Allmax Nutrition Inc.v.Stronghold Inc. and Vitastik LLC

Trademark Trial and Appeal Board

May 16, 2018

No. 91229071 (T.T.A.B. May. 16, 2018)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 16, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Allmax Nutrition Inc.
v.
Stronghold Inc.
and
Vitastik LLC
_____
Opposition No. 91229071
_____

Sean L. Sweeney of Tredecim LLC for Allmax Nutrition Inc.

Francis John Ciaramella of Rick Ruz, PLLC for Stronghold Inc. and Vitastik LLC.
_____

Before Mermelstein, Masiello, and Larkin, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Stronghold Inc. and Vitastik LLC (together, “Applicants”) jointly own an
application1 for registration of the mark VITASTIK in standard characters for
“Tobacco-free cigarettes for medical purposes,” in International Class 5.
Allmax Nutrition Inc. (“Opposer”) has opposed registration of the mark on the
ground that it so resembles Opposer’s earlier used and registered mark VITASTACK

1 Application Serial No. 86474282 was filed in the name of VitaCig, Inc. on December 8, 2014
under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), based on an allegation of first use of
the mark and first use in commerce on December 1, 2014. The application was assigned to
Serial No. 91229071

2

in standard characters as to be likely to cause confusion, mistake or deception under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer has pleaded
ownership of U.S. Reg. No. 3966879 for the mark VITASTACK for “dietary
supplements,” in International Class 5.2 Opposer also alleged that Applicants have
made improper use of a registration notice with the opposed mark, but this claim was
not pursued at trial and Opposer did not discuss it in its briefs; accordingly, that
claim is waived. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(“TBMP”) Section 801.01 (June 2017). Applicants, in their answer, denied the salient
allegations of the notice of opposition. The case is fully briefed.
A. The record.
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the application file for the opposed mark. Neither party has filed
any testimony, and only Opposer filed evidence, which is as follows:
Opposer’s first notice of reliance on its pleaded registration (7
TTABVUE).

Opposer’s second notice of reliance on Applicants’ responses to certain
interrogatories propounded by Opposer and documents provided by
Applicants as part of their answers under Fed. R. Civ. P. 33 (8
TTABVUE).3

the present joint Applicants on February 7, 2015, recorded with the USPTO Assignments
Branch at Reel 5601, Frame 0084.
2 Issued May 24, 2011; Section 8 affidavit accepted; Section 15 affidavit acknowledged.
3 Such documents may be made of record by notice of reliance under Trademark Rule
2.120(k), 37 C.F.R. § 2.120(k). See TBMP Section 704.10 (“An interrogatory answer (including
documents provided as all or part of an interrogatory answer under Fed. R. Civ. P. 33) . . .
that may be offered in evidence under 37 CFR § 2.120(k) may be made of record by notice of
reliance . . . .”).
Serial No. 91229071

3

Opposer’s third notice of reliance upon evidence accessed on the internet
(9 TTABVUE).

B. Applicants’ objection to Opposer’s evidence.
Applicants object, in general, that the documentary evidence adduced by Opposer
“cannot be used to prove the truth of the matter contained therein, when submitted
by Notices of Reliance without further testimony.”4 Applicants request that the
documents be stricken.5
Opposer’s pleaded registration is properly of record, Trademark Rule 2.122(d)(2),
and we accord it the full evidentiary significance that the Trademark Act requires.
See, e.g., 15 U.S.C. § 1057(b).
The documents submitted under Opposer’s second notice of reliance were
provided by Applicants in response to Opposer’s interrogatories. Instead of providing
a written answer to an interrogatory, a responding party may answer the
interrogatory in whole or in part by providing business records from which the answer
can be determined. Fed. R. Civ. P. 33(d). Although documents produced in response
to a Fed. R. Civ. P. 34 request for production of documents cannot be made of record
by notice of reliance alone (unless they are otherwise proper under Trademark Rule
2.122(e)), Trademark Rule 2.120(k)(3)(ii), the documents submitted under Opposer’s
second notice of reliance were not responses to Rule 34 document requests; they were
responses to Rule 33 interrogatories. And as responses to interrogatories, they may
be submitted at trial by the inquiring party under a notice of reliance, Trademark

4 Applicants’ brief at 5, 11 TTABVUE 6. See also id. at 8-10, 11 TTABVUE 9-11.
5 Id. at 10, 11 TTABVUE 11.
Serial No. 91229071

4

Rule 2.120(k)(3)(i), Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1103-
04 (TTAB 2007), and may be used for any purpose for which a written answer to the
interrogatory would have been allowed, including reliance on the documents for the
truth of any matter asserted in them. Testimony confirming the authenticity of these
documents as Applicants’ business records is unnecessary because by availing
themselves of the option to produce business records in lieu of written responses to
Opposer’s interrogatories under Fed. R. Civ. R. 33(d), Applicants are estopped from
denying that the documents they produced are, in fact, authentic business records.
The documents submitted with Opposer’s third notice of reliance, documents
accessed on the internet, are admissible as printed publications under a notice of
reliance. Trademark Rule 2.122(e)(2), (g). It is true that, although they are properly
of record, no one has vouched for the accuracy of any statements that they contain.
However, that fact does not require that we strike them because, for the most part,
Opposer does not offer them for the truth of the matters asserted therein, but rather
as illustrations of how marks have been displayed, how goods have been offered, and
other matters that are apparent on the face of the documents without regard to
whether statements contained in the documents are true or false. The Board is
capable of evaluating the probative value of the documents without giving them
undue evidentiary significance. Accordingly, Applicants’ request to strike the
documents is denied.
Serial No. 91229071

5

C. Standing.
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014). The plaintiff must show that it has a real
interest in the proceeding beyond that of a mere intermeddler and that it has a
reasonable basis for its belief of damage resulting from registration of the subject
mark. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
Opposer has pleaded and proven that it owns Reg. No. 3966879 for the mark
VITASTACK for “dietary supplements,” which is valid and subsisting. 7 TTABVUE.
Opposer has also shown that Applicants have advertised their goods as being of
interest to users of supplements.6 Thus, Opposer has shown that it has a real interest
in this proceeding and a reasonable basis for its belief that it will be damaged by
registration of Applicants’ mark, and has established its standing to oppose
registration of Applicants’ mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); and Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
D. Opposer’s claim under Section 2(d).
Opposer has brought its claim under Trademark Act § 2(d), on the ground that
Applicants’ mark “so resembles a mark registered in the Patent and Trademark
Office, . . . as to be likely, when used on or in connection with the goods of [Applicants],
to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d). In view of

6 9 TTABVUE 6.
Serial No. 91229071

6

Opposer’s ownership of a valid and subsisting registration of its pleaded mark,
priority is not at issue. King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400,
182 USPQ 108, 110 (CCPA 1974). Our determination of likelihood of confusion is
based on an analysis of all of the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co. 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In our analysis, below, we have considered
all factors with respect to which there is evidence of record.
(1) The goods.
We first consider the similarity or dissimilarity of the goods at issue, as identified
in Applicants’ application and Opposer’s pleaded registration. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed.
Cir. 2014); Octocom Sys. Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). We interpret the identifications of goods in the
application and registration to cover all goods of the type identified. See Octocom, 16
USPQ2d at 1788; Stone Lion, 110 USPQ2d at 1162-63. “When analyzing the
similarity of goods, it is not necessary that the goods of the parties be similar or even
competitive to support a finding of likelihood of confusion. Instead, likelihood of
confusion can be found if the respective goods are related in some manner and/or if
the circumstances surrounding their marketing are such that they could give rise to
the mistaken belief that they emanate from the same source.” Coach Servs. Inc. v.
Serial No. 91229071

7

Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(internal quotation marks and citations omitted).
Opposer’s goods are dietary supplements. Applicants’ goods are “Tobacco-free
cigarettes for medical purposes.” Opposer, in order to demonstrate that its goods are
commercially related to Applicants’ goods, points to Applicants’ advertisements and
packaging, which reveal that Applicants’ goods are vaporizers in the nature of
electronic cigarettes, marketed as a delivery device for vitamins. The packaging of
the goods describes the product as “THE VITAMIN VAPORIZER.” 8 TTABVUE 40-
41. A shelf display for the goods states, “With Vitamins A, B, C, E, CoQ10.” 8
TTABVUE 41. An advertisement states:
Just Vitamins + Therapeutic Essential Oils + Organic
Flavor Waters
with
up to 500 inhalations of Vitamin A, B-Complex, C, D, E,
CoQ10 & Collagen. Each vitamin stick formula is further
enhanced with Organic Therapeutic Essential Oils,
Extracts and Herbs
8 TTABVUE 42. Another advertisement touts the goods as follows:
Pick any of our Vitamin Stick Three Flavor Packs and save
more than 18%. Our Healing Organic Waters 3 Pack is an
affordable way to try our Organic Vitamin Essential Oil
Diffuser Stick
All formulas are Enhanced with Vitamins + Therapeutic
Essential Oils + Organic Flavor Waters
. . .
All Vita Sticks are packed with roughly 1 RDI
(recommended daily intake) of Vitamin A, B complex, C, D,
Serial No. 91229071

8

E, CoQ10 & Collagen. . . . Up to 500 Vitamin and
Aromatherapy sessions per stick
. . .
We further enhance each Stik with 2000% B12, which
studies show to be the most stable vitamin when diffused.
8 TTABVUE 53-54. Opposer has made of record online advertisements for Applicants’
goods (all appearing on the website), which tout the goods as follows:
Looking at social media, it’s easy to see people around the
world absolutely love Aromatherapy, Supplements,
Vaporizing, Diffusing, Holistic Wellness Herbs, and
Essential [ ]7 . . . “I am a firm believer that humans should
attempt to get all their needed vitamins minerals and
nutrients from a well rounded diet, exercise and
…lifestyle.8
9 TTABVUE 9.
But for those people with an active lifestyle, this is not
always easy, and this is where VitaStik can help fill the gap
as the w[ ] only inhalable Vitamin and Essential Oil Stick.
9 TTABVUE 13.
VitaStik created the world’s first inhalable Vitamins and
Essential Oil Sticks. . . . A must try for those who love
Essential Oils, Diffusing, Aromatherapy, Supplementing,
Herbs, Extracts and Vitamins.
9 TTABVUE 16.
Santos formed the company with one soul premise in
mind : a healthy & easy alternative to the diffusing,
vaporizing, aromatherapy, and supplement markets.
9 TTABVUE 20.

7 There are lacunae in the text at the edge of the page.
8 Ellipsis and bolding in original.
Serial No. 91229071

9

B12 is proven to work faster and stronger when inhaled
when compared to an intramuscular injection. . . . Vitamin
B12 benefits your mood, energy level, memory, heart, skin,
hair, digestion and more.
9 TTABVUE 27.
Applicants argue that, because the documents cited above “cannot be introduced
to support the truth of the matter contained in the documents,” Opposer has no
support for its arguments to the effect that “Applicants’ actual use of the VITASTIK
mark is in connection with a product identified as ‘The Vitamin Vaporizer’”; or to the
effect that “VITASTIK-branded products all [deliver] dietary supplementation.”9 As
already explained, Applicants’ objection is without merit. Applicants produced these
documents, in response to interrogatories, as “documents . . . relating to Applicants
[sic] use of the VITASTIK mark” and “documents . . . showing representative
ingredients contained within their VITASTIK Products.”10 Having been produced in
response to Opposer’s interrogatories, the documents are admissible and may be used
to the same extent as a written interrogatory response. In any event, the primary
purpose of making the advertisements of record is to demonstrate how Applicants’
goods are advertised, a purpose for which Applicants have admitted that the
documents are probative.11 The advertisements quoted above demonstrate on their
face that Applicants have advertised their goods as “The Vitamin Vaporizer” and as

9 Applicants’ brief at 9, 11 TTABVUE 10, citing Opposer’s brief at 4.
10 Applicants’ response to Opposer’s Interrogatory Nos. 4 and 10, 8 TTABVUE 25, 27.
11 Applicants’ brief at 9, 11 TTABVUE 10 (“[The] advertisements and product pages . . . are
probative only of the fact that the respective parties advertised goods under the respective
marks in the associated publications on those dates.”).
Serial No. 91229071

10

a device for administering vitamins through inhalation. It does not matter whether
“The Vitamin Vaporizer” is actually available or whether it actually works to deliver
vitamins. The fact that Applicants advertise, in this way, the goods with respect to
which they seek registration demonstrates a commercial relationship (promoted by
Applicants themselves) between Applicants’ goods and vitamins. By Applicants’ own
admission, their goods are delivery devices for the goods identified in Opposer’s
registration.12 The fact that Applicants’ own website discusses the goods in the
context of customers’ need to “get all their needed vitamins minerals and nutrients”
demonstrates the relevance of dietary supplements to Applicants’ goods. The record
also includes some evidence showing that Applicants’ message is hitting its mark: a
customer comment on Applicants’ website states, “I believe if your [sic] mature
enough you would know how to manage using this but still consume your daily
vitamins by eating and drinking them not just by vaping them.” 9 TTABVUE 33.
The evidence of record persuades us that the goods of Applicants and Opposer are
related in such a way and are marketed under such circumstances that they could
give rise to the mistaken belief that they emanate from the same source when sold
under the same or a similar mark. Coach Servs., 101 USPQ2d at 1722. We find that
the du Pont factor relating to the similarity or dissimilarity of the goods supports a
finding of a likelihood of confusion.

12 See Applicants’ brief at 11, 11 TTABVUE 12 (“Applicants use the mark VITASTIK as a
tobacco-free cigarette for medical purposes, namely, a device to deliver VITAmins.”).
Serial No. 91229071

11

(2) Channels of trade.
Applicants stated, in response to an interrogatory, that they would sell their
goods “primarily via the Internet,” while maintaining that “This response is not
intended to be a limitation on the channels through which Applicants sell their
goods.” 8 TTABVUE 28. Opposer has sought to demonstrate that the parties’ goods
travel through the same trade channels by showing that its own goods and
Applicants’ goods can both be found on under the category of “Health,
Household, & Baby Care.” 9 TTABVUE 72-80 (showing availability of VITASTIK
“ENERGIZE Vitamin Essential Oil Diffuser” and VITASTACK “7 Functions 9 Pack”).
The mere coexistence of both products among the goods offered by Amazon does not
persuade us that the goods are in the same trade channel. The Amazon product
offerings shown by the record were located by means of different electronic searches.
The fact that Amazon may have classified both goods under the category of “Health,
Household, & Baby Care” tells us little, as there is no evidence to suggest that
customers would search Amazon by browsing within this category of goods and
thereby be exposed to both types of goods.
The record also includes a third-party article, published online at
, titled “Is vaping the next frontier for supplements?” 9 TTABVUE
51-56. The article discusses the phenomenon of vaping and the marketing of goods
used for vaping, and states, in part:
Vaping is everywhere – from e-cigarettes at the
convenience store to the more complex vaporizers sold in
specialty shops. Is the next stop natural products stores?
Serial No. 91229071

12

According to George Michalopoulos, CEO and founder of
VitaminVape, the answer is yes. VitaminVape, a new
product launched in November, is a disposable vitamin B12
vaporizer, sold primarily on the company’s website but also
popping up in yoga studios, gyms and other outlets
nationwide.
9 TTABVUE 53. Although we do not take the content of this article for the truth of
any of the information set forth in it, we note that it discusses various trade channels
for goods like those of Applicants, including “natural products stores.” This type of
discussion does not provide us reliable guidance upon which to make a determination
as to the likely trade channels of the parties’ goods.
Overall, we find that there is too little evidence to allow us to make a
determination as to the existing and likely to continue trade channels. We therefore
treat this du Pont factor as neutral.
(3) The marks.
We next consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “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.” In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1721) (internal quotation marks omitted)).
Serial No. 91229071

13

In appearance, the two marks are similar to the extent that they share the letters
VITAST_K, in the same order. The internal letters -I- in Applicants’ mark and -AC-
in Opposer’s mark are points of difference in appearance. With respect to sound,
customers would likely pronounce the VITA- portion of both marks the same.
Moreover, the suffixes –STACK and –STIK would sound similar, in part, because of
their similar consonants, -ST_CK and -ST_K, respectively. Overall, the sounds of the
two marks would differ only as to the difference between the -I- in Applicants’ mark
and the -A- in Opposer’s mark.
Neither mark has any literal meaning. As Applicants note in their brief, the
VITA- portion of each mark would, in the context of the goods, be suggestive of
“vitamins”:
Opposer uses VITASTACK in connection with dietary
supplements, which by definition, can included [sic]
VITAmins Applicants use the mark VITASTIK as a
tobacco-free cigarette for medical purposes, namely, a
device to deliver VITAmins.
Applicants’ brief at 11, 11 TTABVUE 12 (citation omitted). Applicants’ advertising
also suggests that the VITA- portion of their mark might be suggestive of “life.” 9
TTABVUE 9 (“This is the reason we named our Company VitaStik. ‘Vita’, translates
to ‘Life’ in several languages.”). If that is true, the same suggestion of “life” would be
perceived in Opposer’s mark as well. Any difference in the meaning or connotation of
the marks inheres in the differences in meaning between -STIK and -STACK.
Applicants argue that the connotations of the marks differ as follows:
Applicants’ mark . . . suggests that their product is
cylindrically shaped (i.e., like a stick or twig) and is
beneficial to the user’s health (i.e. life). . . . In contrast, the
Serial No. 91229071

14

Opposer’s mark . . . implies that their product is designed
to be piled or heaped for the benefit of the user.
Applicants’ brief at 11, 11 TTABVUE 12.
Finally, we note Applicants’ contention that “the dominant portions of the
respective marks are STACK and STIK, and not VITA.”13 With respect to Applicants’
mark VITASTIK we disagree, because Applicants repeatedly refer to their goods by
the words “stick,” “vitamin stick,” and “diffuser stick,” indicating that the -STIK
portion of the mark is suggestive or descriptive, and therefore weak. With respect to
Opposer’s mark, while we have no basis for finding -STACK to be weak, we also have
no reason to view it as more significant than the initial term VITA-. See Palm Bay
Imps., 73 USPQ2d at 1692 (“The presence of this strong distinctive term as the first
word in both parties’ marks renders the marks similar, especially in light of the
largely laudatory (and hence non-source identifying) significance of ROYALE.”);
Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”). In both marks, we find the initial VITA- portion to be
at least as important as the remainder of the mark in creating the marks’ commercial
impression.
Although the marks are not identical, they are substantially similar in appearance
and sound, and, as Applicants argue, both carry the strong suggestions of life,
vitamins, and the impression that the products are beneficial to the user. We find

13 Applicants’ brief at 11, 11 TTABVUE 12.
Serial No. 91229071

15

that the differences between the marks in appearance, sound, and meaning are
outweighed by the similarities, and that in overall commercial impression the marks
are similar. Accordingly, the du Pont factor of the similarity or dissimilarity of the
marks weighs in favor of a finding of a likelihood of confusion.
(4) Absence of actual confusion.
Applicants point out that Opposer has submitted no evidence indicating that there
has been actual confusion relating to the marks at issue, and that this is a factor that
weighs in favor of Applicants. We disagree. Section 2(d) provides for refusing
registration on the basis of likelihood of confusion and, by its terms, does not require
a showing of actual confusion. See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710
F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983) (“[I]t is unnecessary to show actual
confusion in establishing likelihood of confusion.”).
Moreover, absence of confusion does not necessarily weigh against a finding of
likely confusion. The absence of actual confusion is meaningful only where the parties
have been sufficiently active over a significant period of time and in the same markets
so that, if confusion were likely to happen, it would be expected to have occurred.
Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1483 (TTAB 2014). In this case, there is
no evidence regarding the extent to which the marks of Applicants and Opposer have
been used, how long they have been used concurrently, whether they have ever been
used in the same geographic markets, or any other factors that would indicate
whether there have been meaningful opportunities for actual confusion to occur. See
Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Gillette Can. Inc. v. Ranir
Serial No. 91229071

16

Corp., 23 USPQ2d 1768, 1774 (TTAB 1992); Barbara’s Bakery Inc. v. Landesman, 82
USPQ2d 1283, 1287 (TTAB 2007) (“In the absence of a significant opportunity for
actual confusion to have occurred, the absence of actual confusion is of little probative
value in this case.”). On the present record, we cannot conclude from the lack of
documented instances of actual confusion that confusion is not likely to occur. We
treat the du Pont factor of actual confusion as neutral.
E. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Applicants’ mark
is substantially similar to Opposer’s mark. Although the goods are different in nature,
they have been advertised in a manner indicating that they have similar purposes,
namely, to provide the user with vitamins. We treat the evidence relating to trade
channels and absence of confusion as neutral. Overall, we find the marks to be
sufficiently similar, and the goods to be sufficiently related, that confusion as to
source is likely.
Decision: The opposition is sustained on Opposer’s claim under Section 2(d).