Cargill, Inc.

Trademark Trial and Appeal Board

Dec 22, 2000

No. 75456123 (T.T.A.B. Dec. 22, 2000)

12/22/00
Hearing: Paper No. 17
September 19, 2000 EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cargill, Incorporated
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Serial No. 75/456,123
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Joseph T. Nabor, Edward W. Gray, Jr. and Christopher E.
George of Fitch, Even, Tabin & Flannery for Cargill,
Incorporated.
Teresa A. Lee, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney)
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Before Cissel, Seeherman and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Cargill, Incorporated has appealed from the final
refusal of the Trademark Examining Attorney to register
CARMELYX as a trademark for “livestock feed supplement.”1
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
1 Application Serial No. 75/456,123, filed March 24, 1998, and
asserting first use and first use in commerce as of November 31,
[sic] 1994. Because there are only 30 days in November, the
Office has construed this date to be November 30, 1994.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/456,123
2
applicant’s mark so resembles the mark CARMILAX, registered
for “rumen stimulant-mild laxative-carminative-antacid,
used in veterinary medicine,”2 that, as used on applicant’s
identified goods, it is likely to cause confusion or
mistake or to deceive.
The appeal has been fully briefed, and an oral hearing
was held.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
Turning first to the goods, we begin our analysis with
the well-established principle that it is not necessary
that the goods of the parties be similar or competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
2 Registration No. 755,839, issued January 23, 1963; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
Ser. No. 75/456,123
3
sufficient that the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
There are obviously specific differences in the goods.
Applicant has explained that its livestock feed supplements
are supplement blocks which are typically used on livestock
farms for foraging livestock in order to provide them with
essential nutrients which they would not obtain from the
forage. The cited registration is for goods identified as
a rumen stimulant-mild laxative-carminative-antacid used in
veterinary medicine; in other words, a product used to help
animals’ digestion. Although one product would not be used
as a substitute for the other, as noted above, it is not
necessary that the goods be identical or even similar or
competitive.
In this case, the similarities between the products go
beyond the general characteristic that they are both used
for animals. They are also both involved with eating and
digestion, with applicant’s product providing a supplement
Ser. No. 75/456,123
4
to the animals’ feed and the registrant’s product helping
the animal in digesting that feed. In this connection, we
note that applicant’s product provides “crude fiber,” which
is well known to be a digestive aid.
The Examining Attorney has also made of record
numerous third-party registrations which indicate that
other entities have registered their marks for both feed
supplements and veterinary medical products, including
digestive aids.3 Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).4
3 See, for example, Regs. Nos. 2,256,561 and 2,256,560, both
for, inter alia, veterinary preparations for the treatment of
alimentary conditions in livestock, and animal feed additives for
use as nutritional supplements; Reg. No. 1,981,183 for
“veterinary vaccines and topical liniments, and feed supplement
for horses”; Reg. No. 1,277,814 for, inter alia, veterinary
antibiotics, vitamins, minerals, electrolytes and feed
supplements; and Reg. No. 501,389 for, inter alia, diuretics,
feed supplements, hormones, tonics and vitamins, all for
veterinary purposes. Applicant has argued that none of the
third-party registrations are for laxatives, but we point out
that the cited mark is not merely for a laxative, but for a
product that has other digestive aid qualities.
4 It is noted that the Examining Attorney has also made of
record third-party registrations based on Section 44 of the Act.
Because these registrations are not based on use in commerce, we
have not considered them.
Ser. No. 75/456,123
5
Applicant has argued that the goods would be sold
through different channels of trade to different classes of
consumers. Applicant points to specimen labels which it
states were submitted by registrant with the filing of its
“Section 8 and 15 renewal affidavit,” response filed
Sept. 22, 1999,5 and which contain the warning “For
Professional Use by Veterinarians” to support its assertion
that the registrant’s goods will be sold only to
veterinarians, while applicant’s goods will be sold to
livestock owners.
The difficulty with applicant’s argument is that we
must determine the issue of likelihood of confusion based
on the goods as they are identified in the application and
the cited registration, without restrictions or limitations
which are not reflected therein. In re William Hodges &
Co., Inc., 190 USPQ 47 (TTAB 1976); see also, Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). As identified,
the registrant’s goods are not limited to sale to or
administration by veterinarians; although the
identification indicates that the goods are used in
5 It is not clear from applicant’s comments whether the
specimens formed part of the registrant’s Section 8 affidavit or
its application for renewal. However, this information is not
critical to our decision.
Ser. No. 75/456,123
6
veterinary medicine, that merely shows that the product is
meant for animals, rather than humans. It does not limit
the use of the product to dispensing by veterinarians.
Accordingly, there is nothing in the identification that
would prohibit the registrant’s goods from being purchased
by livestock owners for administration to their animals.
Moreover, even if the registrant’s goods were to be
dispensed by veterinarians, those veterinarians may supply
the product to the livestock owners to administer to their
animals, and those same owners would also come into contact
with applicant’s feed supplements.
Because both applicant’s and the registrant’s goods
are used for livestock and play a role in the digestive
process; because the goods are of a type that may be sold
by a single company under one mark; and because, as
identified, the goods may be sold in the same channels of
trade to the same classes of purchasers, we find that
applicant’s goods and the goods identified in the cited
registration are sufficiently related such that, if they
were sold under similar marks, confusion is likely to
result.
This brings us to a consideration of the marks. As
the Examining Attorney has pointed out, there are strong
similarities in appearance and pronunciation between the
Ser. No. 75/456,123
7
marks, CARMELYX and CARMILAX. Both are three syllable
words; both begin with the letters “CARM”; both end with
“X”; and both have the identical consonants in the
identical order. Nor does the difference in the second
vowels in each mark have a significant effect on the
appearance and pronunciation of the marks. Because the
second syllable is unstressed, and because of the
similarities of pronunciation of a short “e” and a short
“i,” particularly in certain regions of the country,
consumers are not likely to hear or note a difference in
the marks caused by the differences in these vowels.
On the other hand, we agree with applicant that the
third syllable in the marks, LYX and LAX, would be
recognized because of the meaning of a lick in connection
with animal nutrients, i.e., “a place frequented by animals
that lick the exposed natural salt deposits,”6 and the
suggestive significance of “lax” in connection with a
laxative product.7
6 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
7 Applicant has stated in its brief that “the register contains
many marks in which the suffix LAX is used to indicate that the
product has a laxative effect upon the user.” Brief, p. 6. We
note that applicant has made no such registrations of record.
However, even without this evidence it is apparent to us that
“LAX,” being the first three letters of the word “laxative,” may,
Ser. No. 75/456,123
8
However, consumers are likely to ascribe this
difference in the marks to the differences in the goods on
which they are used, rather than to a difference in the
source of the goods. Both applicant and the Examining
Attorney agree that consumers are not likely to confuse the
products themselves, and use one in place of the other.
The question at issue, however, is whether consumers are
likely to confuse the source of the products. Because the
only difference in the marks that is likely to be noted or
remembered is the last syllable, and because the last
syllable in each mark relates directly to the product on
which it is used, consumers are likely to view this
difference as relating only to the product, and assume that
both products emanate from the same source. In saying
this, we are aware that the “e” and “i” differ in the
marks’ second syllables, but for the reasons stated above,
we think that this difference is unlikely to be noted or
remembered. Under actual marketing conditions consumers do
not have the luxury to make side-by-side comparisons
between marks, and instead they must rely on hazy past
recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980).
if used in a mark for a laxative product, have a suggestive
significance for such product.
Ser. No. 75/456,123
9
Accordingly, although we accept applicant’s contention
that applicant’s and the registrant’s products are not
impulse purchases but will be bought with care, by
sophisticated purchasers, for the reasons stated above we
find that such purchasers are likely to be confused as to
the source of such products by the use of the similar marks
CARMELYX and CARMILAX. In reaching this conclusion we also
note that there is no evidence of any third-party use or
third-party registrations for other “CARM” marks which
would limit the strength of the registrant’s mark, a mark
which, we note, has been registered for 37 years.
Decision: The refusal of registration is affirmed.