Swiss Tech Biolabs, Inc.Download PDFTrademark Trial and Appeal BoardMar 20, 2019No. 87332368 (T.T.A.B. Mar. 20, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: March 20, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Swiss Tech Biolabs, Inc. _____ Serial No. 87332368 _____ Jay Stein of Stein & Associates for Swiss Tech Biolabs, Inc. Thomas Young, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Zervas, Shaw and Kuczma, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Swiss Tech Biolabs, Inc. (“Applicant”) seeks registration on the Principal Register of the standard character mark NEWMERA for “Dietary supplements for the alleviation of edema and pain” in International Class 5.1 1 Application Serial No. 87332368, filed on February 10, 2017 pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), asserting first use on March 26, 2013 and first use in commerce on March 1, 2014. Serial No. 87332368 - 2 - The Examining Attorney refused registration pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to Applicant’s goods, is likely to cause confusion with the previously registered mark for goods and services including the following International Class 5 goods: Pharmaceutical products for the treatment of ophthalmic disorders, respiratory disorders, dermatological disorders, ophthalmologic and inflammatory disorders; Medical products, namely, pharmaceutical preparations for use in the treatment of ophthalmic disorders, respiratory disorders and inflammatory disorders; Sanitary products for medical purposes, namely, sanitary preparations for medical use; Dietetic substances for medical use, namely, meal replacement bars and meal replacement drink mixes.2 After the Examining Attorney made the refusal final, Applicant appealed and requested reconsideration. On remand from the Board, the Examining Attorney denied the request for reconsideration. The appeal resumed and both Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. I. Likelihood of Confusion Our determination under Section 2(d) of the Trademark Act is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); 2 Registration No. 4857255, registered November 24, 2015. The registration states that the mark consists of the stylized wording “NEMERA,” in orange, the color orange is claimed as a feature of the mark and “NEMERA” has no meaning in a foreign language. Serial No. 87332368 - 3 - In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). “Not all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). A. The Marks We first consider whether Applicant’s and registrant’s marks are similar when viewed in their entireties in terms of appearance, sound, connotation and commercial impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1689). The test under the this du Pont 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 that confusion as to the source of the goods under the respective marks is likely to result. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. The focus is on the recollection of the average purchaser, who normally retains a general rather than Serial No. 87332368 - 4 - a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). The average purchaser of both Applicant’s and registrant’s goods is a member of the general public. Applicant has simply added the letter “W” between the second and third letters of registrant’s mark. Because the letter “W” lies within Applicant’s mark and it shares all of the remaining lettering in the same order as in registrant’s mark, the marks appear similar. Of course, the addition of the letter “W” makes the first syllable of Applicant’s mark the English word, “new.” The term “new” only slightly changes the appearance and sound of the marks and therefore does not distinguish them.3 The additional letter “W” also does not provide any meaning to the mark considered as a whole; both marks are arbitrary terms with no known meaning. Due to the arbitrary nature of the marks and the similarity – almost identity – in lettering, the marks have a similar commercial impression. We do not agree with Applicant that the “marks have different meanings and suggestive connotations.”4 Applicant relies on the webpage located at http://www.nemera.net/about-us/new-identity, presumably registrant’s webpage, 3 The fact that Applicant’s mark is a standard character mark and registrant’s mark is stylized is not of any importance; Applicant’s standard character mark is not limited to any particular form of display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983), and could be presented, for example, in the same style, color and size of lettering as registrant’s mark. 4 Applicant’s brief at 10, 11 TTABVUE 15. Serial No. 87332368 - 5 - which states NEMERA is “from the Greek Emera, meaning day, renewal, fresh hope, life” and “from and the Hebrew and Arabic Nemer, meaning leopard: swiftness, efficiency, agility.”5 Applicant has not offered evidence that demonstrates recognition by U.S. consumers of these derivations, Applicant has not identified or proven the primary meaning of the term and the translation statement in the registration record provides that that “NEMERA” has no meaning in a foreign language. Further, it has not escaped our attention that the “Think Baby Names” webpage submitted by Applicant states “Nemera is an uncommon given name for women” and “Nemera has yet to be listed in the list thus far. (TOP BABY NAMES, 2016).”6 This reinforces the arbitrary nature of registrant’s mark. The du Pont factor regarding the similarity of the marks weighs in favor of finding that confusion is likely. B. The Goods, Trade Channels and Classes of Purchasers It is well settled that goods and services need not be identical or even competitive to support a finding of likelihood of confusion. Rather, it is sufficient that the goods are related in some manner or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons in situations that would give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of the goods or services. See In re 5 Id. at 10-11, 11 TTABVUE 15-16; Req. for Recon., TSDR 27. 6 Req. for Recon., TSDR 30. Serial No. 87332368 - 6 - Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Int’l Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978). We must compare the goods as described in the application and the registration to determine if there is a likelihood of confusion. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). The Examining Attorney argues that the Applicant’s and registrant’s goods are related for two reasons. First, the Examining Attorney maintains that “dietary supplements for the alleviation of edema and pain” and medical products, namely, pharmaceutical preparations for use in the treatment of inflammatory disorders “are competitive as both intended for and will be marketed to the same class of consumers.”7 Edema and pain are related to inflammatory disorders. The Merriam-Webster Dictionary defines “edema” as an “abnormal infiltration and excess accumulation of serous fluid in connective tissue or in a serous cavity.”8 “Edema” is addressed in webmd.com as “the medical term for swelling. Body parts swell from injury or inflammation”;9 it explains, “a large allergic reaction (such as from a bee sting) may cause edema on your entire arm that can bring … pain” and “[t]o treat edema, you often must treat its underlying 7 13 TTABVUE 9. 8 https://www.merriam-webster.com/dictionary/edema. We take judicial notice of this definition. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). 9 November 5, 2017 Office Action, TSDR 20. Serial No. 87332368 - 7 - cause.”10 Edema and inflammation are not one in the same; edema can be caused by inflammation. The treatment of edema logically involves the treatment of the inflammation underlying the edema and the treatment of pain. Moving on, the record reflects several medications, including Advil, for treating pain and inflammation. Advil is identified as effective for “minor pain of arthritis” and “arthritis” is defined as “inflammation of joints due to infectious, metabolic, or constitutional causes.”11 The record further reflects that certain pain and inflammation medications such as Advil may be obtained without a prescription, and are available at drug stores.12 See webpages from cvs.com13 and walgreens.com.14 Applicant’s goods are advertised as “A Natural Pill To Relieve Pain[,] A Safe Alternative to Over-The-Counter Drugs” and promotional material states, “Most Over-The-Counter Drug Pain Relief Pills May Lead to Stroke and Heart Attack.”15 Applicant’s goods hence are competitive with pharmaceutical preparations for use in the treatment of inflammatory disorders, listed in registrant’s identification of goods. 10 November 5, 2017 Office Action, TSDR 23. 11 https://www.merriam-webster.com/dictionary/arthritis. We also take judicial notice of this definition. 12 The identifications of goods contain no limitations so we assume that the channels include all normal channels of trade. Morton-Norwich Prods, Inc. v. N. Siperstein, Inc., 222 USPQ 735, 736 (TTAB 1984) (“Since there is no limitation in applicant’s identification of goods, we must presume that applicant’s paints move in all channels of trade that would be normal for such goods, and that the goods would be purchased by all potential customers.”). 13 November 10, 2017 Office Action, TSDR 8-16. 14 Id. at TSDR 19-37. 15 February 10, 2017 Specimen of Use. Serial No. 87332368 - 8 - Upon consideration of the foregoing and all of the other evidence in the record, we find that the ultimate consumers of Applicant’s and registrant’s goods overlap,16 such goods may be purchased in the same locations without prescriptions including drug stores and their websites, such goods have the same objective (the alleviation of edema and pain) through anti-inflammatory properties and such goods are competitive with each another. A second reason for finding the goods related, according to the Examining Attorney, is because single entities manufacture “dietary supplements for the alleviation of edema and pain” and “dietetic substances for medical use, namely, meal replacement bars and meal replacement drink mixes” under the same mark. The Examining Attorney made of record the following webpages from Internet retailers demonstrating a commercial relationship between such goods: Neuro Biologix – offering a dietary supplement for joint inflammation and pain relief and meal replacement drink mixes for promoting immune system and digestive health.17 Naturade – offering dietary supplements for joint health, including reducing joint pain, and meal replacement mixes for weight loss or health goals.18 Isagenix – offering joint support dietary supplements that “helps protect, rejuvenate, and soothe joints,” as well as meal replacement drink mixes “for healthy weight loss” and “to maintain good health.”19 16 Applicant agrees insofar as it states that the general public are buyers of dietary supplements. Applicant’s brief at 16, 11 TTABVUE 21. 17 May 16, 2018 Office Action (“RFR Denial”), TSDR 3-8. 18 Id., TSDR 9-14. 19 Id., TSDR 60-71. Serial No. 87332368 - 9 - GNC – offering “GNC Total Lean Shake” (for maintaining weight, potentially a medical condition for some) and GNC TRIFLEX which “[s]upports improved joint comfort, flexibility and function, and the body’s natural anti-inflammatory response.”20 Applicant argues that the goods differ substantially in nature and formulation because registrant’s goods are “drugs” while Applicant’s goods are from “natural plant materials and herbal formulations” that can be consumed without the processes, approvals and restrictions required for pharmaceuticals. There are problems with Applicant’s argument. First, not all of registrant’s goods are pharmaceuticals; “dietetic substances for medical use, namely, meal replacement bars and meal replacement drink mixes” are included within registrant’s identification of goods and are not pharmaceuticals. (“Pharmaceutical” is defined as “a medicinal drug.”)21 Second, the proper inquiry is not whether the goods could be confused, but rather whether the source of the goods could be confused. In re Rexel, Inc., 223 USPQ 830, 831 (TTAB 1984). Third, goods can be related in several ways, one of which is through the circumstances surrounding their marketing (as stated above). The Examining Attorney has submitted evidence that the goods bear a commercial relationship, that the goods are of the type that come from a common source and Applicant’s specimen indicates that its goods are an alternative to registrant’s goods. The du Pont factors regarding the relatedness of the goods, trade channels and classes of consumers all favor a finding of likelihood of confusion. 20 Id., TSDR 35-51. 21 https://www.merriam-webster.com/dictionary/pharmaceutical. We take judicial notice of this definition. Serial No. 87332368 - 10 - C. Conditions of Sale The next du Pont factor we consider concerns the conditions of sale. Applicant argues that doctors are effectively the buyers of pharmaceuticals in that they select the goods.22 Registrant’s goods as identified are not limited to pharmaceuticals by prescription but encompasses over-the-counter drugs which may be purchased without a prescription. Its argument also does not account for patient involvement in the selection of prescription drugs. Applicant also argues that “[t]oday’s buyers are well aware of the possibility that a good may come from a different identity or different source even when the trademark is similar.”23 Applicant offers no evidence to support its argument and hence it is not persuasive. Its citation to precedent involving unrelated goods such as women’s wearing apparel, ladies undergarments and shoes, is not helpful.24 As for Applicant’s argument in its reply brief that buyers of the goods are informed, and “[t]here is no possibility of whimsical or impulse buying,”25 we point out that the standard of care for our analysis is that of the least sophisticated purchaser. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). There is nothing in the record to support a finding that the average purchasers of dietary supplements, dietetic substances for medical use and over-the-counter pharmaceuticals possess specialized knowledge. Cf. Miles Labs. Inc. v. Naturally 22 Applicant’s brief at 16, 11 TTABVUE 21. 23 Id. at 17, 11 TTABVUE 22. 24 Id. at 17, 11 TTABVUE 22. 25 Reply brief at 9, 14 TTABVUE 10. Serial No. 87332368 - 11 - Vitamin Supplements Inc., 1 USPQ2d 1445, 1451 (TTAB 1986), (“[w]e agree with applicant ... that purchasers of vitamins are likely to exercise special care in making their product selections.”). While purchasers of dietary supplements may take greater care purchasing goods of the type identified in registrant’s identification of goods, the record does not support a finding that such care outweighs the other du Pont factors. In any event, the fact Applicant's consumers may be sophisticated about dietary supplements, dietetic substances for medical use and pharmaceuticals, does not mean that they are sophisticated and knowledgeable about trademarks, or have such good memories for the minimal differences between the marks at issue that they could differentiate between respective marks or appreciate that similarity does not imply some kind of business relationship or affiliation. See Hydrotechnic Corp. v. Hydrotech Int’l, Inc., 196 USPQ 387, 392-393 (TTAB 1977); Refreshment Mach. Inc. v. Reed Ind., Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated purchaser does not automatically eliminate the likelihood of confusion because “[i]t must also be shown how the purchasers react to trademarks, how observant and discriminating they are in practice, or that the decision to purchase involves such careful consideration over a long period of time that even subtle differences are likely to result in recognition that different marks are involved”). D. Lack of Actual Confusion Applicant argues that there has been concurrent use of the marks for over five years without any confusion. However, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Assocs. Inc. v. HRL Assocs. Inc., Serial No. 87332368 - 12 - 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). An applicant’s assertion of the absence of actual confusion in an ex parte proceeding, is of little probative value in our determination on the issue of likelihood of confusion because the Board cannot readily determine whether there has been a significant opportunity for actual confusion to have occurred, such that the absence of confusion is meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817-1818 (TTAB 2001); In re Jeep Corp., 222 USPQ 333, 337 (TTAB 1984). E. Conclusion We have considered all of the evidence of record and all of the Examining Attorney’s and Applicant’s arguments, including arguments not specifically addressed in this decision. The similarity of the marks and goods, the identical classes of consumers and the overlapping trade channels, favor a finding of likelihood of confusion. Further, Applicant has not demonstrated any weakness in registrant’s mark and we have found registrant’s mark to be an arbitrary mark. An arbitrary mark is considered to be an inherently strong mark. See In re Opus One Inc., 60 USPQ2d 1812, 1813-14 (TTAB 2001) (arbitrary mark is considered strong and entitled to a “broad scope of protection”). In view thereof, we find that Applicant’s mark for “dietary supplements for the alleviation of edema and pain” is likely to be confused with registrant’s mark for goods including “pharmaceutical products for the treatment of inflammatory disorders”; “medical products, namely, pharmaceutical preparations for use in the treatment of inflammatory disorders”; and “dietetic Serial No. 87332368 - 13 - substances for medical use, namely, meal replacement bars and meal replacement drink mixes.” Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation