Advantage Marketing, Inc.

Trademark Trial and Appeal Board

Jul 11, 2003

No. 75765377 (T.T.A.B. Jul. 11, 2003)

Mailed: July 11, 2003
Paper No. 14
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Advantage Marketing, Inc.
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Serial No. 75/765,377
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Bretton L. Crockett of TraskBritt, PC for Advantage
Marketing, Inc.
Stephanie M. Davis, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Hairston, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Advantage Marketing, Inc. has filed an application to
register NUTRACEUTICA as a trademark for “nutritional
supplements.”1 The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act in
view of the prior registration of NUTRICEUTICA for
1 Serial No. 75/765,377, filed August 26, 1999, based on
applicant’s allegation that it has a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/765,377
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“computer software for use in maintaining a database of
nutritional and natural medicine.”2
When the Examining Attorney made the refusal final,
applicant appealed. Both applicant and the Examining
Attorney filed briefs, but an oral hearing was not
requested.
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. In re E. I. du Pont de Nemours & 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. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The marks NUTRACEUTICA and NUTRICEUTICA are virtually
identical in appearance but for a single letter. The marks
would be pronounced in much the same way and create the
same commercial impression.
Essentially conceding the identity of the marks,
applicant has focused on the differences in the goods and
2 Registration No. 2,427,403 issued February 6, 2001.
Ser No. 75/765,377
3
the asserted differences in their channels of trade and
classes of customers.
The Examining Attorney argues that the involved goods
are related because offering nutritional supplements is
within registrant’s normal field of expansion. In support
of this contention, the Examining Attorney submitted a copy
of the Internet home page of a third party, which shows
that this company offers nutritional supplements and
provides information about the supplements at its website.
The Examining Attorney also submitted a copy of
registrant’s Internet home page, which shows that
registrant’s computer software contains information about,
inter alia, nutritional supplements.
Applicant, in urging reversal of the refusal to
register, contends that registrant’s Internet home page
shows that registrant’s computer software is of a type that
would be marketed to and purchased by pharmacists in
maintaining a computer database. Further, applicant argues
that its nutritional supplements are sold through retail
stores and are marketed to consumers to supplement their
diet. Applicant also disputes the Examining Attorney’s
contention that a computer software provider would normally
expand into the field of nutritional supplements.
Ser No. 75/765,377
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It is well settled that the issue of likelihood of
confusion must be determined on the basis of the goods as
they are set forth in the involved application and the
cited registration, and not in light what such goods are
show or are asserted to actually be. Octocom Systems, Inc.
v. Houston Computer Services Inc., 918 USPQ F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). In the absence of any
limitations in applicant’s application and the cited
registration, we must presume that applicant’s and
registrant’s good move in all channels of trade normal for
such goods to all the usual purchasers. Thus, for purposes
of our analysis, we must assume that registrant’s computer
software would be purchased by all the usual purchasers of
computer software, including ordinary consumers.
Nonetheless, in this case, we are not persuaded that
the respective goods are sufficiently related that
confusion is likely. There is no evidence of record which
suggests that nutritional supplements, on the one hand, and
computer software for use in maintaining a database for
nutritional and natural medicine, on the other hand, are
the kinds of goods that generally emanate from a single
source under the same mark. Also, the Examining Attorney’s
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evidence is not probative of whether companies that offer
nutritional supplements would normally expand their
businesses to include computer software for use in
maintaining a database of nutritional and natural medicine.
The evidence made of record by the Examining Attorney shows
only that a third-party company offers nutritional
supplements and provides information about such supplements
at its website. Apart from the fact that the evidence
relates to only a single company, there is nothing at the
web site which indicates that this company offers computer
software for use in maintaining a database of nutritional
and natural medicine.
Further, there are specific differences between
applicant’s nutritional supplements and registrant’s
computer software for use in maintaining a database for
nutritional and natural medicine. In particular,
nutritional supplements are products that are generally
taken to improve overall health, whereas computer software
for use in maintaining a database for nutritional and
natural medicine is in the nature of written or printed
data, such as a program, with information about nutritional
and natural medicine.
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In sum, notwithstanding the substantial similarity of
the marks, we find that there is no likelihood of confusion
because of the differences in the respective goods.
Decision: The refusal to register under Section 2(d)
is reversed.