Horphag Research Ltd.v.FreeLife Int’l., LLC.

Trademark Trial and Appeal Board

Aug 20, 1999

No. 91102797 (T.T.A.B. Aug. 20, 1999)

Paper No. 22
DEB
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 20 ,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Horphag Research Limited
v.
FreeLife International, LLC.
_____
Opposition No. 102,797
to application Serial No. 74/712,769
filed on August 8, 1995
_____
Marvin S. Gittes of Cobrin & Gittes for Horphag Research
Limited.1
John C. Cain and Scott J. Garber of Arnold White & Durkee
for FreeLife International, LLC.
______
Before Seeherman, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
FreeLife International, LLC., a Connecticut limited
liability company, has filed an application for registration
of the mark “SOYGENOL” for “nutritional supplements,

1 Prior to a substitution of counsel in February 1999, Robert
P. Simpson of Bilicki & Simpson, P.C. had represented opposer
throughout the course of this trial.
Opposition No. 102,797
2
ingredients sold as a component part of nutritional
supplements, vitamins and minerals.”2 Horphag Research
Limited, a corporation of the United Kingdom, filed a timely
notice of opposition on July 29, 1996. As grounds for
opposition, opposer asserts prior use of the registered
trademark “PYCNOGENOL” for “dietary and nutritional
supplements.”3 Opposer asserts that these marks are similar
in their entireties, that the goods are similar if not
identical, and that registrant is entitled to a greater
degree of protection because the goods are similar to
medicaments. As a result, opposer alleges that applicant's
mark, as applied to applicant's goods, so resembles
opposer's mark as to be likely to cause confusion within the
meaning of Section 2(d) of the Lanham Act.
Applicant, in its answer, has admitted that it filed
the instant application under the intent-to-use provisions
of the Trademark Act, but has otherwise denied the salient
allegations of the opposition.
A trial was conducted and legal briefs have been filed,
but neither party requested an oral hearing.

2 Serial No. 74/712,769, in International Class 5, filed
August 8, 1995, based upon an allegation of a bona fide intention
to use the mark in commerce.
3 Reg. No. 1,769,633, registered on May 11, 1993, §8 affidavit
accepted.
Opposition No. 102,797
3
With its brief, opposer submitted a copy of what is
essentially an assignment document conveying opposer’s
pleaded registration from Horphag Overseas Limited, the
original registrant, to opposer, Horphag Research Limited.
Applicant objects to this exhibit as being untimely
submitted. However, because this document merely updates
the information in the record of this opposition proceeding
regarding the title of opposer’s registration, and the Board
may, in any case, take judicial notice of current title
information as shown by the records of the U.S. Patent and
Trademark Office, see TBMP §703.02(a), applicant’s objection
is overruled.
In evidence are the pleadings; the file of the opposed
application; a copy of applicant’s responses to opposer’s
two sets of interrogatories introduced under two separate
notices of reliance by opposer; and the status and title
copy of opposer’s subsisting registration.
Opposer's priority of use of the mark upon which it
relies is not in issue inasmuch as the status and title copy
of its registration shows that such is subsisting and owned
by opposer. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). The
only real issue to be determined, therefore, is whether
applicant's “SOYGENOL” mark, when used in connection with
Opposition No. 102,797
4
nutritional supplements so resembles opposer's “PYCNOGENOL”
mark for dietary and nutritional supplements, that confusion
is likely as to the origin or affiliation of the parties'
respective goods.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
that sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion. In any
likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities
between the goods. Federated Goods, Inc., v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the goods of the parties, since the
goods of applicant and of opposer include nutritional
supplements, we agree with opposer that the goods are in
part identical and otherwise closely related.
Turning to the marks, opposer stresses the identical
nature of the “·genol” suffix while applicant stresses the
total dissimilarity of the “soy·” and “pycno·” prefixes.
Opposer takes the position that “… both Applicant’s
trademark and Opposer’s trademark have a similar stress
pattern with the primary accent on the first syllable.”
(brief of April 6, 1998, p. 3).
Opposition No. 102,797
5
Applicant, on the other hand, argues that:
When compared … the marks at issue, SOYGENOL and
PYCNOGENOL, are very different. First, the two
marks do not have the same number of syllables
(SOY-GEN-OL versus PYC-NO-GEN-OL). Second, the
primary accent on SOYGENOL is on the first
syllable while, contrary to Opposer’s assertions,
ordinary customers would read PYCNOGENOL as
having its primary accent on the second syllable
(PYC-NO-GEN-OL). Third, the consonant sounds
beginning the marks appear and sound very
different (“P” versus “S”). Thus, comparison of
these marks under the rationale applied by courts
in the cases cited in Opposer’s Brief, does not
lead to a finding that the marks appear or sound
similar.
We agree with applicant that the dissimilarity in
appearance, pronunciation, and connotation of the “soy·” and
“pycno·” prefixes of the parties’ marks clearly outweighs
this similarity in the common suffix “·genol.” The
beginning portion of applicant’s mark is a short, three-
letter word beginning with the letter “s” while opposer’s
beginning portion is a longer, five-letter string beginning
with the letter “p.” “Soy” is a common word that relates to
the nature of applicant’s products.4 Given consumers’
familiarity with this term, they will likely pronounce it as
it is spelled (“sÓi”). Opposer’s prefix is less common a
term,”5 and while there is arguably not one correct

4 Applicant’s response to Interrogatory Number 13 of opposer’s
first set of interrogatories.
5 We take judicial notice of the entry for “pycno·” from the
Random House Unabridged Dictionary, Second Edition, 1983. This
is “a combining form meaning ‘dense,’ ‘close,’ or ‘thick,’ used
Opposition No. 102,797
6
pronunciation for opposer’s coined mark, it would likely be
“pik·no’·jen·ól.” In addition to all the other obvious
differences in letters, length, syllables, etc., as
applicant has pointed out, this would seem to leave the
primary accent on the second syllable, further accentuating
the difference in pronunciation. And even if it were
pronounced with the emphasis on the first syllable as
opposer asserts, the differences in pronunciation between
“sÓi” and “pik·no” are readily apparent.
Finally, opposer also asks this Board to apply a lesser
quantum of proof in reaching a finding of likelihood of
confusion due to the doctrine of greater care for
pharmaceuticals (i.e., that when ethical
pharmaceuticals are involved, the consequences of
confusion are so drastic that a mark should not be
registered if there is any chance for confusion).
Without entering into the debate over the correctness
of a “doctrine of greater care” for pharmaceuticals, it
seems clear to us that mistakes between nutritional
supplements do not carry the same life-and-death risks
as can mistakes between ethical pharmaceuticals.
Moreover, even if we were to adopt a lesser standard of

in the formation of compound words.” The dictionary says that
this prefix form is derived from the Greek word, “pyknos.”
Opposition No. 102,797
7
confusion in the instant case, we find that the
differences in the marks is so great that confusion is
not likely.
Decision: The opposition is dismissed.
E. J. Seeherman
T. J. Quinn
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial
and Appeal Board