Actina FZCO

Trademark Trial and Appeal Board

Feb 19, 2021

88346169 (T.T.A.B. Feb. 19, 2021)

Mailed: February 19, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Actina FZCO
_____
Serial No. 88346169
_____
Nicholas D. Wells of Legends Law Group PLLC,
for Actina FZCO.

Oreoluwa Alao, Trademark Examining Attorney, Law Office 108,
Kathryn E. Coward, Managing Attorney.
_____
Before Lykos, Adlin and English, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Actina FZCO seeks registration of the mark FLORA BIO SHIELD with
the square, circle and spiral design shown below

(FLORA disclaimed) for: “non-medicated soaps; perfumery, essential oils, non-
medicated cosmetics, non-medicated hair lotions; non-medicated dentrifices,” in
International Class 3; and “dietetic food adapted for veterinary use; dietetic food
This Opinion is Not a
Precedent of the TTAB
Serial No. 88346169
2
adapted for medical purposes; dietetic food, namely, pasta, crackers, cereal-based
food bars adapted for medical use; dietary supplements, food supplements ,” in
International Class 5.1 The Examining Attorney refused registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as to both classes of goods, on the
ground that Applicant’s mark so resembles the previously registered mark
BIOSHIELD, in standard characters, for “nutritional supplements” in International
Class 5,2 that use of Applicant’s mark in connection with Applicant’s goods is likely
to cause confusion. After the refusal became final, Applicant appealed and filed a
request for reconsideration which was denied. Applicant and the Examining Attorney
filed briefs.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two

1 Application Serial No. 88346169, filed March 19, 2019 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce. The
application includes this description of the mark: “The mark consists of a design of a square
overlaid by a circle that extends outside the borders of the square; within the circle appears
a spiral design; below the square and circle design appears the stylized wording ‘FLORA’
above the stylized wording ‘BIO SHIELD’.”
2 Registration No. 5588764, issued October 23, 2018.
Serial No. 88346169
3
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.”).
A. The Goods, Channels of Trade and Classes of Consumers
The cited registration is for goods in Class 5. The Examining Attorney cited it
against Applicant’s goods in Classes 3 and 5.
1. Applicant’s Class 5 Goods
Applicant’s and Registrant’s Class 5 goods are essentially identical. Indeed, the
Examining Attorney introduced evidence that the terms “dietary supplements, food
supplements,” identified in the involved application, and “nutritional supplements,”
identified in the cited Registration, are used interchangeably and are essentially
synonyms. June 7, 2019 Office Action TSDR 12 (“nih.org” article “Dietary
Supplements: Regulatory Challenges and Research Resources” explaining that
because “[t]here is no global consensus in terminology … for purposes of this article
the term dietary supplement will be used to refer to such products as nutritional
supplements …”); id. at 14 (“webmd.com” article “FAQs About Dietary Supplements”
begins “You buy vitamins and other nutritional supplements with the goal of
improving your health.”). The “Nutritional supplements” section of the “nature.com”
website even states “Nutritional supplements are any dietary supplement that is
intended to provide nutrients that may otherwise not be consumed in sufficient
quantities.” Id. at 16. Thus, we find that these goods are legally identical.
Serial No. 88346169
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Where, as here, the goods are in-part legally identical, we presume that the
channels of trade and classes of purchasers for those goods are also the same. See In
re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though
there was no evidence regarding channels of trade and classes of consumers, the
Board was entitled to rely on this legal presumption in determining likelihood of
confusion); 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); Am. Lebanese Syrian Associated Charities
Inc. v. Child Health Research Instit., 101 USPQ2d 1022, 1028 (TTAB 2011).
The identity (in part) of Applicant’s and Registrant’s Class 5 goods and their
overlapping channels of trade and classes of consumers weigh heavily in favor of
finding a likelihood of confusion. In addition, where, as here, the goods are in-part
legally identical, the degree of similarity between the marks necessary to find a
likelihood of confusion declines. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Grp.,
Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
2. Applicant’s Class 3 Goods
The goods need not be identical or even competitive in order to find a likelihood of
confusion. Rather, the question is whether the goods are marketed in a manner that
“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)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62
Serial No. 88346169
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USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are
not identical, the consuming public may perceive them as related enough to cause
confusion about the source or origin of the goods and services.”); Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“even if the goods in question
are different from, and thus not related to, one another in kind, the same goods can
be related in the mind of the consuming public as to the origin of the goods”); Kohler
Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1109 (2007).
Here, the Examining Attorney has established that Applicant’s Class 3 goods, or
goods of that type, are offered under the same marks as Registrant’s goods, or goods
of that type. For example, Avon offers cosmetics and nutritional supplements under
the AVON mark:

Serial No. 88346169
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June 7, 2019 Office Action TSDR 37-38. While the pictured nutritional supplements
bear the mark ESPIRA, they also bear the AVON mark, as the words “by Avon”
appear in small print under the ESPIRA mark. Kora offers “dietary supplement
powder,” as well as cosmetics and skin care products under its KORA mark:

Serial No. 88346169
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Id. at 44-47. The Honest Co. also offers nutritional supplements and makeup under
its HONEST and THE HONEST CO. marks, and Melaleuca and doTerra offer
essential oils and nutritional supplements under their MELALEUCA and doTERRA
marks, respectively. Id. at 39-43, 48-53; January 9, 2020 Office Action TSDR 8-11.
Elemis sells skincare products and dietary supplements under its ELEMIS mark:

January 9, 2020 Office Action TSDR 14-15. Pacifica Beauty and Paula’s Choice
Skincare use their marks (PACIFICA and PAULA’S CHOICE, respectively) for
skincare and makeup products as well as nutritional supplements. Id. at 16-25.
This evidence establishes that the goods in the involved application and cited
registration are related. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d
1047, 1050 (Fed. Cir. 2018) (crediting relatedness evidence showing that third parties
use the same mark for the goods and services at issue because “[t]his evidence
suggests that consumers are accustomed to seeing a single mark associated with a
Serial No. 88346169
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source that sells both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells the
goods and services of both parties, if presented, is relevant to a relatedness analysis”).
The Examining Attorney also relies on several use-based third-party registrations
showing that the same marks are registered in connection with Registrant’s goods (or
similar goods) on the one hand and Applicant’s goods (or similar goods) on the other,
including:
(Reg. No. 5342020) is registered for
“cosmetics” and “nutritional supplements.”

(Reg. No. 5683006) is registered for “cosmetic
creams,” “cosmetic soaps” and “dietary and nutritional
supplements.”

(Reg. No. 5416881) is registered
for “cosmetics,” “essential oils of cedarwood” and
“nutritional supplements.”

(Reg. No. 4426480) is registered for “cosmetics”
and “nutritional supplements.”

BSY (Reg. No. 4488550) is registered for “cosmetics,”
“essential oils” and “nutritional supplements.”

June 7, 2019 Office Action TSDR 17-35, 54-59. “Third-party registrations which cover
a number of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial scale
or that the public is familiar with them, may nevertheless have some probative value
to the extent that they may serve to suggest that such goods or services are of a type
Serial No. 88346169
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which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998).
The third-party uses and registrations upon which the Examining Attorney relies
are more than sufficient to establish a relationship between Applicant’s cosmetics,
essential oils and soaps and Registrant’s nutritional supplements. The Internet
printouts showing use of the same marks for both types of products also establish
that the channels of trade and classes of consumers for these goods overlap. Applicant
does not dispute that its Class 3 goods are related to and travel in the same channels
of trade to the same consumers as Registrant’s nutritional supplements. These
factors weigh in favor of finding a likelihood of confusion.
B. The Marks
We analyze the marks “in their entireties as to appearance, sound, connotation
and 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)
(quoting du Pont, 177 USPQ at 567). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018), aff’d, 777 Fed. Appx. 516 (mem) (Fed. Cir. 2019)
(quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Here, Applicant’s mark includes the essential entirety of Registrant’s mark, but
prefaces it with the term FLORA and adds a design. We find these differences
insufficient to avoid confusion between the sources of Applicant’s and Registrant’s
identical Class 5 goods, or their related Class 3 goods.
Serial No. 88346169
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The design element of Applicant’s mark is not sufficiently distinguishing to avoid
confusion in part because “the verbal portion of a word and design mark likely will
be the dominant portion.” In re Viterra, 101 USPQ2d at 1911; In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the
marks comprises both a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to request the goods or
services” and “because applicant’s mark shares with registrant’s mark that element
responsible for creating its overall commercial impression, the marks are confusingly
similar”). That is the case here, because Applicant’s design, while fairly large, is not
particularly distinctive, consisting, as Applicant describes it, of common shapes such
as “a design of a square overlaid by a circle.” Cf. In re Am. Acad. of Facial Plastic and
Reconstructive Surgery, 64 USPQ2d 1748, 1753 (TTAB 2002) (“However, ordinary
geometric shapes such as circles, ovals, squares, stars, etc., are generally regarded as
nondistinctive and protectable only upon proof of acquired distinctiveness.”) ; 1 J.T.
McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 7:33 (5th ed.
Nov. 2018 update) (“Ordinary geometric shapes such as circles, ovals, squares, etc.,
even when not used as a background for other marks, are regarded as nondistinctive
and protectable only upon proof of secondary meaning.”). While the “spiral design”
which appears “within the circle” in Applicant’s design may be more distinctive than
the more common square and circle, it is not an uncommon or remarkable design, and
remains subsidiary to the mark’s literal element.
Serial No. 88346169
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We find that there is nothing about the design element of Applicant’s mark which
changes the mark’s sound, meaning or commercial impression. Rather, the dominant
portion of the mark, the words FLORA BIO SHIELD, are how consumers will call for
and remember the goods rather than the basic, commonplace shapes accompanying
those words.
As for the words themselves, Applicant’s display of BIO SHIELD as two words
rather than one is a distinction without a meaningful difference, because
BIOSHIELD and BIO SHIELD sound identical, convey the same meaning and look
almost exactly alike. See e.g., Stockpot, Inc. v. Stock Pot Rest., Inc., 220 USPQ 52, 54
(TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (finding
STOCKPOT and STOCK POT confusingly similar); In re Best W. Family Steak House,
Inc., 222 USPQ 827, 827 (TTAB 1984) (BEEFMASTER and BEEF MASTER found
“practically identical”).
Furthermore, while Applicant’s mark contains the term FLORA and Registrant’s
does not, this distinction is also not sufficient to avoid confusion. Although Applicant
is correct that the first term in a mark, in this case FLORA, is generally assigned
greater weight in a likelihood of confusion analysis, here the disclaimed term “flora”
means “[t]he bacteria and other microorganisms that normally inhabit a bodily organ
or part.” June 7, 2019 Office Action TSDR 60. Thus, the disclaimed term FLORA in
Applicant’s mark indicates that Applicant’s BIO SHIELD product targets flora within
consumers’ bodies, or that Applicant’s BIO SHIELD product contains flora as an
ingredient. It is settled that descriptive and disclaimed terms such as FLORA are
Serial No. 88346169
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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 Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); see also In re Dixie Rests., Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (DELTA, not the disclaimed term
CAFÉ, is the dominant portion of the mark THE DELTA CAFÉ). This makes the
more distinctive, shared term BIO SHIELD the dominant portion of Applicant’s
mark, notwithstanding that the descriptive and disclaimed term FLORA comes first.
This heightens the likelihood of confusion.
Furthermore, because the term FLORA in Applicant’s mark appears to merely
specify the type of BIO SHIELD Applicant offers, consumers could perceive
Applicant’s mark as a more complete or descriptive version of Registrant’s mark. In
fact, consumers familiar with Registrant’s mark who encounter Applicant’s could
very well believe that Applicant’s mark is a more specific or complete version of
Registrant’s mark, or that it identifies one of several products in Registrant’s
BIOSHIELD line. Alternatively, consumers familiar with Applicant’s mark who
encounter Registrant’s could very well perceive it as merely the name of Applicant’s
products, displayed without the descriptive term FLORA.
As the Examining Attorney points out, we often find that adding a term to the
beginning of a registered mark will not prevent confusion. For example, in affirming
a refusal to register VANTAGE TITAN based on a registration for TITAN, we stated:
Serial No. 88346169
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“Applicant has taken registrant’s mark and added its ‘product mark’ to it. It is not
clear why the addition of the word VANTAGE would avoid confusion.” In re Toshiba
Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009). See also Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014) (finding STONE LION CAPITAL confusingly similar to LION and LION
CAPITAL); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975) (confusion found likely between BENGAL and BENGAL
LANCER & Design for related goods); In re Fiesta Palms LLC, 85 USPQ2d 1360
(TTAB 2007) (CLUB PALMS MVP for casino services likely to be confused with MVP
for casino services offered to preferred customers identified by special identification
cards); In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984) (“we are firmly of the opinion
that purchasers who encounter applicant’s ‘LITTLE GOLIATH’ stapler kits and
registrant’s ‘GOLIATH’ large diameter woodcased pencils are likely to believe … that
both products emanate from or are in some way associated with the same source”).
To be sure, the differences between the marks would be noticeable to any
consumers who were to compare the marks side-by-side. But that is not the test,
because “such a comparison is not the ordinary way that a prospective customer
would be exposed to the marks.” Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991). See also Coach Servs., 101 USPQ2d at 1721 (“The proper test is
not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons who
encounter the marks would be likely to assume a connection between the parties.”).
Serial No. 88346169
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Similarly, we must keep in mind: (1) “the fallibility of memory over a period of time;”
(2) that the “average” purchaser “normally retains a general rather than a specific
impression of trademarks;” and (3) that Applicant’s and Registrant’s marks both
include forms of the term BIOSHIELD. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). See also In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d
1082, 1085 (Fed. Cir. 2014) (“marks must be considered in light of the fallibility of
memory”) (citation, internal quotation marks, and ellipsis omitted).
Applicant’s reliance on In re Covalinski, 113 USPQ2d 1166 (TTAB 2014) and In
re White Rock Distilleries, Inc., 92 USPQ2d 1282 (TTAB 2009) is misplaced. In
Covalinski, the mark REDNECK RACEGIRL & Design, depicted below,

was permitted to register over the mark RACEGIRL, in standard characters, for
legally identical goods. The design element of the applicant’s mark was found to
include “the very large, prominently displayed letters RR,” which include “a
checkerboard pattern resembling a racing flag,” as well as heart designs, while most
of the literal elements of the mark were “in relatively tiny typeface.” In re Covalinski.
113 USPQ2d at 1168. We found that “[t]ogether, these graphic devices serve not only
to draw attention to the RR letters apart from the wording, but also make the letters
that form the ‘a-c-e’ of the word ‘RACEGIRL’ difficult to notice.” Id. This case is
nothing like Covalinski. Indeed, here the opposite is true – the words FLORA BIO
Serial No. 88346169
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SHIELD in Applicant’s mark are quite noticeable, while the design element,
consisting of common shapes, is not as unique or distinctive as the REDNECK
RACEGIRL design, which deemphasized the words in that mark. Analogously, in
White Rock Distilleries, the mark VOLTA was permitted to register over the mark
shown below:

(in which the words were part of a special form drawing) for goods which traveled in
the same channels of trade as the applicant’s goods. We found that “[t]he term TERZA
clearly dominates over the term VOLTA in the registered mark as TERZA appears in
large bold letters above VOLTA.” In re White Rock Distilleries, 92 USPQ2d at 1284.
Furthermore, the marks were found to sound different, convey different meanings
and “engender different commercial impressions.” Id. Significantly, the goods in
White Rock Distilleries were not found to be related. This case is nothing like White
Rock Distilleries either. Here, by contrast: Applicant’s common shape design is not
nearly as distinctive as the “vine shoot” design in White Rock Distilleries; the shared
term BIO SHIELD in Applicant’s mark is dominant and the same size as the
descriptive and disclaimed term FLORA; Applicant’s and Registrant’s marks in this
case are much more similar in their entireties than the marks in White Rock
Serial No. 88346169
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Distilleries; and here, the goods are in-part identical and in-part closely related,
whereas in White Rock Distilleries they were not related at all. These cases are
therefore not persuasive or instructive, and in any event each case must be decided
on its own merits.
In short, the marks are more similar than dissimilar when considered in their
entireties. This factor therefore also weighs in favor of finding a likelihood of
confusion.
II. Conclusion
The marks are similar and Applicant’s goods in both classes are identical or closely
related to, and travel in the same channels of trade to the same consumers as,
Registrant’s goods. Confusion is therefore likely.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.