Doctors Best Weight Loss

Trademark Trial and Appeal Board

Jun 22, 2015

No. 86087159 (T.T.A.B. Jun. 22, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Doctors Best Weight Loss
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Serial No. 86087159
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Matthew H. Swyers of The Trademark Company,
for Doctors Best Weight Loss.
Jill I. Prater, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
_____

Before Quinn, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Doctors Best Weight Loss (“Applicant”) seeks registration on the Principal
Register of the mark NUTRIWISE (in standard characters) for “dietary and
nutritional supplements used for weight loss” in International Class 5.1
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when
used in connection with Applicant’s goods, so resembles the previously registered

1 Application Serial No. 86087159, filed October 9, 2013 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging dates of first use anywhere and first use in
commerce of October 2012.
Application Serial No. 86087159

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mark NUTRAWISE (in standard characters) for “nutritional supplements” in
International Class 52 as to be likely to cause confusion.
When the refusal was made final, Applicant filed a request for reconsideration.
Upon denial of this request, Applicant appealed. Applicant and the Examining
Attorney filed briefs. We affirm.
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion. 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. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the first du Pont factor, we must compare the marks in their
entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. “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.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).

2 Registration No. 4145371, issued May 22, 2012.
Application Serial No. 86087159

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Applicant, in its brief, states that it “must concede the phonetic and visual
equivalence of the instant marks.” (4 TTABVUE 9). Indeed, Applicant’s mark
NUTRIWISE and Registrant’s mark NUTRAWISE are virtually identical in sound
and appearance, and identical in meaning. Given these similarities, the marks
engender virtually identical overall commercial impressions.
The virtual identity between the marks weighs heavily in favor of a finding of
likelihood of confusion.
Applicant goes on to make three feeble arguments in support of reversal of the
refusal, namely the dissimilarity between the goods; the dissimilarity between trade
channels; and the sophistication of purchasers.
As to the second du Pont factor, in making our determination regarding the
relatedness of the goods, we must look to the goods as identified in the application
and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014), quoting Octocom Sys., Inc.
v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Applicant’s
goods are identified as “dietary and nutritional supplements used for weight loss”;
Registrant’s goods are “nutritional supplements.”
Because the goods identified in the cited registration have no limitations or
restrictions, it is presumed that as recited the goods encompass all goods of the type
identified. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901,
177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119
Application Serial No. 86087159

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USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Thus,
we must presume that Registrant’s goods encompass all types of nutritional
supplements, including those used for weight loss. As such, the goods are legally
identical in part, and otherwise closely related.
Inasmuch as the goods identified in the application and the cited registration are
legally identical in part, we must presume that the channels of trade and classes of
purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159
USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels
of trade and classes of purchasers are considered to be the same); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion). The goods are likely to be
sold through the same trade channels (e.g., drug stores, supermarkets, online
retailers of vitamins and supplements) to the same classes of purchasers (e.g.,
ordinary consumers). As shown by the Examining Attorney’s third-party website
evidence, the same retailer may sell different types of nutritional supplements (e.g.,
dietary and beauty).
The record includes the affidavit of Christian Forester, an individual who
apparently is affiliated with Applicant, yet no formal title or job responsibility is
indicated. In any event, the affiant claims that his statements are based “upon my
Application Serial No. 86087159

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own knowledge.” Mr. Forester believes that there is no likelihood of confusion
between the marks. The affidavit is accompanied by pages from Applicant’s and
Registrant’s websites.
Mr. Forester makes numerous statements relating to the goods, which include
the following:
Our mark NUTRIWISE is used exclusively in connection
with the protein supplements. Specifically, our
NUTRIWISE mark is used with protein supplements that
are used exclusively for weight loss.

Our goods are marketed exclusively to those seeking a
supplement that will aid in the weight loss regimen
designed by their doctors. Our industry is highly
specialized and there is absolutely no overlap in the trade
and/or marketing channels utilized by the average
purchaser of a line of beauty supplements sold under the
“youtheory” brand.

In contrast, the [Registrant’s] NUTRAWISE mark
appears to be used exclusively with a line of beauty
supplements including collagen, turmeric, anti-aging
formulas, resveratrol, and green coffee beans. It does not
appear that any of these products are intended for use
with weight loss.

The trade channels of our goods bearing the NUTRIWISE
mark are offered exclusively through online markets.

In contrast, it appears that the trade channels of the
[Registrant’s] Nutrawise mark are available primarily
through a retail location based in California as they do
not appear to be available at the website hosted at
www.youtheory.com.

Accordingly, there is simply no overlap in the channels of
trade between the goods provided under our NUTRIWISE
mark and the goods provided under the [Registrant’s]
Nutrawise mark.

Application Serial No. 86087159

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In my experience with our business our clients exercise a
very high level of sophistication in choosing the goods
offered under our NUTRIWISE mark. After all, they are
choosing goods which are designed to attract very specific
consumer[s], namely, men and women seeking a protein
supplement to aid in weight loss. It can only be assumed
that the Nutrawise mark was used to attract those
seeking beauty supplements, primarily women.

Mr. Forester’s statements, and the exhibits attached to the affidavit, are largely
irrelevant to our analysis. An applicant may not restrict the scope of the goods
covered in its application or in the cited registration by argument or extrinsic
evidence. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165
(TTAB 2013), In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008), In re
Bercut-Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986). Thus, any specific
differences between the actual nature of the goods are irrelevant in our analysis. As
noted earlier, Registrant’s goods are not limited in any manner whatsoever and,
thus, Registrant’s nutritional supplements are presumed to include those used for
weight loss. Further, neither of the identifications of goods includes any of the
limitations in trade channels or classes of purchasers highlighted by Mr. Forester.
The legal identity, in part, of the goods, and the presumed identity in trade
channels and purchasers are factors that also weigh heavily in favor of a finding of
likelihood of confusion.
As indicated above in Mr. Forester’s affidavit, Applicant claims that the relevant
customers of the involved goods are sophisticated. The record is devoid of any
corroborating evidence on this factor. However, even assuming that Applicant’s and
Registrant’s goods may involve a careful purchase, it is settled that sophisticated
Application Serial No. 86087159

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purchasers are not immune from source confusion, especially in cases such as this
one involving virtually identical marks and legally identical goods. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1163-64; In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110,
112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not
infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find that the
virtual identity between the marks and the legal identity of the goods sold
thereunder outweigh any presumed sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). Accordingly, this factor is neutral.
With respect to the eighth du Pont factor, Applicant states that it is unaware of
any instances of actual confusion between its mark and Registrant’s mark. More
specifically, Mr. Forester stated the following:
We began using the mark NUTRIWISE in association
with our goods for over two years. In that time there have
been no instances of actual confusion with the
[Registrant’s] mark.

We believe this period of co-existence without any
evidence of actual confusion between [the marks] to be
significant insofar as if a likelihood of confusion truly
existed would we not have seen some evidence thereof?
Correspondingly, if there has been no such confusion how
can it be argued that such is still “likely” devoid of any
evidence thereof?
Application Serial No. 86087159

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It is not necessary to show actual confusion in order to establish likelihood of
confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223
USPQ 1025 (Fed. Cir. 1990). Applicant’s assertion, particularly in this ex parte
proceeding, is entitled to little weight. See In re Majestic Distilling Co., Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of
no known instances of actual confusion are of little evidentiary value”). See also In
re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating
that testimony of applicant’s corporate president’s unawareness of instances of
actual confusion was not conclusive that actual confusion did not exist or that there
was no likelihood of confusion); In re Binion, 93 USPQ2d 1531, 1536 (TTAB 2009);
In re 1st USA Realty Professionals Inc., 84 USPQ2d 1581, 1588 (TTAB 2007); In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, the record
is devoid of evidence relating to the extent of use of Applicant’s and Registrant’s
marks that would enable us to determine whether there have been meaningful
opportunities for instances of actual confusion to have occurred in the marketplace.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000). Accordingly, the du Pont factor of the length of time during and
conditions under which there has been contemporaneous use of the marks without
evidence of actual confusion is neutral.
We have carefully considered all of the evidence made of record pertaining to the
issue of likelihood of confusion, as well as all of the arguments related thereto. We
conclude that purchasers familiar with Registrant’s “nutritional supplements” sold
Application Serial No. 86087159

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under the mark NUTRAWISE would be likely to mistakenly believe, upon
encountering Applicant’s mark NUTRIWISE for “dietary and nutritional
supplements used for weight loss,” that the goods originate from or are associated
with or sponsored by the same entity.
Decision: The refusal to register is affirmed.