Primary Investments Grp. Ltd.

Trademark Trial and Appeal BoardAug 4, 2017

No. 86732652 (T.T.A.B. Aug. 4, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: August 4, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Primary Investments Grp. Ltd. _____ Serial No. 86732652 _____ Thomas W. Cook of Thomas Cook Intellectual Property Attorneys, for Primary Investment Grp. Ltd. Kelley L. Wells, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Cataldo, Adlin and Gorowitz, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Primary Investments Grp. Ltd. (“Applicant”) filed an application for registration of MULTI-FIBER COLON CLEANSE (in standard characters) for “vitamins and nutritional supplements” in International Class 5.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the 1 Application Serial No. 86732652 was filed on August 21, 2015, seeking registration on the Principal Register based upon Applicant’s allegation of use of the mark in commerce as of August 11, 2014 under Section 1(a) of the Trademark Act. In response to the Examining Attorney’s refusal of registration under Section 2(e)(1), Applicant amended the involved application to seek registration on the Supplemental Register. The Examining Attorney accordingly withdrew the refusal of registration under Section 2(e)(1). Serial No. 86732652 - 2 - Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with Registration No. 1600268, issued on the Principal Register for the mark COLON CLEANSE (in typed form)2 for “bulk forming fiber laxative” in International Class 5.3 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. We reverse the refusal to register. I. Applicable Law 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 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 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”). We consider these factors and the other du Pont factors concerning which Applicant or the Examining Attorney submitted evidence or argument. 2 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted in typed form is the legal equivalent of a standard character mark. 3 Issued on the Principal Register on June 12, 1990. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Second renewal. Serial No. 86732652 - 3 - A. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. We turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)). In comparing the marks, we are mindful that the test is not whether they 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 so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD Elec’s. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rest’s. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Applicant’s mark is MULTI-FIBER COLON CLEANSE in standard characters whereas Registrant’s mark is COLON CLEANSE in typed form. Obviously, the COLON CLEANSE portions of the marks are identical in appearance, sound and meaning, suggesting a treatment intended to remove impurities from the colon, as discussed more fully below. However, we must consider the entire marks, including Serial No. 86732652 - 4 - the prefix MULTI-FIBER in Applicant’s mark, to determine their commercial impressions. The term MULTI is defined as “a combining form meaning ‘many,’ ‘much,’ ‘multiple,’ ‘many times,’ ‘more than one, ‘more than two,’ ‘composed of many like parts,’ ‘in many respects,’ used in the formation of compound words: multiply; multiple.”4 FIBER is defined, inter alia, as “a slender, threadlike root of a plant.”5 The addition of the term MULTI-FIBER to COLON CLEANSE indicates goods consisting of multiple fibers or sources of fiber intended to remove impurities from the large intestine, or colon. The marks COLON CLEANSE and MULTI-FIBER COLON CLEANSE therefore create similar commercial impressions because they both connote goods intended to treat the colon, albeit with Applicant’s goods being more specifically identified as consisting of multiple fiber sources. The fact that Applicant’s mark connotes a narrower category of goods does not create a significantly different commercial impression. It is long established that generally the mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d). See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) (THE 4 Dictionary.com, Id. at 80. 5 Id. at 81. Serial No. 86732652 - 5 - LILLY and LILLI ANN); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN). Customers who are familiar with Registrant’s goods, upon seeing Applicant’s mark, or vice versa, would likely assume that the goods were related and that MULTI-FIBER COLON CLEANSE is a subset of the COLON CLEANSE brand. Compared in their entireties, the marks are similar in sound, appearance, meaning and commercial impression. This du Pont factor favors a finding of likelihood of confusion. B. The nature and similarity or dissimilarity of the goods, the established, likely- to-continue trade channels, and the classes of purchasers. We turn to the du Pont factor involving the similarity or dissimilarity of Applicant’s goods and Registrant’s goods. It is settled that in making our determination, we must look to the goods as identified in the application vis-à-vis those recited in the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). The respective goods need only be “related in some manner” or “the circumstances surrounding their marketing 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, 101 USPQ2d 1713 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Serial No. 86732652 - 6 - The issue here is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Applicant’s goods are “vitamins and nutritional supplements.” Registrant’s goods are “bulk forming fiber laxative.” The Examining Attorney has introduced evidence that Registrant’s goods are described as a “bulk forming fiber laxative/dietary supplement” on the GNC.com internet website,6 and are listed under the general heading of vitamins and dietary supplements on the amazon.com website.7 The Examining Attorney further introduced evidence from the naturessecret.com website advertising Applicant’s goods as indicated below: 8 This evidence suggests that Applicant’s “nutritional supplements” may be used for colon detoxification and to promote bowel movements to enhance digestion and 6 Id. at 9-11. 7 Id. at 12-18. 8 Examining Attorney’s May 25, 2016 final Office action at 8-9. Serial No. 86732652 - 7 - elimination. In other words, Applicant’s goods appear to perform a function similar to Registrant’s “bulk forming fiber laxative.” In addition, this evidence suggests that Registrant’s goods may be advertised as a form of dietary supplement. Thus, while we do not find this website evidence to be sufficient to support the Examining Attorney’s contention that the goods are “in essence the same types of goods,”9 the goods nonetheless appear to be sufficiently related that confusion as to their source could arise. As further evidence that Applicant’s goods are related to Registrant’s, the Examining Attorney has submitted a number of use-based, third-party registrations.10 Among these, we note that the following registrations list, in their identifications of goods, both vitamins or dietary/nutritional supplements and laxatives of various types: 2045934 2417799 3047388 3171929 4310909 4094111 2941616 3440804 4155173 4045494 4262523 4202458 4413584 4578853 4613503 4832863 4820950 4865485 4764681 4910038 5000141 Third-party registrations that are based on use in commerce have some probative value to the extent that they suggest that the listed goods are of types which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). 9 10 TTABVUE 6. 10 Examining Attorney’s September 17, 2016 denial of Applicant’s first request for reconsideration at 6-100. Serial No. 86732652 - 8 - Although such registrations do not prove that the registered marks are actually used in the marketplace on both vitamins and nutritional supplements and laxatives, they at least demonstrate that a number of third parties have sought and obtained registrations of marks for use on both types of goods. In sum, we find Applicant’s vitamins and nutritional supplements and Registrant’s bulk forming fiber laxatives are related because they are of a kind that may emanate from a single source under a single mark. For this reason, we find that the du Pont factors relating to the similarity of the goods, trade channels, and classes of purchasers weigh in favor of finding a likelihood of confusion. C. The number and nature of similar marks in use on similar goods. We begin with the commercial strength of the cited mark under the sixth du Pont factor. Du Pont, 177 USPQ at 567. In an ex parte appeal, “[t]he purpose of [an applicant] introducing third-party uses is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different such marks on the bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. “[T]he strength of a mark is not a binary factor” and “varies along a spectrum from very strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). If the evidence establishes that the consuming public is exposed to third-party use of similar marks used in connection with similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay, 73 USPQ2d at 1693. “The weaker [the Registrant’s] mark, the Serial No. 86732652 - 9 - closer an applicant’s mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Id. at 1676 (internal citations omitted). Evidence of extensive registration and use by others of a term on the same or very similar goods can be “powerful” evidence of weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, 115 USPQ2d at 1674. Applicant argues that potential purchasers have been educated to distinguish between all marks which contain the phrase “colon cleanse” based on the minute differences between such marks. We can even see in some of this evidence instances in which potential purchasers of supplements are exposed to marks closer to each other than the cited phrase “colon cleanse” is to applicant’s mark, and such purchasers appear to be distinguishing between such marks.11 In support, Applicant introduced excerpts from twenty third-party internet web pages showing use of the term “COLON CLEANSE” to identify and describe products and product categories, as well as in URLs for websites offering similar products.12 11 Applicant’s May 6, 2016 response to the Examining Attorney’s first Office action at 10. Page references herein to the application record refer to the .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs refer to the Board’s TTABVUE docket system. Applicant refers in its briefs and Office action responses to the “generic phrase” colon cleanse. However we do not construe Applicant’s comments as an impermissible collateral attack upon the cited registration, which is not relevant or appropriate in an ex parte appeal. In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). See also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016). Rather, we construe Applicant’s arguments as being directed toward the weakness of the mark in the cited registration. 12 Id. at 17-76. The third-party internet websites include blessedherbs.com; amazon.com; 3daycleanse.com; gnc.com; walgreens.com; bestcoloncleanserreviews.com; coloncleanse.net; athomecoloncleanse.com; weightlosscoloncleanse.org; mayoclinic.org; medicaldaily.com; webmd.com; best-colon-cleanse.com; coloncleanse.net; coloncleansereviewer.com; Serial No. 86732652 - 10 - The twenty internet web pages all show use of the term “COLON CLEANSE” by third parties discussing, comparing, critiquing and offering for sale the same types of goods as Applicant and Registrant. Representative samples of the web pages are reproduced in part below.13 14 consumereview.com; scientificamerican.com; drnatura.com; columbia.edu; and naturains.com. 13 Emphasis and notations provided by Applicant. 14 Id. at 21. Serial No. 86732652 - 11 - 15 15 Id. at 23. Serial No. 86732652 - 12 - 16 16 Id. at 17. Serial No. 86732652 - 13 - 17 17 Id. at 19. Serial No. 86732652 - 14 - 18 18 Id. at 31. Serial No. 86732652 - 15 - 19 19 Id. at 33. Serial No. 86732652 - 16 - 20 This evidence shows that the term “COLON CLEANSE” is widely used by third- parties for goods identified in the involved application and cited registration as well 20 Id. at 63. Serial No. 86732652 - 17 - as goods related thereto. While Applicant has not presented specific evidence concerning the extent and impact of these uses, it nevertheless presented “evidence of these marks being used in internet commerce” for the goods at issue and related goods. Jack Wolfskin, 116 USPQ2d at 1136; see also Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (Internet printouts “on their face, show that the public may have been exposed to those internet websites and therefore may be aware of the advertisements contained therein”). We find this evidence of the commercial weakness of “COLON CLEANSE” to be “powerful on its face. The fact that a considerable number of third parties use similar marks was shown,” Juice Generation, 115 USPQ2d at 1674. See also Anthony’s Pizza & Pasta Int’l, Inc. v. Anthony’s Pizza Holding Co., Inc., 95 USPQ2d 1271, 1278 (TTAB 2009) (testimony and evidence shows that the name “Anthony’s” has been extensively adopted, registered and used as a trademark for restaurant services, and therefore has a significance in this industry.); In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1563 (TTAB 1996) (“evidence offered by applicant is sufficient to establish prima facie that a significant number of third parties are using trade names/service marks containing the term BROADWAY for restaurant/’eating place’ services, as well as for goods and services related thereto.”); Plus Products v. Natural Organics, Inc., 204 USPQ 773, 779-80 (TTAB 1979) (allowing registration of NATURE’S PLUS for vitamins despite prior registration of PLUS for vitamins given coexistence of a number of registrations containing PLUS for similar goods). Serial No. 86732652 - 18 - In addition, Applicant has submitted evidence of conceptual weakness of “COLON CLEANSE” in connection with the goods at issue. This evidence, excerpted below, suggests extensive use of “COLON CLEANSE” to describe products related to the goods at issue herein. This evidence demonstrates that “COLON CLEANSE,” at a minimum, has a recognized suggestive meaning in connection with the goods at issue, namely, vitamins, nutritional supplements and laxatives. See In re Box Solutions, 79 USPQ2d 1953, 1957-58 (TTAB 2006) (“BOX is, at a minimum, highly suggestive of computers and we accord this term a very narrow scope of protection.”). Serial No. 86732652 - 19 - 21 21 Id. at 38. Serial No. 86732652 - 20 - The evidence of third party use discussed above suggests that the term “COLON CLEANSE” is in fact commercially weak, and also conceptually weak, when used in connection with nutritional supplements and laxatives, and it is therefore entitled to only a quite narrow scope of protection. Unlike fanciful or arbitrary marks, where a party chooses a mark that is inherently weak, it will not enjoy the wide latitude of protection afforded to owners of strong trademarks, and unlike commercially strong marks, where a party’s mark is commonly used by others for similar products, it will similarly be entitled to a limited scope of protection. As such, these du Pont factors weigh heavily against finding a likelihood of confusion. D. Conclusion In summary, we have carefully considered all of the evidence of record pertaining to the relevant du Pont likelihood of confusion factors, including any evidence not specifically discussed herein, as well as Applicant’s arguments with respect thereto. As explained above, the similarity of the marks and relatedness of the goods and trade channels weigh in favor of finding a likelihood of confusion. There are instances, however, where a single du Pont factor is dispositive (see, e.g., Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991)) outweighs these other du Pont factors. Such is the case here where the terminology in the cited mark renders it commercially and conceptually weak such that “the public will look to other elements to distinguish the source of the [goods or] services.” See Juice Generation, 115 USPQ2d at 1674-75. See also Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, Serial No. 86732652 - 21 - 189 USPQ 693, 694-95 (CCPA 1976). Balancing these factors, we find no likelihood of confusion. Decision: The Section 2(d) refusal to register Applicant’s mark is reversed.