General Nutrition Investment Companyv.Herbal Prostate Cancer Treatment LLC

Trademark Trial and Appeal Board

Apr 25, 2019

91233297 (T.T.A.B. Apr. 25, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed:
April 25, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

General Nutrition Investment Company
v.
Herbal Prostate Cancer Treatment LLC
_____

Opposition No. 91233297
_____

John W. McIlvaine, Cecilia R. Dickson and Anthony W. Brooks of The Webb Law
Firm, for General Nutrition Investment Company.

Henry Hewes for Herbal Prostate Cancer Treatment LLC, pro se.
_____

Before Kuhlke, Wellington and Kuczma, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Herbal Prostate Cancer Treatment LLC, seeks registration of the
mark HNC in standard characters for “Herbal supplements; Herbal supplements for
sleeping problems; Herbal supplements for people; Liquid herbal supplements;
Natural herbal supplements,” in International Class 5 on the Principal Register.1
Opposer, General Nutrition Investment Company, has opposed registration of
Applicant’s mark on the ground that, as applied to Applicant’s goods, the mark so

1 Serial No. 87056115, filed June 1, 2016, based on an allegation of an intention to use the
mark in commerce under Section 1(b), 15 U.S.C. § 1051(b).
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2

resembles Opposer’s previously used and registered marks GNC in standard
characters and stylized for retail services featuring nutritional products and for
various nutritional products, including dietary supplements, vitamin and mineral
supplements, sports nutrition drinks, herbs, and health foods, as to be likely to
cause confusion under 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).2 By its answer,
Applicant admits paragraphs 1-14 of the notice of opposition and denies the
remaining allegations.
The parties filed briefs on the case. Applicant filed a “reply brief” to Opposer’s
reply brief. There is no provision for a defendant to file a reply brief and we give it
no consideration. Trademark Rule 2.128, 37 C.F.R. § 2.128; Trademark Trial and
Appeal Board Manual of Procedure (“TBMP”) §801.02(d) (2018). In view thereof,
Opposer’s request to file a motion to strike is denied as moot.
I. RECORD
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the application subject to the notice of
opposition.
Opposer submitted the testimony affidavit of David L. Sullivan, Opposer’s Vice
President and Assistant General Counsel, with accompanying exhibits A through
F,3 the testimony deposition of Roget Romain, a consultant and part owner of
Applicant, with accompanying exhibits 1-12, and the testimony deposition of Henry

2 While oblique references to “dilution” occur in Opposer’s and Applicant’s briefs, a claim of
dilution under Section 43(c) of the Trademark Act is not before us as it was not pleaded or
tried by implied consent.

3 12 TTABVUE.
Opposition No. 91233297

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Hewes, Applicant’s president and majority owner, with accompanying exhibits 13-
16.4
Opposer also submitted with its notice of reliance5: (1) USPTO Trademark
Status Document Retrieval (TSDR) printouts of its pleaded registrations (2180647
and 3429065), which show that the registrations are subsisting and owned by
Opposer;6 (2) TSDR printouts of three other registrations (1786007, 2187956,
3793104 ) owned by Opposer;7 (3) TSDR printouts of third-party applications; (4)
Applicant’s responses to Opposer’s first set of interrogatories, requests for
admission and document requests;8 (5) printouts from Applicant’s websites,
Facebook page, Instagram page and Amazon page showing Applicant’s applied-for
mark; (6) printouts from the WayBackMachine and Opposer’s current website

4 14 TTABVUE.

5 11 TTABVUE.

6 Pleaded registrations may be made of record by submitting “a current copy of information
from the electronic database records of the Office showing the current status and title of the
registration.” Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d).

7 Opposer did not plead these registrations and therefore may not use them as a basis for
the opposition (such as for purposes of removing priority as an issue in the case, or for
proving standing). TBMP § 704.03(b). “While an unpleaded registration cannot be used as a
basis for the opposition, it, like third-party registrations, may be considered for ‘whatever
probative value’ it may lend to Opposer’s showing under the du Pont factors in its case in
chief.” FUJIFILMSonoSite, Inc. v. Sonoscape Co., Ltd., 111 USPQ2d 1234, 1236 (TTAB
2014).

8 Applicant’s response to the document request indicating no documents exist is properly of
record. See City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106
USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document production requests are
admissible solely for purposes of showing that a party has stated that there are no
responsive documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d 1036 n.7 (TTAB
2012) (written responses to document requests indicating that no documents exist may be
submitted by notice of reliance).
Opposition No. 91233297

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showing Opposer’s mark; (7) copies of court and arbitration decisions involving the
GNC mark; (8) TSDR printout of the subject application;9 and (9) TSDR printouts of
Mr. Hewes’ applications for various marks.
Applicant did not submit trial evidence. However, through its answer and
response to admission requests, Applicant admits, inter alia, to the following facts:
• Opposer’s corporate parent, General Nutrition Centers, Inc. (“GNC”) is the
largest global specialty retailer of nutritional products, including vitamin,
mineral, herbal, and other specialty supplements and sports nutrition, diet,
and energy products.10
• GNC sells, among other things, vitamin and mineral supplements, sports
nutrition products including sports nutrition drinks, herbs, health foods,
cosmetics, body care products, aroma therapy products, gels, creams, lotions,
and miscellaneous health care products, diet products, sports accessories,
fitness products, and specialty workout apparel.11
• Over the past forty years, Opposer has established a portfolio of famous
marks that are used by Opposer’s affiliates, franchisees, and licensees in the
conduct of the GNC business.12
• One of GNC’s most visible uses of the GNC Marks is pictured below:

9 This was unnecessary as it is already of record under Trademark Rule 2.122(b).

10 Answer, 6 TTABVUE 5.

11 Id.

12 Id.
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13
• Opposer is the owner of U.S. Trademark Registrations No. 2,180,647 and
3,429,065, among others, for the mark GNC.14
• The GNC Mark is famous under the Lanham Act, 15 U.S.C. § 1125(c), and
that fame has been recognized by at least one U.S. District Court.15
• Today the GNC Mark is among the most well-known brands in the health
and wellness products industry. The GNC Mark has been in use for more
than fifty years and is now well-known and instantly recognizable to the
general consuming public in the United States and around the world. As
such, it constitutes an integral part of GNC’s business and brand identity and
is one of the most visible ways in which consumers encounter GNC’s
branding in the market place.16
• Opposer’s GNC Registrations are valid and enforceable.17
• Applicant was aware of the GNC marks prior to Applicant’s first use of its
HNC mark.18
• Opposer’s GNC marks are distinctive and famous.19

13 Id. at 6.
14 Id.
15 Id.
16 Id. at 7.
17 Response to Req. for Adm. 1, 11 TTABVUE 133.

18 Id. at 134.

19 Id. at 145.

Opposition No. 91233297

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II. STANDING AND PRIORITY
Opposer’s pleaded and proven registrations are summarized below:
Registration No. 2180647 for the typed mark GNC20 for
“dietary supplements,” in International Class 5, applied
for on July 28, 1997, issued on August 11, 1998, renewed;
Registration No. 3429065 for the standard character mark
GNC for “Powdered nutritional supplement drink mix
containing one or more of the following ingredients, soy,
oat oil, creatine, soy oil, dextrose, protein, non-fat milk,
milk protein, or whey protein concentrate,” International
Class 5, “Drinks based in yoghurt, non-fat milk, and milk
drinks containing fruits, soy, oat oil, creatine, soy oil,
dextrose, protein, milk protein, whey protein concentrate,
non-fat milk concentrate featuring fruit, vegetable,
chocolate, vanilla flavorings, chocolate flavorings, vanilla,
fruit and vegetable flavorings; protein based, nutrient
dense snack bars, consisting of soy, oat oil, creatine, soy
oil, dextrose, non-fat milk, yogurt, milk, protein, whey
protein, featuring, chocolate, vanilla, fruit, vegetable
flavored soy, oat oil, creatine, soy oil, dextrose, whey
protein, and non-fat milk,” in International Class 29,
“Drinks and smoothies, namely, fruit drinks, vegetable
drinks, smoothies, and bottled water; fruit drinks, energy
drinks, sport drinks, smoothies, and bottled water,
featuring chocolate, vanilla, fruit, vegetable flavor; fruit
drinks, energy drinks, sport drinks, smoothies, and
bottled water all containing secondary components,
namely, soy, oat oil, soy oil, creatine, dextrose, whey
protein, non-fat milk, yogurt, milk, milk protein; smoothie
concentrates containing secondary components, namely,
soy, oat oil, creatine, soy oil, dextrose, whey protein, non-
fat milk, milk protein, whey protein concentrate,
featuring chocolate, vanilla, fruit, vegetable flavored soy,
oat oil, creation, soy oil, dextrose, milk, yogurt, whey
protein, and non-fat milk concentrate,” in International
Class 32, “Retail store services featuring health foods,
dietary supplements, nutritional supplements, herbs,

20 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP §
807.03(i) (October 2018).

Opposition No. 91233297

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vitamins, sports nutrition products, fitness products and
apparel, cosmetics, body care, diagnostic exercise or
aromatherapy products,” in International Class 35,
applied for on June 7, 2006, issued on May 20, 2008,
renewed.
Because Opposer has made its pleaded registrations properly of record, Opposer has
established its standing to oppose registration of Applicant’s mark and its priority is
not in issue with respect to the marks and goods in those registrations. See Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir.
2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Lipton
Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
III. THE PARTIES
Opposer was formed in 1989 as a wholly owned subsidiary of General Nutrition
Centers, Inc. Sullivan Aff. ¶ 4, 12 TTABVUE 3. General Nutrition Centers, Inc. was
formed in 1935 and has grown into the world’s largest specialty retailer of
nutritional, diet, energy and sports nutrition products with over 6,300 retail
locations in the United States and sells, inter alia, herbal supplements, herbal
supplements for people, liquid herbal supplements and natural herbal supplements.
Id. at ¶¶ 4, 7-8, 12 TTABVUE 3, 5. Opposer sells its products under the GNC mark
in its retail stores, the stores of its affiliates, franchisees and licensees, its store-in-
store locations in pharmacies, on its website and on Amazon.com. Id. at ¶ 8, 12
TTABVUE 5. Its products are subject to regulation by one or more federal agencies,
Opposition No. 91233297

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including the U.S. Food and Drug Administration, the Federal Trade Commission,
the Consumer Product Safety Commission and the United States Department of
Agriculture. Id. at ¶ 13, 12 TTABVUE 7.
An example of Opposer’s use of its mark in connection with dietary supplements
is set forth below:21

Applicant was formed to sell Jalapeno Pepper Capsules. Hewes Test., 14
TTABVUE 114. Applicant’s president and majority owner, Henry Hewes, also
formed Herbal Nutritional Corporation to “license its trademark to a variety of
products.” Id. See also App. Response to Interrog. No. 1, 11 TTABVUE 94 (“The
Herbal Nutrition Corp. (HNC) mark was created by henry[sic] Hewes.”). Mr. Hewes
clarified that Applicant owns the trademark but that the Herbal Nutritional
Corporation was formed “as a way of supporting the trademark so that we had a
company that had the same initials as HNC.” Id. at 116. Mr. Hewes owns 80
percent of Applicant and Mr. Roget Romain owns 20 percent. Id. at 114; Romain
Test., 14 TTABVUE 7.

21 Sullivan Aff., ¶ 21, Exh. C, 12 TTABVUE 11-12, 193.
Opposition No. 91233297

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Mr. Hewes testifies that he came up with the HNC mark because he “wanted a
generic mark that could cover a variety of herbal products.” 14 TTABVUE 119. He
further testifies:
I wanted to create a brand that would do that and I
wanted to cover both herbal and nutrition, and so the
name Herbal Nutrition came over time. It’s something
that I wanted to do. And I wanted also to give it a
corporate environment so that people would have greater
dependability on the product. So the name Herbal
Nutritional Corporation came first. And then I wanted to
find something that would fit easily onto a bottle or a
package, and so I shortened Herbal Nutrition Corporation
to HNC.
Id. at 120.
An example of Applicant’s use of the mark HNC in connection with its goods as
displayed on the Internet is shown below:22

IV. LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set

22 Romain Test. Exh. 11, 14 TTABVUE 23-24, 75.
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forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). 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). As noted above,
Opposer pleaded and proved two registrations for the mark GNC. For purposes of
our likelihood of confusion analysis, we confine our analysis to Opposer’s mark in
pleaded and proven Registration No. 2180647, summarized above, because if we do
not find likelihood of confusion with the mark and goods in this registration, we
would not find it as to the other pleaded and proven registrations. See In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Relatedness of Goods, Channels of Trade, Classes of Purchasers
We turn first to a consideration of the goods, channels of trade and classes of
purchasers. We must make our determinations under these factors based on the
goods as they are recited in the registration and application. 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 re Elbaum, 211 USPQ 639
(TTAB 1981).
Opposition No. 91233297

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The respective goods, as identified in the application and Opposer’s registration,
are legally identical. Dietary supplements are defined as a “wide assortment of
minerals, vitamins, and sundry herbs that are taken as nutritional supplements to
regular food”23 and as “containing one or more vitamins, herbs, enzymes, amino
acids, or other ingredients, that [are] taken orally to supplement one’s diet, as by
replacing a missing nutrient.”24 Thus, Opposer’s “dietary supplements” listed in
Registration No. 2180647 encompass Applicant’s “Herbal supplements; Herbal
supplements for sleeping problems; Herbal supplements for people; Liquid herbal
supplements; Natural herbal supplements” because the identification in Opposer’s
registration, “dietary supplements,” is not restricted by type and therefore the
identification encompasses Applicant’s various herbal supplements. As explained
above, we consider the similarity of the goods as identified in the application and
registration. Applicant’s arguments that Opposer’s “Cayenne Pepper Extract” and
Applicant’s “Jalapeno Pepper Extract” are not identical and that the “majority of
Opposer’s products line is not composed of herbal supplements” (16 TTABVUE 4)
impermissibly narrows the scope of the broadly worded identification of goods in the
registration which covers herbal supplements. Absent a counterclaim we are bound

23 The New Dictionary of Cultural Literacy (3d ed. 2005) retrieved from
www.dictionary.com. The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in
printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).

24 The American Heritage(R) Dictionary of the English Language (6th ed. 2016)
retrieved from https://search.credoreference.com.
Opposition No. 91233297

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to accord the Section 7(b) presumptions to all goods encompassed by the
identification in the registration.
In addition to the legal identity of the goods, we further find the parties’ goods
are closely related because Opposer’s various dietary supplements, including its
cayenne pepper product, have the same general use as Applicant’s herbal
supplements, to enhance the consumer’s wellness through nutritional supplements.
In a Section 2(d) determination, the goods do not have to be identical or even
competitive in order to find that there is a likelihood of confusion. In re Iolo Techs.,
LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92
USPQ2d 1366, 1368 (TTAB 2009). The issue is not whether the goods will be
confused with each other, but rather whether the public will be confused as to their
source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed.
Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related
to, one another in kind, the same goods can be related in the mind of the consuming
public as to the origin of the goods. It is this sense of relatedness that matters in the
likelihood of confusion analysis.”); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993). It is sufficient that the goods of the applicant and the
registrant are related in some manner or that the conditions surrounding their
marketing are such that they are likely to be encountered by the same persons
under circumstances that, because of the marks used in connection therewith,
would lead to the mistaken belief that they originate from the same source. See, e.g.,
On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Opposition No. 91233297

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Cir. 2000) (holding ON-LINE TODAY for Internet connection services and ONLINE
TODAY for an electronic publication likely to cause confusion).
Considering the channels of trade and classes of purchasers, because the goods
are legally identical and there are no limitations as to channels of trade or classes of
purchasers in either the application or Opposer’s registration, we must presume
that Applicant’s and Opposer’s goods will be sold in the same channels of trade and
will be bought by the same classes of purchasers. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (TTAB 2012); Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d
1531 (TTAB 1994).
In view of the above, the du Pont factors of the similarity of the goods, the
channels of trade and classes of purchasers favor a finding of likelihood of confusion.
B. Fame of Opposer’s Mark
Before we compare the marks, we address the fifth du Pont factor, the fame of
Opposer’s mark. In the likelihood of confusion context, fame “varies along a
spectrum from very strong to very weak.” Midwestern Pet Foods Inc. v. Societe des
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012)
(quoting Palm Bay, 73 USPQ2d at 1689). A famous mark is one that has extensive
public recognition and renown. Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002). Fame, if it exists, plays a dominant role in
the likelihood of confusion analysis. Kenner Parker Toys Inc. v. Rose Art Indus. Inc.,
Opposition No. 91233297

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963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). In view of the extreme
deference that is accorded to a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of the party asserting that its mark is famous to
prove it clearly. The commercial strength of a mark “may be measured indirectly,
among other things, by the volume of sales and advertising expenditures of the
goods or services traveling under the mark, and by the length of time those indicia
of commercial awareness have been evident.” Bose, 63 USPQ2d at 1305.
Opposer argues that its GNC mark is famous and Applicant admits that
Opposer’s GNC mark is famous. App.’s Brief, 16 TTABVUE 4; Answer, 6 TTABVUE
5; Response to Request for Admissions, 11 TTABVUE 145. The record also shows
high advertising expenses and sales revenue on an annual basis, use of the GNC
mark for more than fifty years, and sales in over 6300 retail locations and online.
Sullivan Decl. ¶¶ 7, 9, 10, 11, 12 TTABVUE 5-6. The record does not include
evidence of third-party use of similar marks used on similar goods, but there are
three examples of applications for marks Opposer successfully challenged. See
Application Serial No. 79148217 for the mark RNC for beauty products, including
soaps, lotions and creams, and retail store services therefor; Application Serial No.
86930403 for the mark UNC for dietary and nutritional supplements; Application
Serial No. 87257864 for the mark GWC WELLNESS CENTER for retail store
services featuring, inter alia, vitamins and holistic medicines. Opp. Not. of Reliance
Exh. B, 11 TTABVUE 67-81.
Opposition No. 91233297

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In view of Applicant’s admission and the record support, we find that Opposer’s
GNC mark is famous for dietary supplements and accord it a broad scope of
protection and this factor strongly favors a likelihood of confusion.
C. Similarity of the Marks
We now consider the similarity or dissimilarity of Applicant’s mark HNC and
Opposer’s mark GNC when compared in their entireties in terms of appearance,
sound, connotation and commercial impression, keeping in mind that “when marks
would appear on virtually identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992). See also Bridgestone Americas Tire Operations LLC v. Fed. Corp., 673 F.3d
1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank
Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011).
The marks are composed of three letters, both ending with the letters NC and
appear to be acronyms for their respective company names General Nutrition
Centers and Herbal Nutrition Corporation. The marks differ only in the first letters
i.e., G versus H.
The parties’ arguments regarding the similarity or dissimilarity of the trade
dress that accompanies the use of their respective marks are extraneous. Our
determination is based on the applied-for and registered mark, neither of which
include trade dress. However, Applicant’s argument that its “trademark is confined
to the use of the letters HNC in a black font not the same as any variation of
Opposer’s mark” is misplaced. 16 TTABVUE 4. Because Opposer’s and Applicant’s
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marks in the registration and application are in typed or standard characters, we
must consider all depictions of the marks including the same manner of depiction
regardless of the font style, size, or color in use. See In re Viterra Inc., 101 USPQ2d
at 1910; Citigroup Inc. v. Capital City Bank Group, Inc., 98 USPQ2d at 1259. Such
depictions would include those that emphasize the similarities in the marks such as
appearing in similar fonts as shown below in the examples of the parties’ respective
uses.25

We find the marks to be similar in appearance, sound, meaning and overall
commercial impression, and this similarity in the marks, where the goods are
legally identical or closely related and Opposer’s mark is famous for these goods, as
discussed above, outweighs the dissimilarities. This factor weighs in Opposer’s
favor.

25 Romain Test. Exh. 11, 14 TTABVUE 77; Sullivan Aff, Exh. C, 12 TTABVUE 193.
Opposition No. 91233297

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D. Actual Confusion
While the absence of actual confusion may weigh against a finding of likelihood
of confusion, the absence of any reported instances of confusion is meaningful only if
the record indicates a reasonable opportunity for confusion to have occurred.
Barbaras Bakery, Inc. v. Barbara Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007).
Applicant contends that there is no evidence of actual confusion. However, there is
little evidence of Applicant’s use of its mark, and nothing in the record upon which
to make a finding as to the extent of overlapping use in the same markets. Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Moreover,
evidence of actual confusion is not necessary to establish a likelihood of confusion.
Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001). We
find this factor to be neutral.
E. Variety of Goods and Extent of Potential Confusion
Opposer argues that it uses its mark on a variety of herbal and nutritional
products ranging from capsules to smoothies. Further, due to the similarity of the
marks, goods, channels of trade and virtually identical labeling scheme, consumers
are likely and easily to be misled, which indicates a strong potential for confusion.
We view these factors as neutral to the extent that they do not add to our analysis
under the other du Pont factors.
F. Bad Faith
Opposer argues that Applicant’s knowledge of Opposer’s marks and labeling
combined with the “near identical reproduction of Opposer’s labeling by Applicant,
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is highly suggestive of Applicant’s copying of Opposer’s labeling and adoption of the
HNC mark with a clear intent to confuse.” 15 TTABVUE 17.
Bad faith, or intent to confuse, falls under the thirteenth du Pont factor “any
other established fact probative of the effect of use.” L.C. Licensing Inc. v. Berman,
86 USPQ2d 1883, 1890 (TTAB 2008). “[A] party which knowingly adopts a mark
similar to one used by another for related goods should not be surprised to find
scrutiny of the filer’s motive.” L’Oreal S.A. and L’Oreal USA, Inc. v. Robert Victor
Marcon, 102 USPQ2d 1434, 1442 (TTAB 2012). “[W]hen there is evidence of an
applicant’s intent to adopt a mark that suggests to purchasers a successful mark
already in use by another, the Board may, and ought to, take into account that
intent when resolving the issue of likelihood of confusion when that issue is not free
from doubt.” First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628,
1633 (TTAB 1988). However, “an inference of ‘bad faith’ requires something more
than mere knowledge of a prior similar mark.” Sweats Fashions, Inc. v. Pannill
Knitting Co., Inc., 833 F.2d 1560, 1565, 4 USPQ2d 1793 (Fed. Cir. 1987). A finding
of bad faith must be supported by evidence of an intent to confuse, rather than mere
knowledge of another’s mark or even an intent to copy. E.g., Starbucks Corp. v.
Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1782 (2d Cir. 2009)
(“[T]he ‘only relevant intent is intent to confuse. There is a considerable difference
between an intent to copy and an intent to deceive.’” (quoting J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 23:113 (4th ed. 2012))).
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The record shows that Applicant was aware of the GNC mark, Applicant’s trade
dress is very close to Opposer’s trade dress, and there are no examples of third
parties employing a similar trade dress. While this evidence may point towards an
intent to copy, proving intent to confuse or deceive is subject to a high evidentiary
bar that has not been met here. See, e.g., L’Oreal S.A. and L’Oreal USA, Inc. v.
Robert Victor Marcon, 102 USPQ2d at 1442 (demonstrated pattern of filing
applications to register well-known marks established bad faith intention to trade
off of plaintiff’s famous marks). We find this factor to be neutral.
G. Balancing the Factors
We have considered all of the evidence pertaining to the relevant du Pont
factors, as well as the parties’ arguments with respect thereto (including any
evidence and arguments not specifically discussed in this opinion). In balancing the
relevant factors, we conclude that because the goods are legally identical or
otherwise closely related, the trade channels and classes of customers overlap,
Opposer’s mark is famous, and the marks are similar, confusion is likely.
Decision: The opposition is sustained.