Longevity Network, Ltd.v.Joel D. Wallach

Trademark Trial and Appeal Board

Mar 23, 2004

No. 92030340 (T.T.A.B. Mar. 23, 2004)

Hearing: Mailed: 23 MAR 2004
12 NOV 2003 Paper No. 46
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Longevity Network, Ltd.
v.
Joel D. Wallach
_____
Cancellation No. 92030340
_____
Michael F. Maschio of Cowan, Liebowitz & Latman, P.C. for
Longevity Network, Ltd.
Michael A. Painter of Isaacman, Kaufman & Painter for Joel
D. Wallach.
______
Before Simms, Bottorff, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On April 21, 1998, the Patent and Trademark Office
issued Registration No. 2,152,309 to respondent, Joel D.
Wallach, for the mark AMERICAN LONGEVITY (typed) for goods
identified as “nutritional supplements for people” in
International Class 5. The registration contains an
allegation of a date of first use and a date of first use in
commerce of April 1997 and a disclaimer of the word
AMERICAN.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 92030340
2
On December 11, 2000, petitioner (Longevity Network,
Ltd.) filed a petition to cancel respondent’s registration
on the ground that “since as early as March 1994 and since
long prior to any first use date upon which Registrant can
rely, [petitioner] adopted and continuously used the mark
LONGEVITY for nutritional supplements, health and beauty
aids and video and audio cassettes in the field of health.”
Petition at 2. Petitioner alleges that respondent’s
registration “will cloud Petitioner’s title in and to the
LONGEVITY mark.” Id. Respondent denied the salient
allegations of the petition to cancel.1
The Record
The record consists of the following items: the file
of the involved registration; the trial testimony deposition
of petitioner’s Chief Executive Officer, James Song, with
accompanying exhibits; the trial testimony deposition
of an independent distributor of petitioner, Len Clemens,
with accompanying exhibits; the trial testimony deposition
of respondent’s “Chief Executive Officer,”2 Stephan Rhodes
Wallach, with accompanying exhibits; the trial testimony
deposition of respondent, with accompanying exhibits; the
discovery deposition of James Song, with accompanying
1 An oral hearing was held on November 12, 2003.
2 The witness described his position as: “I don’t have an
official title because this is a family-owned company, but
essentially I would be like the CEO of the company.” S. Wallach
dep. at 10.
Cancellation No. 92030340
3
exhibits, submitted by respondent under a notice of
reliance; and copies of responses to interrogatories,
requests for admissions, and respondent’s third-party
registrations submitted by the parties under notices of
reliance.
Priority
A party petitioning to cancel a federally registered
trademark must plead and prove that it has standing and that
there is a valid ground for the cancellation of the
registration. Young v. AGB Corp., 152 F.3d 1377, 47 USPQ2d
1752, 1754 (Fed. Cir. 1998) (“Section 14 has been
interpreted as requiring a cancellation petitioner to show
(1) that it possesses standing to challenge the continued
presence on the register of the subject registration and (2)
that there is a valid ground why the registrant is not
entitled under law to maintain the registration”) (internal
quotation marks omitted).
For standing, petitioner asserts its ownership of
common law trademarks and trade names.
Under the rule of Otto Roth, a party opposing
registration of a trademark due to a likelihood of
confusion with his own unregistered term cannot prevail
unless he shows that his term is distinctive of his
goods, whether inherently or through the acquisition of
secondary meaning or through “whatever other type of
use may have developed a trade identity.” Otto Roth &
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ
40, 43 (CCPA 1981). The Otto Roth rule is applicable
to trademark registration cancellation proceedings as
well.
Cancellation No. 92030340
4
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, 1041 (Fed. Cir. 1990) (full citation added).
While we find that there is evidence that petitioner’s
mark or trade name LONGEVITY has a suggestive connotation in
relation to dietary supplements, the evidence does not
support a finding that the mark is merely descriptive.
Therefore, petitioner has shown that is has standing and it
has set out a valid ground for cancellation, i.e.,
likelihood of confusion. Therefore, we proceed to the
discussion of priority.
Petitioner relies on its common law rights in the mark
and trade name LONGEVITY for nutritional supplements, health
and beauty aids and video and audio cassettes in the field
of health. Respondent’s registration is presumed valid, and
a petitioner seeking to cancel a registration must rebut
this presumption by a preponderance of the evidence.
Cerveceria Centroamericana S.A. v. Cerveceria India Inc.,
892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) ("[I]n
a [trademark registration] cancellation for abandonment, as
for any other ground, the petitioner bears the burden of
proof. Moreover, the petitioner's burden is to establish
the case for cancellation by a preponderance of the
evidence"); Martahus v. Video Duplication Services Inc., 3
F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
Cancellation No. 92030340
5
The application that matured into respondent’s
registration was filed on April 2, 1997. That date is
significant because respondent can rely on this date for his
priority, and in order to prevail on priority, petitioner
would have to establish an earlier date. 15 U.S.C.
§ 1057(c). Intersat Corp. v. International
Telecommunications Satellite Organization, 226 USPQ 154, 156
n. 5 (TTAB 1985) (“The earliest date of first use upon which
Intelsat can rely in the absence of testimony or evidence is
the filing date of its application”).
Initially, petitioner submitted evidence of its use of
the mark and trade name LONGEVITY NETWORK. See LONGEVITY
NETWORK’S COTURA™ COLLECTION Skin, Body & Hair Care Catalog”
with a copyright date of 1994. Song Ex. 3, Song dep. at 29-
31. Other 1994 brochures (Song. Ex. 4, Song dep. at 36;
Song Ex. 5 and Song dep. at 39) contain the heading
“LONGEVITY NETWORK Making Positive Changes in People’s
Lives” and “People helping each other succeed – that’s
Longevity Network.” Opposer has also included a copy of its
1994 “Longevity Network’s Nutritional Products Catalog.”
Song Ex. 8, Song dep. at 43.
The evidence clearly establishes that petitioner was
using its mark LONGEVITY NETWORK prior to respondent’s
priority date of April 2, 1997.
Cancellation No. 92030340
6
However, in this case, petitioner seeks to cancel
respondent’s registration based on its claim that it has
used the mark LONGEVITY alone prior to respondent’s priority
date. In the petition to cancel (p. 2), petitioner alleges
that it has used its LONGEVITY mark since at least as early
as March 1994. Petitioner has submitted the following
evidence to show its use of the mark LONGEVITY. On page 4
of its brochure (Song Ex. 6), in a testimonial about
petitioner, a person is quoted as saying: “You look and
pray a lifetime for a company with the qualities that
Longevity has. Longevity compares to most other companies
the way a Mercedes compares to a Hyundai.” Song dep. at 40
(Brochure distributed in 1994). In a 1995 edition of its
“Longevity Network News” (Song Ex. 10 at 106), a caption
refers to “Longevity CEO Jim Song”) and (120) an ad refers
to “Longevity’s Enhanced Compensation Plan: The Power to
Strive in ’95.” The October/November 1995 edition of MLM
Insider Magazine (Song Ex. 14 at 4) lists petitioner as
“Longevity” in a list of “The Best Companies in Network
Marketing for 1995.”
There is other evidence of the use of the term
“Longevity” alone to refer to petitioner. For example, an
advertising brochure prepared by Len Clemens, a distributor
of Longevity Network with its approval (Clemens dep. at 96)
reads: “The FreeStyles Network and Longevity have combined
Cancellation No. 92030340
7
forces to create one of the most dynamic and lucrative
opportunities in years.” Clemens Ex. 41 (emphasis in
original). The brochure also contains the following
statements: “Longevity delivers many of the most popular
products…,” “Each product was designed and formulated
exclusively by Longevity,” and “The friendly, professional
team at LONGEVITY (headquartered in Henderson and Las Vegas,
Nevada) stands ready to assist you.” Clemens Ex. 41. This
brochure was created in 1995. Clemens dep. at 96.
Clemens dep. at 96.
Another exhibit from 1995 was an advertisement of
petitioner “Introducing Longevity’s VoiceLink™ Communication
Center” which is “Longevity’s quickest channel of
communication” and it requested interested parties to “fill
in the subscription form below and send it to Longevity via
Fax…” Clemens dep. at 99 and Ex. 42. Additionally in 1995,
an advertising newspaper entitled Millionaires in the Making
contained the following headline and statements: “Longevity
unveils ‘Devastating’ Multi-Match(SM) system,” “Through
Longevity, a generous slice of it can be yours,” “Fill out
section ‘A’ of the Longevity Quick Start Application Form,”
and “Longevity Product Line.” Clemens dep. at 101 and Ex.
43). Another Millionaires in the Making from 1996 contains
such statements as “Yes the Longevity Business Opportunity
sounds excellent,” “Impressive Longevity Product Line,”
Cancellation No. 92030340
8
“recorded message from Longevity CEO & President,” and “For
more detailed information on the Longevity compensation
plan…” Clemens dep. at 103 and Ex. 44.
Petitioner also submitted evidence that it marketed
dietary supplements products under the mark LONGEVITY’S.
Song dep. at 87 and Ex. 19; See also Song Ex. 23. However,
we are not persuaded by this evidence. These products were
named VITAMIN PLUS, CARDIOGEVITY, RAINFOREST DUET, and
COLLODIAL VERA. Id. While Exhibit 19 indicates that the
brochures of record were “Rev. 9/97,” Mr. Song testified
“that was the way the products were labeled” and that “was
the way it was sold during that period.” Song dep. at 87.
See also dep. at 97. The period that Mr. Song referred to
was the introduction of Vitamin Plus in 1995, Cardiogevity
in 1994, Rainforest Duet in 1995, and Colloidal Vera in 1994
or 1996. Id. Mr. Song testified that its products were
sold in the United States and Korea (dep. at 87 and 97).
While this testimony during direct examination was
straightforward, on cross-examination, the witness was less
certain. Referring to Exhibit 23, the witness was asked:
“Q. When did you start using that style. A. I believe in
’96. Q. ’96? A. Or ’97. I’m not sure.” Song dep. at 157.
Also, on cross-examination, the witness was asked:
Q. Can you identify any exhibit that you produced
today which shows use of that trademark that is
Longevity, the possessive form of it, prior to
1997?
Cancellation No. 92030340
9
A. I think we’ve seen “longevity” in its various
forms used throughout the exhibits that we showed
since we launched the company in ’94. That’s
basically what we did this morning.
Song dep. at 158.
When the witness was asked if there was “anything that
you produced today which shows a package which bears the
Longevity’s trademark and used prior to 1997,” his response
was very general (“I believe throughout the exhibits, we’ve
shown use of ‘Longevity’ in its various forms”). Song Dep.
at 159.
“[O]ral testimony, if sufficiently probative, is
normally satisfactory to establish priority of use in a
trademark proceeding.” Powermatics, Inc. v. Globe Roofing
Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965).
However, such testimony should “not be characterized by
contradictions, inconsistencies and indefiniteness but
should carry with it conviction of its accuracy and
applicability.” B.R. Baker Co. v. Lebow Bros., 150 F.2d
580, 66 USPQ 232, 236 (CCPA 1945). In this case, the
testimony regarding the use of the mark on its goods prior
to 1997 is too equivocal to meet this test.
Therefore, the final question concerning priority is
whether petitioner has demonstrated trade name use or use
analogous to trademark use prior to respondent’s priority
date. At this point, we consider evidence of petitioner’s
use of the term “Longevity” to refer to itself and whether
Cancellation No. 92030340
10
others use the term to refer to petitioner. See National
Cable Television Association Inc. v. American Cinema Editors
Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1428 (Fed. Cir. 1991)
(“The evidence is profuse that Editors has publicly been
known as ACE since prior to 1979, as attested to by members
of Editors, as well as shown by newspaper articles and third
party correspondence where the name American Cinema Editors
has routinely been shortened to ACE”). Furthermore, we can
consider that “abbreviations and nicknames of trademarks or
names used only by the public [can] give rise to protectable
rights in the owners of the trade name or mark which the
public modified.” Id. (emphasis in original).
The evidence of the use of the term “Longevity” in
petitioner’s advertising, in promotional literature by its
distributor, and in testimonials discussed above convinces
us that it has established priority of use of the word
LONGEVITY in relation to its business involving dietary
supplements and related products prior to 1997.
Likelihood of Confusion
The next question is whether there is a likelihood of
confusion. 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. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
Cancellation No. 92030340
11
567 (CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
The first factor we consider is the similarities or
dissimilarities in the marks. We have already determined
that petitioner has shown that it has priority regarding its
trade name LONGEVITY. Respondent’s registration is for the
mark AMERICAN LONGEVITY. Respondent has disclaimed the word
AMERICAN. The addition of a geographic term to another term
does not normally avoid a likelihood of confusion. Wella
Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ
419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
likely to be confused with CONCEPT for hair care products);
Surf Line Hawaii Ltd. v. Ahakuelo, 13 USPQ2d 1975, 1979 (D.
Haw. 1989) (JAMS and HAWAIIAN JAMS, both for T-shirts, held
to be confusingly similar); Harry Siegal Co. v. M & R
International Mfg. Co., 4 USPQ2d 1154, 1161 (TTAB 1987)
(Despite finding that “the term ‘CHIC’ is commonly used as a
descriptive term… ‘L.A. CHIC’ does not so differ from the
mark ‘CHIC’ as to preclude likelihood of confusion”).
In another case, the board was faced with a similar
issue of whether the marks GUARDIAN and SCOTT GUARDIAN were
confusingly similar for various, medical, hospital and
sickroom supplies. Guardian Products Company v. Scott Paper
Company, 200 USPQ 738 (TTAB 1978). The board found that
“‘Guardian’ is no doubt a laudatory and hence a suggestive
Cancellation No. 92030340
12
term that is or may border on the category of ‘weak’ marks.”
200 USPQ at 740.
Applicant has incorporated within its mark the entire
mark of opposer, namely, "GUARDIAN" and merely added
the name "SCOTT" which is nothing more than a house
mark of applicant. While such house mark cannot be
ignored in evaluating applicant's mark, we cannot lose
sight of the fact that marks generally identify an
anonymous source, and the resemblance between "SCOTT
GUARDIAN" and "GUARDIAN" is such that to those who
notice the term "SCOTT," the association may carry over
to opposer's mark as well as that of applicant. Thus,
we conclude that applicant's mark "SCOTT GUARDIAN" is
confusingly similar to opposer's mark "GUARDIAN."
200 USPQ at 740.
In this case, the term “longevity” is not without
meaning in the field of dietary supplements. See
Petitioner’s brief at 33 (“Longevity’s name and mark is
‘suggestive’ when used in connection with supplements and
beauty products”); Song Ex. 22, p262 (Prescription for
Longevity: Eating right for a long life), Song Ex. 25, P437
(“Because Longevity is about all the right things and
because you decide the long-term success of your business
and your family. We invite you to contact us to start your
longevity in health, family, and business”) (emphasis
omitted); Clemens dep. at 122 (“Q. Does the word [Longevity]
have any relevance to a feature or characteristic of
nutritional supplements? A. Yes. They help you live a
long, healthy life”); and S. Wallach Ex. 7 at 1 (“American
Longevity … These are the products of the 21st century – The
Cancellation No. 92030340
13
products that will help you achieve your potential for
maximum longevity”).
Although we agree with respondent that the word
“longevity” is hardly a unique or arbitrary term when used
with nutritional supplements, we do not find that the term
is without any trademark significance. As the cases above
indicate, while a mark may not be strong, a junior party
normally cannot appropriate another party’s mark, add
disclaimed matter to it, and avoid a finding that the marks
are similar. Therefore, we conclude that the marks are
similar.
Next, we consider whether the goods of the parties are
related. The goods in respondent’s registration are
identified as simply “nutritional supplements for people.”
Petitioner also markets nutritional supplements for people
in association with its trade name. Song Dep. at 17 (“[W]e
launched out products in early 1994 … approximately 40 to 50
products, nutritional supplements …). We, therefore,
consider that both petitioner and respondent are in the
nutritional supplement business.
While the similarity of the marks and the relatedness
of the goods are important factors, we now consider other
factors that the parties have raised regarding the question
of likelihood of confusion. Here, respondent argues that
“Petitioner’s trademark is a weak mark which is entitled to
Cancellation No. 92030340
14
only limited protection.” Respondent’s Brief at 38.
Respondent supports his argument by relying on copies of
third-party registrations that contain the word “longevity”
and evidence of other nutritional supplements or health–
related products that respondent’s witness purchased that
use the word “longevity.” Respondent points to several
products distributed by a company called Soaring Eagle
Ventures. Respondent’s witness, S. Wallach, identified
himself as a former distributor for this company.3 The
advertising brochure promoted a product called LONGEVITY
RICH – The Missing Link to Beautiful Hair & Skin.4 The
brochure was apparently distributed at least by 1995.
S. Wallach Ex. 2.5 Another brochure distributed “preventive
health & personal care products” under the mark OXYRICH with
the slogan “The Missing Longevity Link.” S. Wallach, Ex. 3.
A third product distributed by Soaring Eagle Ventures was
marketed under the slogan “The Missing Longevity Link” at
least as early as 1995 for a product called RAINFOREST
TODDY, a dietary mineral supplement. S. Wallach dep. at 20,
Ex. 4. This product also contained the slogan “Achieving
your genetic potential for Good Health & Longevity.” Yet
3 The witness also testified that “now I’m a board member of
them, I guess.” S. Wallach dep. at 95.
4 Soaring Eagle Ventures apparently owns Registration No.
2,111,266 for LONGEVITY RICH and design for mineral-based natural
cosmetics. Respondent’s Notice of Reliance, Paper No. 28.
5 The witness arrived at this date because the brochure listed
the witness’s business with an Oregon address. The witness
Cancellation No. 92030340
15
another product, SPORTS TODDY, a dietary mineral supplement,
was marketed with a brochure that contained the slogans “The
Missing Sports Longevity Link” and “The Ultimate Longevity
Fuel.” S. Wallach Ex. 5. See also S. Wallach Exhibits 38
and 39 (Longevity Rich conditioner and hand and body
lotion).6
In its Reply Brief (page 1), petitioner argues that the
“Soaring Eagle Company’s use of the term Longevity is
distinguishable as the term is not used as a source
identifier.” We cannot agree that none of the Soaring Eagle
uses are source identifiers. Even if they were not source
identifiers, the fact that other parties use the term to
describe nutritional supplements and other products that
petitioner claims it markets is relevant in assessing
whether petitioner’s mark is a strong and distinctive term.
Respondent has also submitted status and title copies
of numerous registrations for various marks containing the
word “Longevity.” See Registration No. 1,985,718 (EVERY MAN
II FACTORS FOR LONGEVITY for dietary supplements); No.
1,986,810 (E’OLA SMART LONGEVITY and design for health food
supplement); No. 2,091,072 (MEN’S LONGEVITY for dietary and
nutritional supplements); No. 2,102,291 (LONGEVITY SCIENCE
for dietary supplements); No. 2,172,909 (WOMEN’S LONGEVITY
operated his business in Oregon until he moved by 1996.
S. Wallach dep. at 18.
Cancellation No. 92030340
16
for dietary and nutritional supplements); No. 2,197,549
(SECRET OF LONGEVITY for dietary supplements); No. 2,198,858
(LONGEVITY CRYSTAL for herbal extract dietary supplements);
No. 2,242,040 (BODYONICS LONGEVITY for dietary and
nutritional supplements); No. 2,258,810 (LONGEVITY SPA for
vitamins and nutritional food supplements); and Nos.
2,341,135 and 2,341,136 (LIQUID LONGEVITY and LIQUID
LONGEVITY PLUS for nutritional supplements). While we agree
that third-party registrations cannot be used to prove that
a mark is weak and to justify the registration of another
confusingly similar mark, third-party registrations can be
used as a form of dictionary to illustrate how the term is
perceived in the trade or industry. In re J.M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird party
registrations are of use only if they tend to demonstrate
that a mark or a portion thereof is suggestive or
descriptive of certain goods and hence is entitled to a
narrow scope of protection. Used in this proper, limited
manner, ‘third party registrations are similar to
dictionaries showing how language is generally used.’ 1
McCarthy, Trademarks and Unfair Competition, § 11:26 at p.
516 (2d ed. 1984)”).
Respondent also included numerous exhibits of various
dietary or nutritional supplements and other products that
6 These products are still being sold. See S. Wallach dep. at
Cancellation No. 92030340
17
use the word “longevity” on the label. See S. Wallach
Exhibits 25 and 27 (Oasis Longevity Signal A.M. and Oasis
Longevity Signal P.M. dietary supplements); Exhibits 28, 29,
30, and 31 (Longevity 4 dietary supplement); Ex. 32 (Super
Nutrition Longevity Easy to Swallow Multi-Vitamin); Ex. 33
(Longevity 2000 nutrition program7); Ex. 34 (Voyager
Imperial Q1 Longevity Elixir); and Exhibits 35 and 36 (MDR
Longevity Antioxidants8).
The witness, Stephan Wallach, purchased these products
after searching “longevity and nutrition” or “longevity and
minerals and vitamins” on the Internet. S. Wallach dep. at
72. Finally, petitioner acknowledges that “there are other
companies in the nutritional field that use the word
Longevity on their product labels.” Reply Brief at 1, n.1.
Petitioner argues that its mark is strong because it
has 50,000 distributors9 and it “has achieved substantial
success and received substantial attention in the industry
publications.” Petitioner’s Brief at 28. We cannot agree
that petitioner’s mark is a particularly strong mark or
name. First, most of the evidence of record relates to the
mark LONGEVITY NETWORK. Petitioner has not pleaded this
80.
7 This product contained, inter alia, a liquid mineral dietary
supplement. S. Wallach dep. at 74.
8 This product formulation included, inter alia, antioxidants,
vitamins, and minerals. S. Wallach dep. at 77.
9 Petitioner sells its products “through the industry of network
market[ing]. And network marketing is a form of distribution
Cancellation No. 92030340
18
mark in its petition to cancel. However, when we balance
petitioner’s evidence of strength and respondent’s evidence
of weakness, we conclude that it is not entitled to a
presumption that it is either a particularly strong or weak
mark. While we have evidence that products using the term
“Longevity” are sold on the Internet, we have no evidence of
the nature and volume of these sales. The mere fact that
there are other uses of a mark does not per se make the mark
under consideration a weak mark. Carl Karcher Enterprises
Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB
1995) (“[T]he pictures of these restaurants tend to indicate
that the operations are small and local in nature”).
Petitioner also argues that both petitioner and
respondent use their marks on nutritional supplements that
are distributed through network marketing. Reply Brief at
4. Certainly, respondent’s identification of goods,
nutritional supplements for people, would include
“nutritional supplements for people distributed through
network marketing.” Obviously, we must consider the goods
as they are identified in the registration. In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997) (punctuation in original), quoting, Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987) (“‘Likelihood of
that uses word-of-mouth advertising to get out information about
Cancellation No. 92030340
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confusion must be determined based on an analysis of the
mark applied to the … services recited in applicant’s
application vis-à-vis the … services recited in [a] …
registration, rather than what the evidence shows the …
services to be’”); Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). We also consider that the goods
are sold in all normal channels of trade. 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”). Here, petitioner and respondent do
distribute their products by means of independent
distributors. Song dep. at 13 (“Longevity sells through the
industry of network market[ing]”); S. Wallach Ex. 8, p. 29
(Building your own American Longevity Business should be fun
… Our distributors are referred to as ‘Team Members’ or
‘Associates’”). The mere fact that both petitioner and
respondent distribute their products by means of network
marketing does not make the other evidence of Longevity uses
our products.” Song dep. at 13.
Cancellation No. 92030340
20
irrelevant. Respondent’s registration is not limited to
distributing its goods by means of network marketing.
However, the fact that petitioner’s and respondent’s
products are actually distributed in the same channel of
trade (multi-level marketing) emphasizes that the
overlapping channels of trade are not theoretical in this
case.
Petitioner also argues that respondent’s “bad faith
disregard of Petitioner’s prior rights and attempt to trade
on the good [will] associated with Petitioner’s LONGEVITY
mark compels a finding of likelihood of confusion.” Reply
Brief at 8. We note that when petitioner’s counsel sent a
“cease and desist” letter on May 12, 1997, it did not refer
to a “Longevity” mark. The letter referred only to
Longevity Network. Song Ex. 28. Petitioner’s argument that
respondent is guilty of bad faith by using his mark AMERICAN
LONGEVITY is undercut by the fact that petitioner only
informed respondent of its mark LONGEVITY NETWORK not
LONGEVITY.
Petitioner also argues that there has been actual
confusion between petitioner’s and respondent’s marks. It
submitted evidence of a “survey” conducted by Mr. Clemens
“with a total of 873 respondents through his network
marketing company website, which found that there was great
confusion as to whether Joel Wallach, the Registrant and
Cancellation No. 92030340
21
owner of American Longevity, was associated with Longevity
or American Longevity.” Petitioner’s Brief at 35.
Respondent objects to this testimony on numerous grounds
including that Mr. Clemens is unqualified to render an
expert opinion, the methodology of the survey is flawed, and
the results are unreliable. We agree with respondent to the
extent that we can give the survey little, if any, weight.
Mr. Clemens “works almost exclusively as a distributor for
Longevity Network.” Clemens Ex. 33 at 3. He has “a two-
year degree from what was called Heald Business College” and
he has taken a course in Probability in Statistics. Clemens
dep. at 127-28. The witness indicated that he had no
training or background in developing consumer surveys in
likelihood of confusion cases. Clemens dep. at 130-35; See,
e.g., 135 (“Q. Do you have any understanding of the
standards which are generally required to be met by a
consumer survey in order to be considered as evidence on the
issue of likelihood of confusion in trademarks? A. No”).
The “survey” petitioner has submitted was really an
Internet poll or “what I call a network marketing IQ test or
MLM IQ test.” Clemens dep. at 66. Participants were
instructed that: “If you don’t know an answer to a question
you are better off just taking your best guess and quickly
moving on.” Clemens Ex. 35. Anyone who visited the
witness’s website could take the test and there was no
Cancellation No. 92030340
22
attempt made to exclude participants who were not potential
purchasers of nutritional supplements. Even more damaging
to the survey’s persuasiveness is a review of the critical
question on which petitioner relies (#25):
Which of the following companies was founded by “Doc
Wallach?”
A. Youngevity
B. American Longevity
C. Biogevity
D. Longevity Network
E. None of the above
Clemens Ex. 40.
The results of the poll were A. 13.4%, B. 14.2%, C.
11.8%, D. 27.5%, and E. 4.1%. Id. The question simply asks
what company an individual started. It does not use the
trade name petitioner has pled “Longevity” and it does not
compare the marks, but it simply tries to determine what
company was founded by a particular individual. Almost
equal percentages of respondents (13.4% and 11.8%) indicated
that they thought Youngevity and Biogevity were founded by
Doc Wallach as thought American Longevity (14.2%) was.
Because of the lack of screening of participants and the
vagueness of the question, among other things, this survey
offers little support for petitioner.
Petitioner’s other evidence of actual confusion
consists of Mr. Clemens’ summary of a statement by the owner
of a radio station. Song. Ex. 30 and Clemens dep. at 48-52.
The statement is hearsay and it does not meet the
Cancellation No. 92030340
23
requirements of a business record. We add that, even if it
were considered, it simply indicates that two callers, after
hearing a radio advertisement that included a toll free
number for one company, inexplicably called another number
for a different company.
Mr. Clemens did testify that he spoke with one caller
who thought that American Longevity products were available
from Longevity Network. Clemens. dep. at 52-55. If it is
otherwise reliable, employee testimony on the subject of
misdirected calls can be admissible. Armco, Inc. v. Armco
Burglar Alarm Co., 693 F.2d 1155, 217 USPQ 145, 149 n. 10
(5th Cir. 1982) (Testimony of plaintiff’s employees about
purchasers attempting to reach defendant admissible because
it was either not used "to prove the truth of the matter
asserted" (Fed. R. Evid. 801(c)) or was relevant under the
state of mind exception (Fed. R. Evid. 803(3))); CCBN.com
Inc. v. c-call.com Inc., 53 USPQ2d 1132, 1137 (D.C. Mass.
1999) (“[S]tatements of customer confusion in the trademark
context fall under the ‘state of mind exception’ to the
hearsay rule. See Fed. R. Evid. 803(3)”). Therefore, we
will consider Mr. Clemens’ testimony of a misdirected phone
call that he received. However, we will not consider
Mr. Clemens’ vague testimony concerning general discussions
Cancellation No. 92030340
24
he had with people he was trying to recruit to be network
marketers. Clemens dep. at 56-57.10
Regarding the sophistication of purchasers, petitioner,
who had previously argued that its products are sold only
through independent distributors in the much more limited
network marketing area through its independent
distributors,11 now argues that the “average consumer would
exercise as much care in purchasing the nutritional
supplement goods as they would in selecting a snack food.
Moreover, the low price would make it likely that consumers
would buy Longevity’s and registrant’s goods on an impulse.”
Brief at 32. A review of petitioner’s and registrant’s
catalogs (Song Exhibits 8 and 29) hardly supports a finding
that potential purchasers make impulse purchases.12
Respondent argues that the “ultimate consumers of products
designated by AMERICAN LONGEVITY trademark include all
members of the public who purchase nutritional supplements
and personal care products at conventional retail outlets”
(Respondent’s Brief at 13). Respondent maintains that these
10 Song Ex. 31 consisting of letters in foreign characters (Korean
distributors according to Song. Dep. at 144; Japanese according
to the Reply Brief at 11) is simply irrelevant. Whether there is
confusion of the marks in other countries is not relevant to this
proceeding.
11 Indeed, petitioner maintains that it “is not concerned with
products sold through conventional retail channels, as those
products do not compete with Longevity’s products.” Petitioner’s
Brief at 17.
12 Normally, sales of items by catalog would seem to be a more
thoughtful process than purchasing a snack item at a convenience
store.
Cancellation No. 92030340
25
consumers would be discriminating purchasers. Purchasers of
dietary supplements would unlikely be impulse purchasers.
Accord Stouffer Corp. v. Health Valley Natural Foods Inc., 1
USPQ2d 1900, 1902 ((TTAB 1986) (“[E]ven in the hustle and
bustle atmosphere of a supermarket, diet-conscious
purchasers of these prepared entrees are a special class of
purchasers who may be expected, at least, to examine the
front of the packages in order to determine what kind of
entree is contained therein and its caloric content”).
While there is no direct evidence on the sophistication of
the consumers, there is no basis to conclude that these
purchasers would be unsophisticated or impulse purchasers.
We now must balance the facts on the issue of
likelihood of confusion. We start with the mark and trade
name, and, as we have previously noted, they are similar.
They both contain the same word, Longevity, to which
respondent has added the disclaimed word, American.
Concerning the goods, respondent’s goods are nutritional
supplements for people while petitioner’s trade name is also
associated with similar and identical goods. Therefore, the
goods and trade name use are related. We have also found
that petitioner’s trade name is neither a particularly
strong or weak mark. In addition, there have been only a
Cancellation No. 92030340
26
few isolated instances that might be considered actual
confusion.13
When we consider all of the factors in this case, we
conclude that petitioner has met its burden by a
preponderance of the evidence. When terms as similar as
LONGEVITY and AMERICAN LONGEVITY are used with or associated
with nutritional supplements, confusion is likely.
Decision: The petition to cancel is granted.
13 While the parties have co-existed for several years, we cannot
make any contrary assumption that this supports a finding that
confusion is not likely because we do not have much evidence of
the extent of respondent’s presence in the market place. The
excerpt (S. Wallach dep. at 147-48) from the testimony of
respondent’s “CEO” is illustrative.
Q. When American Longevity began its operations in 1997, how
many associates did it have?
A. I don’t know.
Q. How about in 1998, how many associates were there?
A. If you are talking about associates, specific, apart from
preferred customers –
Q. Yes.
A. – I don’t know.
Q. Do you know how many preferred customers it had in 1998?
A. No.
Q. How about in 1999?
A. I have no way of knowing.
Q. But you were able to give an estimate of how many
associates there are today; is that correct?
A. Only an estimate of, an approximation of percentagewise.