L. Perrigo Company

Trademark Trial and Appeal Board

Aug 10, 2006

No. 76495506 (T.T.A.B. Aug. 10, 2006)

Mailed:
10 August 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re L. Perrigo Company
________

Serial No. 76495506
_______

H. W. Reick of Price, Heneveld, Cooper, DeWitt & Litton,
LLP for L. Perrigo Company.

Hannah Fisher, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Holtzman, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 7, 2003, applicant, L. Perrigo Company,
applied to register the mark DIET SMART, originally
depicted in a typed drawing, on the Principal Register for
goods identified as “dietary supplements” in Class 5.1
Applicant has disclaimed the term “Diet.” Subsequently,

1 Serial No. 76495506. The application was originally based on
an allegation of a bona fide intention to use the mark in
commerce. Applicant filed an amendment to allege use that set
out July 21, 2003, as the date of first use anywhere and in
commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76495506
2
applicant amended the drawing to depict the mark in the
stylized form shown below.

The examining attorney has refused to register
applicant’s mark on the ground that it is confusingly
similar under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) to a prior registration for the mark DIETSMART
(in typed or standard form) for “providing information in
the fields of fitness, food, dieting and exercise by means
of a website on a global computer network” in Class 42.2
The examining attorney argues that the differences
between the marks are minimal and that “the average
purchaser will not remember lettering style or whether
identical wording was spaced. What consumers are likely to
recall is the sound and meaning of the mark.” Brief at
unnumbered p. 3. Regarding the goods and services, the
examining attorney maintains that the “evidence of record
also demonstrates that dietary supplements and providers of
information about fitness, food, dieting and exercise are
likely to be encountered by the same consumer, possibly at
a single web site.” Brief at unnumbered p. 4.

2 Registration No. 2,493,454, issued September 25, 2001.
Ser No. 76495506
3
Applicant responds by pointing to registrant’s actual
website and arguing that “the DIETSMART program is a
membership program which is personalized for each
individual and covers personalized meal plans, depending
upon the desired weight loss and time period.” Brief at 6.
“The cited mark ‘DIETSMART,’ when used in connection with
the services, connotes to the consumer that the services …
relate to a daily meal plan and counseling regimen for
weight loss.” Brief at 8. Applicant, on the other hand,
contends that its mark “connotes to the consumer that
taking vitamins may be smart for one’s overall diet and
health.” Id. Furthermore, vitamins “are typically
consumed on a daily basis by many consumers, regardless of
their weight, as a preventive medicine and as a proactive
health measure…. [Registrant’s services] are directed to
individuals desiring to lose weight and the services are …
customized diet plans for members who must specifically
sign up for such services.” Brief at 9.
After the examining attorney made the refusal final,
this appeal followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
Ser No. 76495506
4
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The first factor that we will consider is the
similarities and dissimilarities of applicant’s and
registrant’s marks. The marks are for the same words
DIETSMART. There are two differences between the marks.
First, registrant spells the words DIETSMART without a
space while applicant’s mark is spelled in the more
traditional way with a space. The presence or absence of a
space between identical words does not significantly change
the appearance of the marks. Stockpot, Inc. v. Stock Pot
Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737
F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no
question that the marks of the parties [STOCKPOT and STOCK
POT] are confusingly similar. The word marks are
phonetically identical and visually almost identical”); In
re Best Western Family Steak House, Inc., 222 USPQ 827, 827
Ser No. 76495506
5
(TTAB 1984) (“There can be little doubt that the marks
[BEEFMASTER and BEEF MASTER] are practically identical”).
Also, depicting the words in the mark on two lines instead
of one is a difference that many consumers are unlikely to
remember or to attach any trademark significance.
The second difference is the fact that applicant’s
mark is in stylized form while registrant’s mark is in
typed form. A typed drawing indicates that the party is
not limiting its mark to any particular style. “[T]he
argument concerning a difference in type style is not
viable where one party asserts rights in no particular
display. By presenting its mark merely in a typed drawing,
a difference cannot legally be asserted by that party.
[Applicant] asserts rights in [its mark] regardless of type
styles, proportions, or other possible variations. Thus,
apart from the background design, the displays must be
considered the same.” Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000) (“Registrations with typed
drawings are not limited to any particular rendition of the
mark and, in particular, are not limited to the mark as it
is used in commerce”); Phillips Petroleum Co. v. C. J.
Webb, Inc., 442 F.2d 1376, 1378, 170 USPQ 35, 36 (CCPA
Ser No. 76495506
6
1971) (The drawing in the application “shows the mark typed
in capital letters, and … this means that [the] application
is not limited to the mark depicted in any special form").
Therefore, registrant’s mark must be considered to include
a stylization that is similar to applicant’s.
Regarding the marks’ similarities, we note that the
pronunciation of the marks is identical. As explained
above, there are minor differences in the appearances of
the marks but these differences are overwhelmed by the fact
that both marks consist of the identical words in the
identical order, DIET SMART. Furthermore, inasmuch as the
words are the same, we are unable to discern any
significant differences in the meanings of the marks. It
is not clear why registrant’s mark when used in association
with its website would not mean that it is “smart for one’s
overall diet and health” as applicant suggests is the
meaning of its mark on its goods. Finally, the commercial
impression of the identical words would also be at least
very similar. “Without doubt the word portions of the two
marks are identical, have the same connotation, and give
the same commercial impression.” In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
Therefore, we conclude that this factor favors the
examining attorney’s position. See In re Dixie Restaurants
Ser No. 76495506
7
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
(Federal Circuit held that, despite the addition of the
words “The” and “Cafe” and a diamond-shaped design to
registrant’s DELTA mark, there still was a likelihood of
confusion). See also In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) (BIGG’S
(stylized) for grocery and general merchandise store
services found likely to be confused with BIGGS and design
for furniture). Not only does this factor favor a
determination of likelihood of confusion, but the “identity
of words, connotation, and commercial impression weighs
heavily against the applicant.” Id.
The next factor we discuss is whether the goods and
services of applicant and registrant are related.
Applicant’s goods are dietary supplements while
registrant’s services involve providing information in the
fields of fitness, food, dieting and exercise by means of
an Internet website. Clearly, inasmuch as applicant is
using its mark on goods and the registered mark is for
services, the goods and services are not identical.
It is a well settled principle of trademark law that
it is not necessary that the goods of the parties be
similar or competitive, or even that they move in the
same channels of trade to support a holding of
likelihood of confusion. It is sufficient for purposes
herein that the respective goods of the parties are
related in some manner, and/or that the conditions and
Ser No. 76495506
8
activities surrounding the marketing of the goods are
such that they would or could be encountered by the
same persons under circumstances that could because of
the similarity of the marks used therewith, give rise
to the mistaken belief that they originate from or are
in some way associated with the same producer.

In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
The record contains evidence that supports the
relationship between dietary supplements and providing
information about dieting. This evidence includes a
description of the Atkins diet that points out that in
“order to avoid health problems caused by vitamin
deficiencies during this period [of the Atkins diet],
vitamin and mineral supplements form an essential part of
this phase of the diet.”3 There are also several web pages
for “Atkins Diet Nutritional Products.” These products
include: Atkins Basic #3 (90 tablets) – “a comprehensive
vitamin, mineral, herbal and antioxidant supplement
specifically designed to support low-carb weight loss.”4
Another website, www.diet-i.com, provides diet information
about the Atkins diet online. The site also contains
information about dietary supplements. This site also

3 www.wikipedia.org.
4 Applicant points out that the “pages of the Atkins plan,
however, do not use the term ‘diet smart.’” Brief at 5. The
evidence was not submitted to show use of the mark but rather the
relationship between the goods and services.
Ser No. 76495506
9
offers diet information including “free information on
diets, weight loss diet programs like Weight Watchers,
Atkins, Zone, South Beach, diet pills, fad diets, and
general diet advice on weight reduction and good diet
nutrition.” This information indicates that there is a
relationship between website diet plans and nutritional
supplements and that a diet plan provider, such as Atkins,
may also be the source of dietary supplements.
While applicant points to some specific
characteristics of registrant’s website, to the extent that
these limitations are not contained in the identification
of goods, they do not limit our consideration of
registrant’s services. 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 [or
services] set forth in the application regardless of what
the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of
goods [or services] are directed”). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
Ser No. 76495506
10
likelihood of confusion must be decided on the basis of the
respective descriptions of goods” or services).
Furthermore, applicant points out that dietary
supplements “are packaged for sale on retail store shelves”
(Brief at 9). However, it has not limited its channels of
trade to retail store sales and we must consider that
applicant’s channels of trade include the Internet and
other reasonable trade channels for its goods. Schieffelin
& Co. v. Molson Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB
1989) (“[M]oreover, since there are no restrictions with
respect to channels of trade in either applicant's
application or opposer's registrations, we must assume that
the respective products travel in all normal channels of
trade for those alcoholic beverages”). We also add that
there is no evidence that purchasers of these goods and
services are sophisticated purchasers. Rather, purchasers
or users of these goods and services are likely to overlap
and they would include ordinary purchasers who are simply
interested in better nutrition and losing weight. While
these purchases may not be impulse purchases, they would
include purchasers simply exercising ordinary care in
buying vitamins and searching for diet, exercise, food, or
fitness information.
Ser No. 76495506
11
We find that prospective purchasers are likely to
believe that the sources of dietary supplements and an
Internet website that provides information in the fields of
fitness, exercise, food and dieting are likely to be
related or associated in some way.
One additional point that applicant makes (brief at
10-11) is that:
the number of marks employing the exact word “diet” as
part of a mark in Class 5 for dietary supplements at
the time of filing Applicant’s first response on March
1, 2004, equaled or exceeded 107. The number of marks
which included the exact term “smart’ as part of the
mark in Class 5 for dietary supplements equaled or
exceeded 40. Thus, no fewer than 147 marks were
pending or registered for dietary supplements which
include these commonly employed exact terms.

The examining attorney has objected to this “evidence.” In
its reply brief (p.2), applicant acknowledges that it did
not provide copies of the registrations and applications5
but applicant maintains that “it seems counterproductive to
burden the file with 200 to 300 copies of registrations and
applications for search results that a few keystrokes will
provide.” We reject applicant’s argument. We do not
consider new evidence submitted with appeal briefs. 37 CFR
2.142(d). Furthermore, we do “not take judicial notice of
third-party registrations, and the mere listing of them is
Ser No. 76495506
12
insufficient to make them of record.” In re Carolina
Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998). See also
In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983)
(“[W]e do not consider a copy of a search report to be
credible evidence of the existence of the registrations and
the uses listed therein”). Third, pending applications are
not probative evidence of others’ uses of a mark. Olin
Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981)
(“Introduction of the record of a pending application is
competent to prove only the filing thereof”). See also
Zappia-Paradiso, S.A. v. Cojeva Inc., 144 USPQ 101, 102 n.4
(TTAB 1964). Fourth, it is applicant’s responsibility to
submit the evidence that it believes supports its
arguments. “If an applicant has relevant information, it
is incumbent on applicant to make this information of
record.” In re Planalytics Inc., 70 USPQ2d 1453, 1457
(TTAB 2004) (“Applicant’s only response to this requirement
was to refer the examining attorney to its website.
Applicant’s curt dismissal of the requirement for
information by telling the examining attorney, in effect,
‘to look it up herself,’ is inappropriate”). Finally, even

5 It also did not provide any basic information about these
applications or registrations, such as the complete mark, the
goods, or the status.
Ser No. 76495506
13
if these registrations were properly of record, as “to the
strength of a mark, however, registration evidence may not
be given any weight.” Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992)
(emphasis in original). See also AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973) ("The existence of [third party] registrations
is not evidence of what happens in the market place or that
customers are familiar with them").
We have taken into consideration that the term “Diet”
is at least descriptive of dietary supplements and
providing information about diets and that “Smart” may have
a suggestive connotation. However, the marks DIET SMART
(stylized) and DIETSMART contain identical words and the
goods and services are related. Users of registrant’s
DIETSMART website concerning fitness, food, dieting, and
exercise who encounter the identical words used on dietary
supplements that are associated with dieting are likely to
believe that there is some association with the registrant.
Therefore, we conclude that there is a likelihood of
confusion in this case.
Decision: The examining attorney’s refusal to
register applicant’s mark DIET SMART (stylized) for
“dietary supplements” on the ground that it is likely to
Ser No. 76495506
14
cause confusion with the cited registered mark used in
connection with the identified services under Section 2(d)
of the Trademark Act is affirmed.