Dona Stiles

Trademark Trial and Appeal Board

Nov 4, 2005

No. 76493965 (T.T.A.B. Nov. 4, 2005)

11/4/05

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

Trademark Trial and Appeal Board
___________

In re Dona Stiles
___________

Serial No. 76493965
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Dona Stiles, pro se.

Andrew Benzmiller, Trademark Examining Attorney, Law Office
116 (M. L. Hershkowitz, Managing Attorney).
_____________

Before Hanak, Bucher and Zervas, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Dona Stiles (applicant) seeks to register in standard
character form ISLAND NUTRITION for “vitamins, mineral
supplements, nutritional supplements and herbal supplements
containing amino acids, enzymes, phytonutrients, marine
extracts and herbal extracts.” The application was filed on
February 28, 2003 with a claimed first use date of August 11,
1995. In her application, applicant voluntarily disclaimed
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2
the exclusive right to use NUTRITION apart from the mark in
its entirety.
Citing Section 2(d) of the Trademark Act, the Examining
Attorney refused registration on the basis that applicant’s
mark, as applied to applicant’s goods, is likely to cause
confusion with the mark ISLAND BERRIES, previously registered
in standard character form for “dietary supplement smoothie.”
Registration No. 2,712,051. This registration contains a
disclaimer of the exclusive right to use BERRIES apart from
the mark in its entirety.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining Attorney
filed briefs. Applicant did not request an oral hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976)(“The 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.”).
Considering first the goods, we find that registrant’s
goods (dietary supplement smoothie) are extremely similar to
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3
at least certain of applicant’s goods, and in particular,
“nutritional supplements.” As is obvious, registrant’s goods
are not just a “smoothie,” but rather are a particular type
of smoothie, namely a “dietary supplement smoothie.” In her
Request for Reconsideration dated October 8, 2004, applicant
attached a number of advertisements placed by registrant for
its dietary supplement smoothies. These advertisements
demonstrate that registrant’s dietary supplement smoothies
can also be described as nutritional supplement smoothies.
One of registrant’s advertisements touts the fact that its
smoothies “serve as a meal replacement” and are “custom
blended with a choice of eighteen different nutritional
supplements.” All of registrant’s advertisements, made of
record by applicant, demonstrate that dietary supplement
smoothies contain various nutritional supplements. In other
words, the evidence selected by applicant shows that the term
“dietary supplement smoothie” and the term “nutritional
supplement smoothie” are, if not identical, almost so.
In an effort to distinguish her particular nutritional
supplements from registrant’s dietary supplement smoothies,
applicant makes the mistake of focusing on her actual goods
and registrant’s actual goods, as opposed to considering the
goods as described in the application and registration. At
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4
page 5 of her brief, applicant notes that her nutritional
supplements are “pre-packaged vitamin-like goods,” whereas
registrant’s goods are “made-to-order smoothies” sold on
premises. It is fundamental that in Board proceedings, “the
question of likelihood of confusion must be determined based
on an analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-à-vis a the
goods and/or services recited in [the cited registration],
rather than what the evidence shows the goods and/or services
to be.” Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). To be blunt,
applicant seeks to register her mark ISLAND NUTRITION for,
among other goods, “nutritional supplements.” The term
“nutritional supplements” is a very broad term which, as the
evidence of record demonstrates, can include a “smoothie.”
In sum, as noted before, we find that registrant’s goods
(dietary supplement smoothie) are encompassed by the broad
term “nutritional supplements,” one of applicant’s goods.
Thus, as described in the application and registration,
certain of applicant’s goods (nutritional supplements) are
virtually legally identical, if not legally identical, to
registrant’s “dietary supplement smoothie.”
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5
Turning to a consideration of the marks, we are
obligated to compare the marks “in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed.
Cir. 1985). However, in comparing marks in their entireties,
it is completely appropriate to give less weight to a portion
of a mark that is merely descriptive of the relevant goods or
services. National Data, 224 USPQ at 751 (“That a particular
feature is descriptive … with respect to the relevant goods
or services is one commonly accepted rationale for giving
less weight to a portion of the mark.”).
Both two word marks begin with the entirely arbitrary
word ISLAND. Applicant has not made of record any evidence
whatsoever showing that ISLAND is in any way descriptive of
either her goods or registrant’s goods. The record does not
reflect that any third party is using as its mark (or as part
of its mark) the term ISLAND for nutritional supplements or
any other products that are related to either applicant’s
goods or registrant’s goods.
The words NUTRITION (part of applicant’s mark) and
BERRIES (part of registrant’s mark) are merely descriptive of
the goods of applicant and registrant and have quite properly
been disclaimed. Clearly, as applied to nutritional
supplements and applicant’s other goods, the word NUTRITION
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is descriptive. Likewise, as applied to “dietary supplement
smoothies” (registrant’s goods), the term BERRIES merely
describes the content and/or flavor of the smoothie.
Not only is the word ISLAND the dominant portion of both
marks, but in addition, it is “the first word” in both marks,
an additional factor which makes “the marks similar.” Palm
Bay Imports, Inc. v. Veuve Clicquot, 396 F.3d 1396, 73 USPQ2d
1689, 1690 (Fed. Cir. 2005). See also Presto Products v.
Nice-Pak Products, 9 USPQ2d 1895, 1897 (TTAB 1998) (The fact
that two marks share the same word is generally “a matter of
some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered.”)
Finally, it must be remembered that both applicant’s
mark and registrant’s mark are depicted in standard form
character (typed drawing form). This means that the two
marks are not limited to being “depicted in any special
form,” and hence we are mandated to “visualize what other
forms the mark[s] might appear in.” Phillips Petroleum Co.
v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971). See also INB National Bank v. Metrohost Inc., 22
USPQ2d 1585, 1588 (TTAB 1992). One reasonable manner of
presentation for both marks would be to depict the entirely
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arbitrary portion ISLAND in large lettering on one line, and
then depict the subordinate elements (NUTRITION or BERRIES)
in decidedly smaller lettering on a second line. When so
depicted, the two marks would be extremely similar, and their
use on virtually identical goods would result in not a mere
likelihood of confusion, but rather in an extremely high
probability of confusion.
Decision: The refusal to register is affirmed.