Invite Health, Inc.v.Jared R. Wheat

Trademark Trial and Appeal Board

Feb 12, 2008

No. 91171458 (T.T.A.B. Feb. 12, 2008)

Mailed: February 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Invite Health, Inc.

v.

Jared R. Wheat
_______

Opposition No. 91171458
to Application No. 78644404
filed on June 6, 2005
_______

Larry Miller of Feder, Kaszovitz, Isaacson, Weber, Skala,
Bass & Rhine, LLP for opposer.

Joseph P. Schilleci, Jr. of Natter & Fulmer, P.C. for
applicant.
_______

Before Quinn, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Invite Health, Inc. filed an opposition to the
application of Jared R. Wheat to register the mark DIGEST-RX
(in standard characters) for “vitamins and dietary
supplements,” in International Class 5.1 Opposer asserts
that applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously registered mark DIGESTIVE HX
(in standard characters) for “dietary and nutritional

1 Application Serial No. 78644404, filed June 6, 2005, based upon
an allegation of a bona fide intention to use the mark in
commerce in connection with the identified goods.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91171458
2
supplement,”2 as to be likely to cause confusion, under
Section 2(d) of the Trademark Act. Applicant denied the
salient allegations of opposer’s notice of opposition.
Opposer filed a brief on the case. Applicant did not
file a brief, nor did it submit evidence or testimony.
We dismiss the opposition.
I. Record
The record consists of the file of the subject
application, the pleadings, and opposer’s pleaded
registration, a title and status copy of which opposer
submitted under notice of reliance on March 26, 2007.3
II. Analysis
A. Standing
Because opposer has properly made its registration of
record, we find that opposer has established standing to
oppose registration of applicant’s mark. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.

2 Registration No. 3124598, issued August 1, 2006, in
International Class 5. Registrant disclaimed the exclusive right
to use the term “digestive” apart from the mark as shown. When
the notice of opposition was filed, opposer’s registration had
not yet issued, and was therefore identified by its application
serial number. We deem the pleadings to have been amended to
plead ownership of the later-issued registration. Fed. R. Civ.
P. 15(b)(2).
3 Although opposer made passing reference in the notice of
opposition to its use of the mark, (“[o]pposer distributes a
proprietary line of nutritional products...”), no evidence was
submitted regarding such use, and we therefore give the
allegation no further consideration.
Opposition No. 91171458
3
2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
B. Priority
Opposer has established its priority by making its
pleaded registration of record. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
C. Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. 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); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on the relevant
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
Opposition No. 91171458
4
1976); see also In re Azteca Restaurant Enter., Inc., 50
USPQ2d 1209 (TTAB 1999)(and cases cited therein). Finally,
we note that “[i]t is beyond question that an opposer
alleging likelihood of confusion under Section 2(d) has the
burden of proof to establish that applicant does not have
the right to register its mark.” Yamaha Int’l Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1007
(Fed. Cir. 1988).
1. Similarity of the Goods
Applicant’s goods are identified as “vitamins and
dietary supplements,” while the goods covered by opposer’s
registration are “dietary and nutritional supplements.” The
parties’ goods are identical to the extent that they both
include dietary supplements.4 Octocom Sys., Inc. v. Houston
Computers Serv. 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

4 Opposer submitted no evidence or argument as to whether
applicant’s “vitamins” are encompassed within “nutritional
supplements” and, thus, may be related to opposer’s goods. In
any event, it is unnecessary to decide this question, because we
recognize that the goods are at least partly identical, and a
likelihood of confusion with respect to any of the goods in the
opposed class would support refusal of registration as to all of
them. Tuxedo Monopoly, Inc. v. General Mills Fund Group, Inc.,
648 F.2d 1335, 209 UPSQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with
respect to any item that comes within the identification of goods
in the application).
Opposition No. 91171458
5
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”).
2. Similarity of the marks
Applicant’s applied-for mark is DIGEST-RX, while
opposer’s registered mark is DIGESTIVE HX. We find that
these marks have different connotations.
With little explanation, opposer asserts that
[t]he DIGEST-RX mark is closely related to the
prior registered DIGESTIVE HX with respect to ...
[t]he sound, commercial meaning and impression of
the marks.... In particular, the dominant term of
both marks, DIGESTIVE-HX and DIGEST-RX are
practically identical. ... The dominant term
creates the greatest commercial impression in the
marks. Both marks suggest that the applicant’s
and the registrant’s product will contribute to
healthy digestion.

Brief at 3-4.
The main similarity between the marks at issue (and the
visually dominant element of both) is the word DIGEST or its
adjectival form, DIGESTIVE. However, both terms are at
least highly suggestive of dietary supplements, which we
must presume include such supplements intended to improve or
aid digestion. We take judicial notice of the following
dictionary definitions:5

5 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 have regular fixed editions. In re Red Bull GmbH, 78
UPSQ2d 1375, 1377 (TTAB 2006).
Opposition No. 91171458
6
digest [transitive v]... 2: to convert (food) into
absorbable form ... [intransitive v] 1: to digest
food ....

digestive: ... n ... an aid to digestion esp. of
food

MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 324 (1998).
We note that in connection with its registration,
opposer disclaimed the exclusive right to use the term
“DIGESTIVE” apart from the mark as shown. A disclaimer does
not remove the disclaimed material from the mark, In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985), and we must consider the marks as a whole, including
terms which might not be separately registrable.
Nonetheless, such matter is usually less significant in
forming a commercial impression because of its low degree of
distinctiveness. Tektronix Inc. v. Daktronics, Inc. 534
F.2d 915, 189 USPQ 693 (CCPA 1976). Accordingly, because
DIGEST appears to be at least highly suggestive and
DIGESTIVE appears to be at least merely descriptive as
applied to the goods at issue, we conclude that those terms
have very little source-identifying capacity in the context
of the identified goods.
Of course, both marks include another term: HX in
opposer’s mark, and RX in applicant’s. While these terms
also share a superficial visual similarity (both two-letter
terms, ending in “x”), the similarity ends there. These

Opposition No. 91171458
7
terms carry different impressions because of their different
meanings. In this regard, we take judicial notice of the
meaning of “RX:”
Rx ... n [alter. of Rx symbol used at the
beginning of a prescription, abbr. for L recipe,
lit. take...] ... a medical prescription

MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1027 (1998).
Applicant’s use of the well-known medical abbreviation
“RX” in DIGEST-RX would clearly suggest in relation to these
goods that applicant’s vitamins and dietary supplements are
(or are of a type or potency which would be) prescribed by a
doctor or other health-care professional to help the patient
“digest” his or her food.
By contrast, opposer’s mark does not carry the meaning
of something that must be prescribed by a professional. The
DIGESTIVE part of opposer’s mark connotes any product, which
is believed to merely aid digestion. In addition, unlike
applicant’s mark, the “HX” portion of opposer’s mark does
not suggest that opposer’s goods are professionally
prescribed or are of particular potency or efficacy. We are
unclear as to what HX means (if anything) in this context,6

6 “Hx” is apparently used in the medical field as an abbreviation
for “history,” i.e., medical history. See http://dictionary.-
reference.com/ based on THE AMERICAN HERITAGE ABBREVIATIONS DICTIONARY
(3d ed. 2005). However, it is not clear that such meaning is
commonly known outside the medical field; the term appears in few
general-purpose dictionaries. Because the meaning of HX and its
relevance to opposer’s goods appears to be obscure, we do not
consider it an appropriate topic for judicial notice. Fed. R.
Evid. 201(b)(“A judicially noticed fact must be one not subject
to reasonable dispute....”).
Opposition No. 91171458
8
but in the absence of evidence to the contrary, we consider
it arbitrary, and we find that it does not carry the same
impression as “RX” in applicant’s mark.
Thus, although both marks at issue include variations
on a common term, the only major similarity between them is
in their use of the term DIGEST and the term’s adjectival
form, DIGESTIVE. Not only are these terms somewhat
different in their meaning, but they are also either highly
suggestive or descriptive of the goods (which must be
construed to include dietary supplements taken to aid
digestion). Because these terms have little or no source-
identifying capacity, consumers would be unlikely to assume
a common source for the parties’ goods on that basis.
Moreover, although the second term in both marks is a two-
letter combination ending in “x,” RX, as used in applicant’s
mark, has a specific and immediately recognizable meaning
relevant to the goods, a meaning which is not shared by
opposer’s mark. Based on this meager record, and
considering the marks at issue in their entireties, we
conclude that the differences between these marks outweigh
their similarities.
Conclusion
While we readily admit the possibility that our
decision would be different based on a more robust record,
we are required to constrain ourselves to consideration of
Opposition No. 91171458
9
the evidence proffered by the parties. Although applicant
has not been heard from in this proceeding since he filed
his answer, it is opposer that bears the burden of proving
its case by a preponderance of the evidence, and we find
that its burden has not been met. Accordingly, we conclude
that confusion is not likely.
Decision: The opposition is dismissed.