No. 85155603 (T.T.A.B. Mar. 6, 2012)

DBC, LLC

Trademark Trial and Appeal BoardMar 6, 2012

No. 85155603 (T.T.A.B. Mar. 6, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: March 6, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re DBC, LLC ________ Serial No. 85155603 _______ Michael E. Mangelson, Catherine Parrish Lake, and David J. Pacheco of Stoel Rives LLP for DBC, LLC. Tasneem Hussain, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Bucher, Kuhlke, and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: DBC, LLC (“applicant”) has filed an application for the standard character mark ACTIVE DEFENSE COMPLEX for “antioxidents [sic] used as an ingredient in the manufacture of dietary supplements in the form of a proprietary blend containing resveratrol, tocotrienols and bioflavonoids” in International Class 1; “vitamin and mineral additives for use as an integral part of dietary supplements; dietary supplements” in International Class 5; Serial No. 85155603 2 and “non-alcoholic fruit extracts, namely, proprietary blend containing resveratrol, tocotrienols and bioflavonoids for use as ingredients of nutritional supplements and vitamins” in International Class 29.1 The examining attorney has refused registration of applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. §1052, having determined that registration would lead to a likelihood of confusion in view of registration No. 3657557 for the mark ECHINAMIDE ACTIVE DEFENSE for “dietary supplements.”2 We affirm. I. The Record The examining attorney has provided the following evidence in support of his position that there is a likelihood of confusion: 1. Printouts from the USPTO X-Search database of third- party registrations purporting to show that dietary supplements and ingredients for such supplements are related products and to show that the term “complex” is descriptive for the goods. 2. An online dictionary definition for “complex.” 1 Filed October 19, 2010 on the basis of applicant’s bona fide intent to use the mark in commerce. Applicant has disclaimed the word COMPLEX apart from the mark as shown. 2 Registered July 21, 2009. Serial No. 85155603 3 3. Pages from the website www.myhealthmybody.com discussing the purported benefits of Echinacea supplements sold under the mark ECHINAMIDE (owned by registrant). A photo of a 5 oz. bottle of registrant’s ECHINAMIDE ACTIVE DEFENSE syrup is shown on the website. 4. A copy of a screenshot from the USPTO X-Search database that purports to show only three live registrations exist on the register for marks containing the phrase ACTIVE DEFENSE in International Class 5. 5. Excerpt from Wikipedia for the entry “Antioxidant.” 6. Entry from the United States National Library of Medicine at http://dietarysupplements.nlm.nih.gov that purports to show that a product called “Agrolabs Liquid First Choice Total Nutrition,” which appears to be a dietary supplement, includes fruit juice extracts as ingredients. Applicant’s evidence consists of a printout from TARR of Reg. No. 2813236, owned by Factors R&D Technologies Ltd. (registrant herein), for the mark ECHINAMIDE for “vitamin supplements, mineral supplements, vitamin and mineral supplements and nutritional supplements, namely vegetable concentrates herbal concentrates, fish concentrates, meat Serial No. 85155603 4 concentrates, enzymes and bee pollen.”3 Applicant contends the registration shows that the term is a dominant feature of the cited mark. Applicant also submitted copies of third-party registrations downloaded from the USPTO’s TARR database purporting to show that the terms “active” and “defense” are weak in connection with dietary supplements. The examining attorney has objected to the introduction of this evidence as being untimely. Trademark Rule 2.142(d) provides: (d) The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. After an appeal is filed, if the appellant or the examiner desires to introduce additional evidence, the appellant or the examiner may request the Board to suspend the appeal and to remand the application for further examination. Applicant did not request suspension of the appeal, and filed the third-party registrations for the first time with its appeal brief. Accordingly, the examining attorney’s objection to the late-filed evidence is sustained and we have not considered the evidence. Trademark Rule 2.142(d); see also, e.g., In re Giovanni 3 Registered February 10, 2004. Serial No. 85155603 5 Food Co., Inc., 97 USPQ2d 1990 (TTAB 2011); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 n.3 (TTAB 2008). We now turn to the merits of the refusal under Trademark Act § 2(d). II. Applicable Law Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). Serial No. 85155603 6 III. Discussion A. Similarity of the Goods/Trade Channels/Purchasers It is well settled that likelihood of confusion is determined on the basis of the goods as identified in the application and in the cited registration. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). As noted above, registrant’s goods are “dietary supplements.” Applicant’s goods include “dietary supplements” in International Class 5. Thus, applicant’s and registrant’s goods are identical in part. Further, the record demonstrates a close relationship between the remaining goods in applicant’s application and registrant’s dietary supplements. The examining attorney has submitted an excerpt from Wikipedia for the entry “Antioxidant” that includes the following: “Antioxidants are widely used as ingredients in dietary supplements….”4 The examining attorney has also submitted copies of six registrations based on use to show that entities have registered their marks for both “dietary supplements” and 4 Denial of Applicant’s First Request for Reconsideration, accessed at http://en.wikipedia.org/wiki/Antioxidant on March 28, 2011. The “Board will consider evidence taken from Wikipedia so long as the non-offering party has an opportunity to rebut that evidence… .” In re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB 2007); see also In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009)(Internet evidence submitted with denial of request for reconsideration properly of record; if applicant wanted to challenge the evidence, it should have filed a request for remand); and TBMP § 1208.03. Serial No. 85155603 7 ingredients for same.5 Although these registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nevertheless have probative value to the extent that they serve to suggest that the listed goods, dietary supplements and their ingredients, are of a kind which may emanate from a single source. See, e.g., In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988). Because there are no restrictions as to the channels of trade and no limitation as to the classes of purchasers in either the registration or application, the goods are presumed to be offered in all channels of trade which would be normal therefor, and purchased by all potential buyers 5 E.g., Reg. No. 3599419 for the mark PUNTIAVERA for “dietary fiber as an additive for food products; dietary food supplements; food supplements; nutritional additives for medical purposes for use in foods and dietary supplements for human consumption”; Reg. No. 3317654 for the mark NATTOGOLD for “nutraceuticals for use as a dietary supplement and dietary and nutritional supplements”; and Reg. No. 3914750 for the mark POWERGRAPE for “natural plant extracts for use in preserving cosmetic and perfumery products; plant extracts, namely, vegetable and fruit extracts including seeds, leaves, roots, and grape extracts for use in the manufacture of food products and dietary supplements; nutritional supplements containing vegetable and fruit extracts including seeds, leaves, and roots, namely, grape extracts for beauty and skin care, dietary supplements, dietary supplements adapted for medical use … .” Serial No. 85155603 8 thereof. See Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”) In the case of the identical goods, dietary supplements, we must presume that applicant’s and registrant’s goods are sold in the same channels of trade, which encompass wholesale and retail sales, and are offered to the same classes of purchasers. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). Serial No. 85155603 9 Additionally, as to the ingredients listed in Classes 1 and 29 in applicant’s mark, the examining attorney argues that the ingredients could be used in the manufacture of registrant’s dietary supplements. Applicant, on the other hand, argues that even if its goods are related to registrant’s goods “due to applicant’s use of the goods in connection with dietary supplements,” the fact that the goods are not identical “shifts more weight to the other factors in the analysis.”6 Because applicant’s ingredients would be sold to wholesalers or manufacturers of dietary supplements, we must presume an overlap in such trade channels. Moreover, there is no evidence in the record which suggests that the mark for applicant’s ingredients is not also exposed to consumers at the retail level, in stores which encompass the same stores as those to which registrant sells its dietary supplements. Accordingly, we find that these du Pont factors weigh heavily in favor of finding a likelihood of consumer confusion. B. Similarity of the Marks We now turn to a consideration of the marks, keeping in mind that when marks would appear on identical goods, as they do here, the degree of similarity necessary to support a conclusion of likely confusion declines. Century 21 Real 6 Appeal Brief, p. 15. Serial No. 85155603 10 Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Barbara’s Bakery, Inc. v. Landesman, 82 USPQ2d 1283, 1288 (TTAB 2007). In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, 73 USPQ2d at 1692. Nonetheless, it is not improper to accord more or less weight to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ2d 749, 751 (Fed. Cir. 1985). We are further reminded that when comparing marks, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The purchaser’s fallibility of memory over a period of time must be kept in mind. See Spoons Restaurant Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir. 1992); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, applicant’s mark consists of the words ACTIVE DEFENSE COMPLEX. The word “complex” has been disclaimed in applicant’s application, and the examining Serial No. 85155603 11 attorney has submitted several use-based registrations wherein the word “complex” has been disclaimed for dietary supplements and ingredients for dietary supplements.7 Third-party registrations that include disclaimers of a term can show that a term has been regarded as merely descriptive. See In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). In addition, the examining attorney has submitted an online dictionary definition that defines “complex” as: “a whole made up of complicated or interrelated parts.”8 We find the evidence persuasive to show that “COMPLEX” is merely descriptive when used in connection with dietary supplements and ingredients, additives, or extracts therefor and we therefore accord this term a narrow scope of protection. See In re National Data Corp., 24 USPQ2d at 751 (“That a particular feature is descriptive or generic with respect to the involved goods or services is one commonly accepted rationale for giving less weight to a portion of a mark”); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 7 E.g., Reg. No. 3880572 for the mark APC ACTIVE PERFORMANCE COMPLEX for, inter alia, “nutritional dietary supplements”; Reg. No. 3724019 for the mark BIOACTIVE LUNASIN COMPLEX for “soybean peptide blend used as an ingredient for the manufacture of … dietary supplements”; Reg. No. 3311720 for the mark PRO COMPLEX for dietary supplements; and Reg. No. 3295250 for the mark ROSEMARY T3 COMPLEX for “medicinal herb extracts.” 8 First Office action, www.merriam-webster.com/dictionary/complex. Accessed December 10, 2010. Serial No. 85155603 12 1997) (finding DELTA the dominant part of the mark THE DELTA CAFÉ because CAFÉ was disclaimed as generic); see also TMEP § 1207.01(b)(viii)(8th Ed.). On the other hand, the remaining terms in applicant’s mark, ACTIVE DEFENSE, are suggestive only and would be accorded a greater scope of protection. The record does not contain any evidence to indicate that the compound phrase, or either one of its individual components, is descriptive or weak.9 Even assuming, as applicant contends, that the common words “active” and “defense” have well- known meanings and therefore “consumers are familiar with the terms ‘active’ and ‘defense,’”10 this does not make the compound phrase weak. Further, the examining attorney has shown by a search he conducted of the USPTO X-Search database that only one registration other than registrant’s, and no other applications, include the wording ACTIVE DEFENSE: Reg. No. 3121166 for the mark ADS ACTIVE DEFENSE SYSTEM, which covers cosmetics and not 9 We have already indicated that applicant’s submission of third- party registrations in International Class 5 of marks containing either term has not been considered. We note, however, that none of these registrations includes the phrase ACTIVE DEFENSE. Moreover, neither term has been disclaimed in any of the registrations in which it appears, and in many of the “ACTIVE- derivative” marks, ACTIVE is the only word that is not disclaimed in the mark. Accordingly, even considering these third-party marks would not change the result of our decision herein. 10 Appeal Brief, p. 10. Serial No. 85155603 13 dietary supplements.11 Based on the evidence of record in this case, we conclude that the phrase ACTIVE DEFENSE dominates the mark overall and there is no evidence in the record upon which to conclude that the phrase is weak or diluted in this field. Comparing applicant’s mark with registrant’s mark, ECHINAMIDE ACTIVE DEFENSE, we note that they share this phrase. With regard to registrant’s mark, ECHANAMIDE ACTIVE DEFENSE, the record shows that the additional term ECHANAMIDE is derived from “echinacea,”12 an extract of the purple coneflower, and it appears that some of registrant’s supplements may contain echinacea.13 11 Reg. No. 3121166 for the mark ADS ACTIVE DEFENSE SYSTEM for “cosmetics for the face and the body, cosmetic namely cream, lotions, gels for the hands”; issued July 25, 2006. 12 “Echinacea: the dried rhizome, roots, or other parts of any of three purple coneflowers that are used primarily in dietary supplements and herbal remedies for the stimulating effect they are held to have on the immune system; also : any of these herbs.” Accessed March 2, 2012 at www.merriam-webster.com. The Board may take judicial notice of dictionary definitions. See 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); see also TBMP § 1208.04 (3d ed. 2011)(The Board will take judicial notice of “definitions or entries from references that are the electronic equivalent of a print reference work”). 13 The examining attorney has submitted an article from www.myhealthmybody.com wherein the author recommends ECHINAMIDE, “a patented, super-extracted Echinacea product developed and marketed by [registrant].” Following the article are advertisements depicting the following dietary supplements offered by registrant: Echinamide Active Defense Syrup, Echinamide Anti-V Extract, Echinamide Fresh Alcohol Free Ext[ract], Echinamide Clinical Strength and Echinamide FreshHerb Extract. Serial No. 85155603 14 Applicant argues that as a “coined” term and as the first term in registrant’s mark, ECHINAMIDE dominates registrant’s mark, thereby obviating any possible confusion. We do not agree. The phrase ACTIVE DEFENSE is as dominant in registrant’s mark as is the first term ECHINAMIDE, both being inherently suggestive only, and the commercial impression of the mark is equally formed by the two elements. Indeed, the term ECHINAMIDE may be viewed as modifying the phrase ACTIVE DEFENSE. Consumers are likely to believe that registrant’s goods are a brand extension of a line of ACTIVE DEFENSE goods and that therefore there is a common source of the goods. Applicant has appropriated as the dominant part of its mark an essential element of registrant’s mark. The addition of the term COMPLEX in applicant’s mark, and the term ECHINAMIDE in registrant’s mark, do not significantly change the commercial impression created by the compound phrase ACTIVE DEFENSE. Hence, we find the similarities of the marks in appearance, pronunciation, meaning and commercial impression, when considered in their entireties, outweigh their differences. Accordingly, the du Pont factor of similarity of the marks favors a finding of likely confusion. Serial No. 85155603 15 IV. Conclusion We have carefully considered the entire record, all arguments, and the evidence submitted by applicant and the examining attorney. We conclude, in light of the similarity of the marks at issue, the in-part identical nature and in-part related nature of the goods, and the classes of customers and channels of trade, that use of applicant’s mark in association with the identified goods is likely to cause confusion with the marks in the cited registration. Decision: The refusal to register under Trademark Act § 2(d) is accordingly affirmed.