Leiner Health Services Corp.

Trademark Trial and Appeal Board

Sep 9, 2004

No. 75407763 (T.T.A.B. Sep. 9, 2004)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Leiner Health Services Corp.
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Serial No. 75407763
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Michael A. Painter for Leiner Health Services Corp.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
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Before Hanak, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Leiner Health Services Corp. (applicant) seeks to
register in typed drawing form NATURE’S ORIGIN for
“vitamins and dietary food supplements.” The intent-to-use
application was filed on December 18, 1997.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark ORIGIN previously
registered in typed drawing form for “vitamins, minerals
and other health food supplements consumed primarily for
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB
Mailed: 9/9/2004
Ser. No. 75407763
2
their vitamin or mineral content.” Registration No.
991,240.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In most likelihood of confusion analyses, the two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
However, in this case, we have a third key
consideration, namely, a detailed consent to allow
applicant to use and register NATURE’S ORIGIN for “vitamins
and dietary food supplements” signed by the owner of the
cited registration. Contrary to the Examining Attorney’s
assertion at page 2 of his Supplemental Brief, this is not
a “naked consent agreement.” A naked consent agreement is
where the registrant merely consents to the registration
of, and perhaps the use of, applicant’s mark with no
explanation as to why the registrant is of the view that
the contemporaneous use of its mark and applicant’s mark
would not result in a likelihood of confusion. A true
naked consent agreement is of minimal value to the
Ser. No. 75407763
3
applicant because such a naked agreement does not even
state that registrant is of the view that the
contemporaneous use of the two marks would not result in a
likelihood of confusion. For all the Board may know,
registrant may have signed such a true naked consent
agreement for, as an example, monetary consideration while
believing that confusion would occur.
Before reviewing this particular consent agreement, we
should note that our primary reviewing Court has on
numerous occasions demanded that this Board give “great
weight” to consent agreements which are not merely naked
consent agreements. Bongrain International v. Delice de
France, 811 F.2d 1479, 1 USPQ2d 1775, 1778 (Fed. Cir.
1987); Amalgamated Bank v. Amalgamated Trust & Savings, 842
F.2d 1270, 6 USPQ2d 1305, 1308 (Fed. Cir. 1988); In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.
Cir. 1993); and In re N.A.D. Inc., 754 F.2d 996, 224 USPQ
969 (Fed. Cir. 1985).
Considering the present consent agreement, registrant
agrees with applicant that “the marks are sufficiently
different in overall sound, meaning and appearance to
enable the public to distinguish the marks.” The fact that
the marks (NATURE’S ORIGIN and ORIGIN) are by no means
Ser. No. 75407763
4
“identical” is an important factor in giving weight to any
consent agreement. In re N.A.D. Inc., 224 USPQ at 971.
In addition, registrant makes the following statement
in the consent agreement: “As a result of the extensive use
of the respective trademarks and third-party composite
trademarks which include individual segments which are
similar in sight, sound and meaning to those of the parties
hereto, the public has become sophisticated in the
selection of such products and would not be likely to
believe that there is any connection between the trademarks
of [applicant and registrant] which have been in concurrent
use for over three years.” The extensive use of similar
third-party marks for goods identical to or closely related
to those of applicant and registrant is a point not
disputed by the Examining Attorney. Indeed, quite to the
contrary, the Examining Attorney made of record numerous
third-party registrations whose marks are similar to
applicant’s and registrant’s marks, and which were
permitted to be registered over registrant’s mark.
Given the fact that applicant’s mark and registrant’s
mark are by no means identical; the fact that there is no
dispute that there are a number of third-party marks which
are similar to registrant’s mark and applicant’s mark such
that the public has indeed become sophisticated in
Ser. No. 75407763
5
distinguishing them; and the fact that registrant is of the
firm belief that the contemporaneous use of its mark and
applicant’s mark is not likely to result in confusion, we
find that there exists no likelihood of confusion. To do
otherwise would be yet another “misguided effort” of the
Board to substitute its judgment for the judgment of those
most knowledgeable about the marketplace. In re Four
Seasons Hotel Ltd., 26 USPQ2d at 1071. As our primary
reviewing Court has admonished us, the “decisions of men
who stand to lose if wrong are normally more reliable than
those of examiners and judges … [such that] it can be
safely taken as fundamental that reputable businessmen-
users of valuable trademarks have no interest in causing
public confusion.” Amalgamated Bank, 6 USPQ2d at 1308
(original emphasis).
Decision: The refusal to register is reversed.