Allmax Nutrition Inc.v.Proccor Pharmaceuticals IncDownload PDFTrademark Trial and Appeal BoardMay 5, 202091241303 (T.T.A.B. May. 5, 2020) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: May 5, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Allmax Nutrition Inc. v. Proccor Pharmaceuticals Inc. _____ Opposition No. 91241303 _____ Sean L. Sweeney and Taylor A. Noonan of Tredecim LLC for Allmax Nutrition Inc. Joseph Piper of Granite Trademark Services for Proccor Pharmaceuticals Inc. _____ Before Heasley, Lynch, and English, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Proccor Pharmaceuticals Inc. (“Applicant”) seeks registration on the Principal Register of ISOFLOW in standard characters1 for “Dietary supplements; Dietary and 1 Application Serial No. 87707814 was filed on December 4, 2017 based on alleged use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Opposition No. 91241303 - 2 - nutritional supplements; Dietary and nutritional supplements used for weight loss; Protein dietary supplements” in International Class 5. By its Notice of Opposition, Allmax Nutrition Inc. (“Opposer”) opposes registration of the mark based on alleged priority and likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), with Opposer’s registered mark ISOFLEX in standard characters for “Protein powdered drink mix, protein bars, and protein drinks used as meal replacements.”2 In its Amended Answer, Applicant denies most of Opposer’s allegations underlying the claim, but makes certain admissions, including that “[t]he goods recited in Opposer’s ISOFLEX registration overlap with, and are similar and highly related to, the goods recited in the ISOFLOW Application.”3 Opposer submitted evidence and a brief. Applicant did not, but the submission of evidence and briefing is optional for the party in the position of defendant. See Trademark Rules 2.128(a)(1) & 2.132(b), 37 C.F.R. §§ 2.128(a)(1) & 2.132(b). I. Evidentiary Record The record includes the pleadings and pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the opposed application. Opposer also submitted with its Notice of Opposition a current copy of information from the USPTO TSDR records showing the current status and title of its pleaded registration, thereby entering it into the record. See 37 C.F.R. § 2.122(d)(1). Opposer introduced both confidential and 2 Registration No. 3722812 issued April 13, 2007 and has been renewed. 3 1 TTABVUE 5 ¶ 13 (Notice of Opposition); 6 TTABVUE 4 ¶ 13 (Amended Answer). Opposition No. 91241303 - 3 - public redacted versions of the declaration of its President, Michael Kichuk, with exhibits.4 In addition, Opposer submitted USPTO records under a Notice of Reliance.5 II. Standing Opposer must prove standing by showing a real interest in the outcome of the proceeding and a reasonable basis for believing that it would suffer damage if the mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s pleaded registration, for which it has proven status and title, establishes its standing. See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Opposer has established the requisite stake in the outcome of this proceeding because its registration forms the basis of a plausible Section 2(d) claim. See Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). III. Priority Because Opposer has made its registration of record, and Applicant has not counterclaimed to cancel it, priority is not an issue as to the mark and goods covered by the registration. See Top Tobacco LP v. N. Atl. Op. Co., 101 USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy, Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 82 USPQ 108 (CCPA 1974)); see also Massey Junior Coll., Inc. v. Fashion Inst. of 4 10 & 11 TTABVUE. 5 9 TTABVUE. Opposition No. 91241303 - 4 - Tech., 492 F.2d 1399, 181 USPQ 272, 275 n.6 (CCPA 1974) (“prior use need not be shown by an opposer relying on a registered mark unless the applicant counterclaims for cancellation.”); Itel Corp. v. Ainslie, 8 USPQ2d 1168, 1169 (TTAB 1988) (“because of the existence of opposer’s valid and subsisting registration, it need not prove prior use as to the services recited therein”). IV. Likelihood of Confusion A determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of confusion analysis often focuses on 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.”). Opposer bears the burden of proving its claim of likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. A. The Goods, Trade Channels and Classes of Consumers Our comparison of the goods must be based on the identifications in the application and registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Opposition No. 91241303 - 5 - Houston Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). A finding of likely confusion must be made with respect to at least one item in the application to establish likely confusion. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Opposer contends that Applicant’s “dietary supplements” and “protein dietary supplements” encompass Opposer’s “protein powdered drink mix, protein bars, and protein drinks used as meal replacement,” which are types of protein dietary supplements. As noted above, Applicant admitted in its Amended Answer that its identified goods overlap with and are similar and highly related to Opposer’s identified goods.6 Given the parties’ agreement, and corroborating evidence in the record, we find that the goods overlap and therefore are legally identical in part. We take judicial notice of the Food and Drug Administration’s webpage titled “FDA 101: Dietary Supplements,”7 which states in pertinent part: The law defines dietary supplements in part as products taken by mouth that contain a “dietary ingredient.” Dietary ingredients include vitamins, minerals, amino acids, and herbs or botanicals, as well as other substances that can be used to supplement the diet. Dietary supplements come in many forms, including tablets, capsules, powders, energy bars, and liquids…. People use dietary supplements for a wide assortment of reasons. Some seek to compensate for diets, medical 6 6 TTABVUE 4; 1 TTABVUE 5. 7 https://www.fda.gov/consumers/consumer-updates/fda-101-dietary-supplements, accessed April 30, 2020. Opposition No. 91241303 - 6 - conditions, or eating habits that limit the intake of essential vitamins and nutrients. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of U.S. government online publications). This definition supports the finding that because protein powdered drink mix, protein bars, and protein drinks are taken by mouth and contain protein, they constitute dietary supplements. The record also includes numerous photographs of Opposer’s ISOFLEX goods, with labels on the containers that include the wording “protein supplement.”8 In addition, a review of Applicant’s ISOFLOW by the Stack3D website refers to it both as a “protein powder” and a “supplement.”9 Applicant’s broad identification of “protein dietary supplements” and “dietary supplements” includes all forms of such supplements and therefore encompasses Opposer’s identified goods. 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.’”). Because the goods in the pleaded registration are legally identical in part to Applicant’s, we presume that they travel through the same channels of trade to the same classes of purchasers, considerations under the third DuPont factor. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion); Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Gem Corp., 111 8 E.g., 11 TTABVUE 28-30, 53, 65. 9 11 TTABVUE 21-22. Opposition No. 91241303 - 7 - USPQ2d 1419, 1437 (TTAB 2014) (“Because the parties’ goods are in part identical, as identified in the application and relevant registrations, we must presume that the channels of trade and classes of customers are the same.”). These factors weigh strongly in favor of likely confusion. B. The Strength of Opposer’s Mark Before we turn to the similarity of the marks, we consider the strength of Opposer’s mark, as that will affect the scope of protection to which it is entitled. We address both the fifth and sixth DuPont factors. Opposer argues that its mark should be deemed famous under the fifth factor, and that the absence of third-party uses or registrations of similar marks with similar goods weighs in its favor under the sixth factor. The commercial strength of a mark under the fifth DuPont factor rests on the extent to which “a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). This factor involves assessing the mark “‘along a spectrum from very strong to very weak.’” Id. (internal citations omitted). A very strong mark receives a wider latitude of legal protection in the likelihood of confusion analysis. See Palm Bay Imps., 73 USPQ2d at 1694 (strong marks “enjoy wide latitude of legal protection” and are “more attractive as targets for would-be copyists”). Opposition No. 91241303 - 8 - Commercial strength may be measured indirectly by the volume of sales and advertising expenditures in connection with the goods sold under the mark, and other factors such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the goods identified by the marks; and the general reputation of the goods. Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate proof of strength); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017). Opposer points to several sources of evidence of commercial strength, some of which evidence is confidential, so we discuss it only in general terms. Opposer has used its mark in the U.S. for approximately 15 years.10 Opposer’s confidential evidence shows substantial annual revenue figures for goods sold under the mark.11 However, the persuasiveness of the evidence is diminished by the lack of comparative information about the industry, or even Opposer’s market share. See Bose Corp. v. QSC Audio Prods. 63 USPQ2d at 1309 (“some context in which to place raw [sales and advertising] statistics is reasonable”). Opposer also has invested a significant sum in advertising under its mark.12 Although Mr. Kichuk’s declaration includes “exemplar[s]” of the advertising he states ran in Muscle and Fitness, Flex, Muscular Development, and Train Fitness, his testimony included no further specifics as to the size and placement of the ads, when and how many times the ads 10 11 TTABVUE 3. 11 11 TTABVUE 5; 10 TTABVUE (confidential). 12 11 TTABVUE 5; 10 TTABVUE (confidential). Opposition No. 91241303 - 9 - ran, or the circulations of the publications in which Opposer advertised.13 See Edward Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1408 (TTAB 2010) (“Finally, because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to clearly prove it.”) (citing Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)). Mr. Kichuk testified that Opposer promotes its goods on its website, through “store flyers, trade shows, samples, promotional items, and retail demonstrations,” but again no additional details or examples were provided, except for screenshots of Opposer’s website.14 Opposer also submitted examples of its social media posts relating to ISOFLEX, but they reflect a modest number of “views,” “comments,” etc., and also suggest that the target audience includes non-U.S. consumers in Canada.15 Under the sixth DuPont factor, proof of recent consumer exposure to third-party use of similar marks in connection with similar services may show commercial weakness of a mark. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Opposer emphasizes that Applicant introduced no third-party use and registration evidence, and points to its own search results from the USPTO’s online records showing only one other mark beginning with the letter 13 11 TTABVUE 4, 67-71. 14 11 TTABVUE 4, 40-64. 15 11 TTABVUE 74, Opposer’s post states, “Happy Birthday Canada! How are you celebrating today?” Opposition No. 91241303 - 10 - string “ISOF-” for similar goods in International Class 5.16 Opposer argues that this mark, ULTRA ISOFLAVONE 100, “is highly dissimilar in appearance from Opposer’s ISOFLEX mark.”17 Opposer also points to testimony that it has opposed “and successfully prevented” the registration of ISO-FX, ISOFIX and ISO-PLEX to preserve the strength of its mark. We note, however, that the testimony consists only of a single conclusory sentence in Mr. Kichuk’s declaration, without any documentary support, or any further detail about the proceedings.18 We agree with Opposer that in the absence of third-party use evidence, and given the evidence regarding the state of the register and Opposer’s enforcement efforts, the record does not suggest any commercial weakness of the ISOFLEX mark. Overall, considering the record on the fifth and sixth DuPont factors, we find Opposer’s ISOFLEX mark to have a modest degree of commercial strength, weighing in favor of likely confusion. We note that regardless, even if these factors were neutral, our ultimate ruling on the likelihood of confusion claim would remain the same. C. Similarity of the Marks We compare the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). Similarity in any one of the elements of sound, appearance, 16 9 TTABVUE 5-17. 17 16 TTABVUE 22. 18 Kichuk decl. ¶ 15, 11 TTABVUE 4. Opposition No. 91241303 - 11 - meaning, or commercial impression suffices to support a determination of likelihood of confusion. See In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (“Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”). The test assesses not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the goods offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We also bear in mind that, given the identical-in-part goods, “the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). We compare Opposer’s ISOFLEX mark to Applicant’s ISOFLOW mark. Both marks consist of seven letters, and the first five letters are identical. See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (first part of mark is “most likely to be impressed upon the mind of a purchaser and remembered.”). This commonality creates both a visual resemblance and a phonetic similarity. The last two letters in each mark differ, changing the appearance and sound from Opposer’s third syllable “-FLEX,” to Applicant’s third syllable “-FLOW.” Opposition No. 91241303 - 12 - However, we find that the identical first five letters, forming the identical first two syllables of each mark, result in the similarities outweighing the differences. Overall, the marks look and sound similar. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion”). Neither ISOFLEX nor ISOFLOW is a recognized word, and the record includes no indication that either has a particular connotation. Opposer contends in its Brief that consumers would view both marks as consisting of three distinct words – I-SO-FLEX and I-SO-FLOW.19 However, we note that promotional materials for Opposer’s and Applicant’s goods show that they both promote their goods as featuring “whey protein isolate”20 or “whey isolate,”21 so we find it more likely that consumers would view the ISO- portion of each mark as carrying the same suggestive connotation of whey isolate. The words “flex” and “flow” have different meanings. Nonetheless, overall, the identical suggestive beginning portion ISO, the shared lettering in the marks and their similarity in structure contribute to a similar commercial impression. Even consumers familiar with ISOFLEX who note the difference in the last two letters likely would assume that Applicant’s ISOFLOW goods are a new variation in Opposer’s product line, under a slightly varied mark. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Even those purchasers who are fully aware of the 19 16 TTABVUE 16. 20 11 TTABVUE 43-44. 21 11 TTABVUE 21. Opposition No. 91241303 - 13 - specific differences between the marks may well believe, because of the similarities between them, that the two marks are simply variants of one another, used by a single producer to identify and distinguish companion lines of products.”). We find the marks sufficiently similar in terms of appearance, sound, and commercial impression that this DuPont factor weighs in favor of a likelihood of confusion. V. Conclusion Applicant’s identified goods are in part identical to Opposer’s goods, and are presumed to travel in the same channels of trade to the same classes of customers. Given this, and the relative commercial strength of Opposer’s mark, we find Applicant’s ISOFLOW mark sufficiently similar to Opposer’s ISOFLEX mark as to be likely to cause confusion under Section 2(d). Decision: The opposition is sustained based on the likelihood of confusion. Copy with citationCopy as parenthetical citation