinsdictionary.com/dictionary); and that “lite” is an informal spelling of “light.” (Random House Kernerman Webster’s College Dictionary https://www.thefreedictionary.com). The Board may take judicial notice of dictionary definitions retrieved from online sources when the definitions themselves are derived from dictionaries that exist in printed form. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 88362697 - 8 - 4 TTABVUE 3. Applicant submits that its mark is a “double entendre,” more reasonably interpreted as a noun, and that consumers will understand “lyte” in its mark to indicate that Applicant’s goods contain electrolytes, given the nature of the goods. Id at 4. Applicant argues that there is “strong emphasis” on “lyte” in its mark. Id. Applicant also argues that the cited mark is “dissimilar in terms of sight, sound and meaning” because the first term in the cited mark is “diet,” “which is generally given more weight.” Id. Applicant contends that the addition of the term diet to the term “spotlight” in the cited mark creates a different meaning from “spotlight” alone and that DIETSPOTLIGHT is a unitary mark. Id. Applicant submits that “spotlight” can be both a verb and a noun, and in the case of the cited mark, “spotlight” is more likely a verb, providing “a reasonable connotation” of “spotlighting one’s diet.” Id. The Examining Attorney counters Applicant’s arguments stating that “spotlyte” is a misspelling of “spotlight,” making these terms phonetic equivalents. 9 TTABVUE 7-8. The Examining Attorney argues that the marks convey similar commercial impressions, “a spot of light used to illuminate something.” Id. at 8. The Examining Attorney submits that the differences between the marks do not obviate the similarities in sound, appearance and commercial impression. Id. Although the word DIET is the first part of the cited mark, it has little or no source-identifying significance when used as part of a mark for dietary and nutritional supplements. See e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Because ALE has nominal commercial significance, the Serial No. 88362697 - 9 - Board properly accorded the term less weight in assessing the similarity of the marks under DuPont. As a generic term, ALE simply delineates a class of goods.”); In re Dixie Rest., 41 USPQ2d at 1533-34 (applicant’s mark THE DELTA CAFÉ and design did not avoid confusion with registrant’s DELTA mark because “the dominant portion of [Applicant’s] mark, which disclaims the generic word ‘café,’ is ‘Delta’”). The term SPOTLIGHT, on the other hand, is arbitrary in relation to the Registrant’s goods. Therefore, the dominant term in Registrant’s mark is SPOTLIGHT, and it is entitled to more weight in the analysis. Applicant’s and Registrant’s marks are similar in appearance and sound, as to the term SPOTLIGHT/SPOTLYTE. Applicant’s mark is an obvious misspelling of the actual word “spotlight” which is the second term in Registrant’s mark. Although the second syllable of each mark is spelled differently LIGHT/LYTE they are still very similar in appearance. See Viterra, 101 USPQ2d at 1912 (XCEED and X-SEED similar). As to sound, while we recognize that there is no one correct pronunciation of a mark that is not a recognized word, Viterra, 101 USPQ2d at 1912, SPOT in Applicant’s mark is identical to SPOT in Registrant’s mark. LYTE in Applicant’s mark is the equivalent of “lite,” which is an alternate spelling for “light.” Any minor differences in the sound of SPOTLIGHT/SPOTLYTE may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks. We find that SPOTLIGHT/SPOTLYTE are similar in sound. Serial No. 88362697 - 10 - As to connotation and commercial impression, although Applicant argues that consumers will consider SPOTLYTE to have a different connotation due to the use of the suffix, “lyte,” SPOTLYTE is likely to be understood by consumers as a variation on, or misspelling of SPOTLIGHT. Therefore, because Applicant’s mark also connotes “spotlight,” it has a similar connotation and commercial impression to SPOTLIGHT in Registrant’s mark. See e.g., In re Cynosure, Inc., 90 USPQ2d 1644, 1646 (TTAB 2009) (“CYNERGY and SYNERGIE are highly similar, if not identical, phonetic equivalents”; “[b]oth marks connote “synergy” which dominates the commercial impression of both marks). Although there are differences between Applicant’s and Registrant’s marks, when we compare them in their entireties, we find that they are similar. In particular, as stated, the descriptive term DIET in Registrant’s mark has little or no source identifying value, and the misspelling of SPOTLYTE in Applicant’s mark, the phonetic equivalent of SPOTLIGHT in Registrant’s mark, does not detract from Applicant’s and Registrant’s marks’ overall similarity in sound, meaning, and commercial impression. See Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660- 61 (TTAB 2014) (applicant’s mark PRECISION likely to be viewed as shortened version of opposer’s mark PRECISION DISTRIBUTION CONTROL when used in connection with partially-identical goods); In re Cynosure, 90 USPQ2d at 1647 (CYNERGY and SYNERGIE PEEL confusingly similar for related goods). Serial No. 88362697 - 11 - The marks are very similar and consumers may view Applicant’s mark as a variant of Registrant’s mark. We find the first DuPont factor weighs in favor of a finding of likelihood of confusion. II. Conclusion We have considered all of the arguments and evidence of record and all relevant DuPont factors. We find the marks are similar, the goods are legally identical in part and related and move in overlapping channels of trade, and are offered to the same class of consumers. As a result we find confusion likely. Decision: The Section 2(d) refusal to register Applicant’s mark SPOTLYTE is affirmed.