Kemin Industries, Inc.v.Daniel Hes

Trademark Trial and Appeal Board

Nov 17, 2000

No. 91110124 (T.T.A.B. Nov. 17, 2000)

Paper No. 25
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
11/17/00________
Trademark Trial and Appeal Board
________
Kemin Industries, Inc.
v.
Daniel Hes
_____
Opposition No. 110,124
to application Serial No. 75/189,400
filed on October 29, 1996
_____
Kent A. Herink of Davis Brown Koehn Shors & Roberts, P.C. for
Kemin Industries, Inc.
Daniel Hes, Pro Se.
______
Before Quinn, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application has been filed by Daniel Hes to register
the word NATUROL for “food supplements containing one or more
of the following: garlic extract in pure alcohol, grape
extract in pure alcohol, pumpkin extract in pure alcohol,
olive extract in pure alcohol, parsley extract in pure
alcohol, fenugreek extract in pure alcohol, garlic and parsley
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 110,124
2
extract in pure alcohol, [and] olive and fenugreek extract in
pure alcohol,” in International Class 5.1
As grounds for opposition, Kemin Industries, Inc. asserts
that applicant’s NATUROL trademark, when used in connection
with plant extracts in pure alcohol, so resembles opposer’s
previously used mark, MADE WITH NATUROX -- A NATURAL
ANTIOXIDANT & design, as shown below:
for human food and animal feed preservatives in the nature of
a natural antioxidant,2 as to be likely to cause confusion, to

1 Application Serial No. 75/189,400, filed October 29, 1996, based
on an allegation of a bona fide intention to use the mark in
commerce.
2 Opposer has pending application Serial No. 75/185,277, in
International Class 1, filed on October 22, 1996, for the composite
mark, MADE WITH NATUROX -- A NATURAL ANTIOXIDANT & design,
identifying the goods covered thereunder as “human food and animal
feed preservatives in the nature of a natural antioxidant.” The
application includes the statement that the words “MADE WITH” and “A
NATURAL ANTIOXIDANT” are disclaimed apart from the mark as shown.
Opposer’s application, Ser. No. 75/185,277, was filed a week
before applicant’s instant application (Serial No. 75/189,400, filed
on October 29, 1996). However, opposer’s application is presently
suspended, pending the outcome of Canc. No. 28,629. In that
cancellation proceeding, opposer is petitioning to cancel a
registration for NATUREX used on, inter alia, chemicals in
International Class 1 such as preservatives for use in the
manufacture of foods (Reg. No. 2,176,051).
Opposition No. 110,124
3
cause mistake, or to deceive, under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d).
In his answer, applicant denied the salient allegations
of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; a file wrapper copy of opposer’s
application file; the trial testimony by opposer of applicant,
Daniel Hes, as an adverse witness; the trial testimony, with
related exhibits, of Sharon Luncsford of Des Moines, Iowa,
billing supervisor for Kemin Industries, Inc.; the trial
testimony of opposer’s counsel, Daniel A. Rosenberg, with
related exhibits; and copies of various publications,
submitted by notice of reliance on March 1, 1999. Opposer and
applicant filed briefs on the case.3
We turn first to the issue of priority. In this regard,
opposer asserts that the date on which it first used the
NATUROX & design composite trademark predates the filing date
of the involved application, i.e., October 29, 1996 - the
earliest date upon which applicant may rely. As evidentiary
support therefor, opposer has submitted the testimony of Ms.
Luncsford, opposer’s billing supervisor since 1979. Through

3 Because applicant’s Exhibits A to D (attached to his final brief
on the case) were not properly made of record during his testimony
period, we have given them no consideration. We hasten to add,
however, that even if he had timely made this matter of record, the
Opposition No. 110,124
4
her testimony and related exhibits, opposer has demonstrated
ever-increasing sales from 1993 to the time of trial under its
pleaded mark (NATUROX & design) in connection with naturally
occurring preservatives having antioxidant properties. As
such, opposer has clearly established use of its pleaded mark
on or in connection with its asserted goods in the dietary
supplement market prior to applicant’s filing date which, in
the absence of evidence of use, is the earliest date applicant
can rely upon.
Accordingly, we turn to the critical issue of likelihood
of confusion. Our determination under Section 2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In a likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In putting forward his position on the dissimilarity of
the marks in their entireties, applicant argues that because

outcome of the opposition would remain the same in view of the entire
record in this case.
Opposition No. 110,124
5
the word “Nature” is “generic” for both parties’ goods, our
focus should be on the final syllable, -OX versus –OL:
The word “nature” is a generic term used often in
marketing and in the title of products. Therefore,
the focus of the comparison between Naturol and
Naturox should be on their suffixes “-ol” and “-ox”
respectively. These suffixes look and sound
different. They emphasize and represent two entirely
different products, the first being an herbal
supplement based on alcohol, the latter being and
(sic) antioxidant animal feed.
Applicant also points to the prominent design feature in
opposer’s composite mark, noting by contrast that the mark
reflected in his own typed drawing has no artwork or special
formatting:
“[Opposer’s design] also distinguishes the two marks.
Naturox includes a large circular bubble logo with
three rings in its design mark. Naturox is printed
in large bold typeface on its mark. Naturol simply
has black typeface of the word “Naturol.” Naturol
has no artwork or logo attached to its mark.
(applicant’s brief, unnumbered page 3).
Taking the opposite tact, opposer argues that NATUROX and
NATUROL are most similar, differing only as to the final
letter.
The parties agree about the similar derivations of these
two terms. Both parties tout the “natural” origins of their
respective products. In large letters of such a size they
dwarf the size of the trademark, applicant has the following
title emblazoned across the front page of a tri-fold brochure:
100%
Opposition No. 110,124
6
NATURAL
The text of this brochure goes on to say (emphasis
supplied):
For the past ten years, we have researched the best
ways to extract the therapeutic properties of garlic
and preserve them in pure alcohol. Within the last
three years, we have developed the technology to
extract natural components of many other plants and
herbs and preserve them in the same way…
Pure alcohol is a natural preservative …
NATUROL™ products are 100% natural…
These products are produced from fresh natural plants
and herbs… Alcohol is a superb natural preservative,
in which the organic components of the plants and
herbs are good for a prolonged number of years…
Both parties have conceded the overall suggestiveness of
these coined marks, due to the initial “NA?TUR?” syllables.
Furthermore, they agree that these marks share etymological
roots in the words “nature” plus “antioxidant” (NATUROX) and
“nature” plus “alcohol” (NATUROL). In spite of this
agreement, they would have us draw opposite conclusions about
the similarity/ dissimilarity of the marks.
The test is not whether applicant’s mark can be
distinguished from opposer’s mark when subjected to a side-by-
side comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
Opposition No. 110,124
7
recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Opposer notes that when each of these marks is spoken,
the leading syllables (NA? and TUR?) will likely be pronounced
identically. We agree with applicant that there is a
dissimilarity in the pronunciation of the trailing syllables
(?OX versus ?OL). However, when spoken, this final syllable
will carry the least emphasis of any portion of the mark.
Hence, on balance, we find great similarity in the sound of
the respective marks, when sounded out in their entireties.
The fact that the trailing syllables will inevitably result in
perceptible aural differences is simply not sufficient for us
to find that the marks are dissimilar as to overall sound.
As to appearance, NATUROX and NATUROL are both seven
letters long. The first six letters in these two seven-letter
strings are identical (N·A·T·U·R·O·). Hence, the striking,
overall similarities are much more critical than is the slight
difference between the final consonants.
The NATUROX portion of opposer’s mark is the dominant
portion of this composite mark. The phrase “Made with” that
precedes it, and the descriptor, “A Natural Antioxidant,” that
follows it, are significantly smaller than the term NATUROX.
In addition to being much smaller in size, these modifying
Opposition No. 110,124
8
phrases merely serve an informational function. As indicated
earlier, the words “Made With” and “A Natural Antioxidant”
have been disclaimed apart from the mark as a whole.
Neither the border nor the design in opposer’s composite
mark is particularly unique -- the latter suggesting complex
chemicals making up this ingredient mark. Further, with
regard to the design element, where both words and a design
comprise a mark, the words are normally accorded greater
weight because the words are likely to make an impression upon
purchasers that would be remembered by them and would be used
by them to request the goods. See Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed.
Cir. 1983); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
228 USPQ 461, 462 (TTAB 1985).
As to overall commercial impression, NATUROX and NATUROL
will both likely be seen as coined words carrying a strong
suggestion of “nature” or “natural.” It is not clear to us
that the ordinary purchaser of these goods will analyze the
final suffixes so as to extract from ·OX the connotation of an
antioxidant, or to isolate the meaning of alcohol from ·OL.
Furthermore, to the person knowledgeable enough to engage in
this level of analysis, both suffixes would likely convey
similar concepts of chemical agents and processes. Moreover,
Opposition No. 110,124
9
the design feature of opposer’s mark would simply serve to
reinforce this chemical connotation.
Despite the shared views of the parties that these marks
are suggestive, we should note that the record is devoid of
any evidence as to the use or registration by third parties of
marks similar to NATUROX in the same or related fields.
Accordingly, we find that the marks are similar -- when
spoken, seen and/or analyzed as to overall commercial
impression.
We turn next to the goods of the respective parties.
Applicant bases its case on the fact that his food supplements
are sold in small (50 ml) bottles and are clearly targeted for
human consumption. Applicant argues that opposer, by
contrast, sells its products in large quantities to industrial
manufacturers of animal feed. According to applicant, the
real-world difference between the parties’ respective end
users -- humans versus animals -- should force an easy
decision by this Board that there is no likelihood of
confusion in this case.
It is clear that opposer touts NATUROX liquid to the
poultry industry, for example, in maintaining the freshness of
meat and flavor of broilers, as well as in making eggs more
stable and protecting them from oxidation. (See also
replacement specimens in application Serial No. 75/185,277).
Opposition No. 110,124
10
However, even if the majority of Kemin Industries’
current NATUROX products are indeed used in the feed industry,
opposer is not so restricted in this proceeding. Opposer has
also undertaken efforts to improve food by the use of natural
antioxidants as food preservatives. Opposer has submitted for
the record evidence demonstrating that its customers,
including Solgar Laboratories, use NATUROX brand products in
formulating food supplements having dietary antioxidants for
humans.
Opposer has also submitted for the record a number of
articles drawn from scientific journals, including: a basic
introduction to biochemistry; a special focus on the
properties of Vitamin E; detailed descriptions of applied
science at the molecular level -- i.e., the chemical
activities of antioxidants in decreasing the adverse effects
of reactive oxygen species, reactive nitrogen species, or both
on normal physiological functions; arguments about the
potential benefits of dietary antioxidants and related
compounds in avoiding chronic disease and maintaining good
health; and of the specific antioxidant properties of rosemary
extract -- a primary ingredient in opposer’s products.
These articles demonstrate that both of the parties’
products are components of the dietary supplement industry,
and that some of the same active ingredients are found in
Opposition No. 110,124
11
applicant’s products and in opposer’s products. We conclude
from the entire record that both applicant and opposer
selected their respective marks to emphasize the fact that
their respective goods are made from naturally occurring
products, and both agree with scientific research that when
their respective products (vitamins, herbs and other sources
of antioxidants) are ingested, they provide a range of highly-
touted health benefits.
In conclusion, we find that these marks are quite similar
as to sound, appearance and connotation, and that the goods
have a relationship in the marketplace, such that when
applicant’s NATUROL mark is used in connection with the sale
of its products, manufacturers of dietary supplements are
likely to be confused.
Decision: The opposition is sustained and registration to
applicant is refused.
T. J. Quinn
C. E. Walters
D. E. Bucher
Opposition No. 110,124
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Administrative Trademark
Judges, Trademark Trial and
Appeal Board