Natrol, Inc.v.NaturexDownload PDFTrademark Trial and Appeal BoardFeb 27, 2013No. 91198368 (T.T.A.B. Feb. 27, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: February 27, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ Natrol, Inc. v. Naturex _____ Opposition No. 91198368 _____ Julie B. Seyler of Abelman Frayne & Schwab for Natrol, Inc. John S. Egbert of Egbert Law Offices PLLC for Naturex. _____ Before Grendel, Kuhlke and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Naturex (“applicant”) filed an application to register the mark NATROX, in standard character form, for the following goods, as amended:1 Chemicals as raw materials for cosmetics and the food and pharmaceutical industries, mainly comprising plant extracts; active chemical ingredients used in cosmetic 1 Application Serial No. 79076683 filed October 1, 2009. The application is a request for protection under Section 66(a) of the Trademark Act of 1946, 15 U.S.C. § 1144f(a). Opposition No. 91198368 2 formulation; mineral salts, namely, magnesium salts, in Class 1; and Soaps; perfumes; cosmetics; essential oils; odoriferous substances, namely, body sprays used as personal deodorants and as fragrance, perfumery; cosmetics in galenic form and mainly containing plant extracts, not for medical purposes; plant and herb extracts sold as components of cosmetics for beauty and skin, body, facial, hair or nail care, in the form of capsules, tablets, ampules, yeast, powders, bars, creams or beverages, in Class 3. Natrol, Inc. (“opposer”) opposed the registration of applicant’s mark on the ground of likelihood of confusion pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Specifically, opposer alleged that applicant’s mark NATROX when used in connection with the goods identified in the application so resembles opposer’s mark NATROL used in connection with dietary supplements as to be likely to cause confusion. Opposer pleaded ownership of the following registrations: 1. Registration No. 1532608 for the mark NATROL, in typed drawing form, for “food supplements, namely, supplements comprising in whole or part minerals, vitamins, green food, fibers and herbs,” in Class 5;2 2. Registration No. 2252985 for the mark NATROL and design, shown below, for a “full line of herbal, food, and dietary supplements, vitamins and minerals,” in Class 5;3 2 Registered April 4, 1988; renewed. 3 Registered June 15, 1999; renewed. Opposition No. 91198368 3 3. Registration No. 2906488 for the mark NATROL and design, shown below, for a “full line of dietary supplements,” in Class 5;4 4. Registration No. 2714293 for the mark NATROL COMPLETE BALANCE and design, shown below, for “dietary supplements,” in Class 5;5 5. Registration No. 3184411 for the mark NATROL and design, shown below, for “dietary supplements,” in Class 5;6 and 6. Registration No. 3320964 for the mark NATROL HIGH EFFERVESCENT, in standard character form, for “dietary supplements not 4 Registered November 30, 2004; Sections 8 and 15 affidavits accepted and acknowledged. 5 Registered May 6, 2003; Sections 8 and 15 affidavits accepted and acknowledged. 6 Registered December 12, 2006. Opposition No. 91198368 4 marketed primarily as diary or product substitutes,” in Class 5.7 Opposer disclaimed the exclusive right to use the word “Effervescent.” Applicant denied the salient allegations in the notice of opposition. The Record The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), applicant’s application file. In addition, opposer introduced the following testimony and evidence: 1. Copies of opposer’s pleaded registrations printed from the electronic records of the U.S. Patent and Trademark Office showing the status of and title to the registrations; 2. Notice of reliance on Internet materials. See Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010). a. Excerpts from opposer’s website; b. An article posted on The New York Times website (newyorktimes.com) (December 14, 2011) entitled “Beauty by the Bite”; c. An article posted on The New York Times website (February 22, 2012) entitled “Enzymes Try to Grab the Spotlight”; d. Third-party websites to show the commercial relationship of the the goods; 3. Notices of reliance on the following items: 7 Registered October 23, 2007. Opposition No. 91198368 5 a. Applicant’s responses and supplemental responses to opposer’s first set of interrogatories; b. Third-party registrations to show the commercial relationship of the goods; and 4. Testimony deposition of Lisa Sheppard, opposer’s Senior Director of the Natrol Brand. Applicant did not introduce any testimony or evidence during its testimony period, nor did applicant file a brief. Standing As opposer has properly made its pleaded registrations of record, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (C.C.P.A. 1982). Priority As opposer’s pleaded registrations are of record, Section 2(d) priority is not an issue in this case as to the marks and the goods covered by the registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108, 110 (C.C.P.A. 1974). Opposer contends that it labels plant extracts and mineral salts, namely, magnesium salts under the NATROL mark. However, these products are not encompassed by its pleaded registrations and, therefore, opposer must introduce testimony regarding its prior use of NATROL to identify those products. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Opposition No. 91198368 6 Cir. 2002) (opposer must prove that it has a proprietary interest in its mark obtained prior to the filing date of applicant’s application); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (a party may establish its own prior proprietary rights in a mark through ownership of a prior registration, actual use or through use analogous to trademark use). Applicant, on the other hand, may rely without further proof upon the filing date of its application as a “constructive use” date for purposes of priority. See Trademark Act § 7(c) (contingent upon registration); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36 USPQ2d 1328, 1332 (TTAB 1994). The subject application was filed on October 1, 2009. The only testimony regarding opposer’s first use of its mark is from Lisa Sheppard who testified that “Natrol was founded in 1980, and it has been in use since 1980.”8 Ms. Sheppard described opposer’s business as follows: Natrol is a company that manufactures and sells nutrition products including what are sometimes described as nutraceuticals as well as cosmecueticals, which would be a nutrition product that is targeted toward personal care, as well as sports nutrition products and teas.9 Oral testimony, if sufficiently probative, may prove priority of use. Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). Oral testimony regarding the first use of a party’s mark should be based on personal knowledge and be clear and specific. See National Bank Book Co. v. Leather Crafted Products, Inc., 218 USPQ 826, 828 (TTAB 1993). See also 8 Sheppard Dep., p. 9. 9 Sheppard Dep., p. 8 Opposition No. 91198368 7 Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral testimony may be sufficient to establish both prior use and continuous use when the testimony is proffered by a witness with knowledge of the facts and the testimony is clear, convincing, consistent, and sufficiently circumstantial to convince the Board of its probative value); GAF Corp. v. Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may establish prior use when the testimony is clear, consistent, convincing, and uncontradicted). Ms. Sheppard began working for opposer in 2005.10 She did not testify regarding the basis of her knowledge about the use of NATROL to identify plant extracts and magnesium salts prior to that time. Moreover, Ms. Sheppard did not directly testify as to when opposer began using the mark on plant extracts and magnesium salts. Her testimony regarding the first use of NATROL on plant extracts and magnesium salts is not clear and specific because the testimony does not reference those products; the testimony merely references opposer’s use of NATROL in general terms since 1980. The testimony of Ms. Sheppard does not clearly indicate when opposer began using NATROL in connection with plant extracts and mineral salts. See H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1722-23 (TTAB 2008) (testimony that mark was used on a wide variety of clothing was not specific enough with respect to camisoles “to persuade us that opposer used its mark ONE TRUE FIT in connection with camisoles prior to the filing date of applicant’s application.”). In view thereof, opposer failed to establish its priority for 10 Sheppard Dep., p. 7. Opposition No. 91198368 8 the goods in Class 1, which is a necessary element of any claim under Section 2(d) of the Trademark Act. Without priority, opposer cannot rely on its common law use of plant extracts and mineral salts to prevail in the opposition against the goods in Class 1. Likelihood of Confusion Our determination under Section 2(d) is based on 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 U.S.P.Q. 563, 567 (C.C.P.A. 1973). A. The Fame of Opposer’s Marks. The fifth DuPont factor requires us to consider the fame of opposer’s mark. Fame, if it exists, plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection or exclusivity of use. A famous mark has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 U.S.P.Q.2d 1303, 1305 (Fed. Cir. 2002); Recot, Inc. v. Becton, 214 F.3d 1322, 54 U.S.P.Q.2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992). Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services identified by the marks at issue, “by the length of time those indicia of commercial awareness have been evident,” by widespread critical assessments and through notice by independent sources of the products and services identified by the marks, as well as by the general reputation Opposition No. 91198368 9 of the branded products and services. Bose, 63 U.S.P.Q.2d at 1305-06, 1309. Although raw numbers of product and service sales and advertising expenses may have sufficed in the past to prove fame of a mark, raw numbers alone may be misleading. Some context in which to place raw statistics may be necessary (e.g., the substantiality of the sales or advertising figures for comparable types of products or services). Id. at 1309. Because of the extreme deference that we accord a famous mark in terms of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, it is the duty of the party asserting that its mark is famous to prove it clearly. Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 U.S.P.Q.2d 1901, 1904 (TTAB 2007). Opposer introduced the testimony Lisa Sheppard regarding the strength of opposer’s mark: 1. Opposer has been using the NATROL mark for over 30 years;11 2. Opposer’s annual sales for NATROL products are “roughly between 100 to $120 million”;12 3. Opposer spends “anywhere between … 10 million - - 5 to 10 million” promoting the NATROL brand;13 and 4. Opposer sells NATROL products throughout the United States.14 11 Sheppard Dep., p. 9. The problem with this testimony is discussed in the priority section infra. 12 Sheppard Dep., p. 9. 13 Sheppard Dep., pp. 9-10. 14 Sheppard Dep., p. 10. Opposition No. 91198368 10 The above-noted testimony shows that opposer has achieved commercial success and a high degree of renown. However, it is not sufficient to establish that the NATROL brand is famous for purposes of likelihood of confusion. Nevertheless, in view of opposer’s extensive sales and advertising expenditures, we find that opposer’s NATROL mark has a high degree of marketplace strength and it is entitled to a broad scope of protection or exclusivity of use. B. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Opposition No. 91198368 11 For purposes of our analysis, we focus on the word portion of opposer’s mark, NATROL, because that it is the dominant element of opposer’s marks. Applicant’s mark is NATROX. With the exception of the last letter, the marks are the same. Thus, they look alike. They also sound alike because they begin with the syllable “Nat” and are followed immediately by another similar syllable “Rol” in NATROL and “Rox” in NATROX. NATROL and NATROX are both coined terms without any meaning so there is no question regarding the similarity of meaning. However, the prefix syllable “Nat” in both marks engenders the commercial impression of something natural especially when used in connection with opposer’s dietary supplements and applicant’s cosmetics and chemicals for foods, pharmaceuticals and cosmetics. In view of the foregoing, we find that the marks are similar in terms of appearance, sound, and commercial impression. C. Similarity or dissimilarity and nature of the goods. Opposer introduced use-based third-party registrations for two marks to show that cosmetics and dietary supplements may emanate from a single source. Third-party registrations which individually cover a number of different services that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed services are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).15 15 We did not consider Registration No. 3213624 for the mark PHYTO because it was filed and registered under the provisions of Section 66(a) of the Trademark Act without a Opposition No. 91198368 12 Mark Reg. No. Goods PERRICONE 4038856 4063673 Cosmetic creams and preparations for skin care; Mineral, nutritional and vitamin supplements; pharmaceutical skin lotions MURAD and design 3845291 Non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels Dietary supplements and vitamins Opposer also introduced excerpts from the Murad website (murad.com) and the Perricone MD website (perriconemd.com) displaying advertisements for the sale of MURAD brand and PERRICONE MD brand cosmetics and dietary supplements. In addition, opposer introduced excerpts from the DR. BRANDT website (drbrandskincare.com) displaying advertisements for DR. BRANDT cosmetics and “ingestibles” (e.g., “anti-oxidant water booster blueberry a delicious and convenient alternative to pills and vitamins”) and from the Kate Somerville website (katesomerville.com) advertising KATE SOMERVILLE cosmetics and supplements. Finally, opposer introduced an article posted on the New York Times website (December 14, 2011) entitled “Beauty by the Bite” reporting that QVC is introducing a new beauty product that is eaten: Beauty Booster. It is identified as cosmetic that is “not slicked on like Noxzema but meant to be nibbled, swigged, sucked or muddled with ice.” The products claim to enhance hair, skin and nails with collagen, acai, lutein, reservatrol, goji berry, green tea, statement of use. In re Mucky Duck Mustard Co. Inc., 6 USPQ2d at 1470 n. 6. We did not consider the registrations for DR. BRANDT SKINCARE and KATE SOMERVILLE because they did not include products covered by opposer’s registrations. Opposition No. 91198368 13 vitamins and other ingredients that sound as though they could whet the appetite of only Anthony Bourdain, like porcine placenta. A decade ago, such ingredients were found in the dusty aisles of health food stores. Today they can be found on the shelves of retailers high and low: Sephora, Nordstrom, drugstores, the corner deli. * * * … While the category, classified as nutricosmetics and “functional foods” by the cosmetics industry, has been hurt by the recession, demand is still expected to increase by about 6 percent a year to $8.5 billion by 2015, according to Freedonia Group, a market research company. * * * … So far, beauty foods and drinks have been most popular in Japan, where “foods for specific health use” legislation signals to consumers that such products have a seal of approval, according to analysts at Euromonitor International, a research company. Legions of people are also embracing nutricosmetics in China, where supplements have long been part of Chinese medicine. But while American consumers have swallowed the idea of vitamins … they are not as sure about having their wrinkle-reducer and eating it, too. * * * But this has not fazed the marketers of the palm-size Nimble bar, with a suggested retail price of $1.69. The 120-calorie bar, in a white, pink and purple wrapper, claims to be a boon to both nutrition and skin tone. * * * Today his edible empire includes Slimming Chocolate Chews ($19.99), Clear Skin Capsules ($19.99) and Aqua- less Crystallines Antioxidant Drink Mix ($1.99 each). The evidence is sufficient to show that opposer’s dietary supplements and applicant’s cosmetics are related. However, the evidence does not show any Opposition No. 91198368 14 relationship between opposer’s dietary supplements and applicant’s “chemicals as raw materials for cosmetics and the food and pharmaceutical industries, mainly comprising plant extracts; active chemical ingredients used in cosmetic formulation; mineral salts, namely, magnesium salts.” D. Similarity or dissimilarity in the channels of trade and classes of consumers. Opposer introduced an excerpt from the Sephora website (sephora.com) evidencing that Sephora advertises the sale of cosmetics and dietary supplements, thus, providing evidence that cosmetic and dietary supplements move in the same channels of trade and are sold to the same classes of consumers. Likewise, the New York Times article “Beauty by the Bite,” noted above, reports that retailers of cosmetics (e.g., Sephora, Nordstrom, and drugstores) are beginning to sell dietary supplements for skin rejuvenation to their customers. On the other hand, opposer has not introduced any testimony or evidence regarding applicant’s products in Class 1, “chemicals as raw materials for cosmetics and the food and pharmaceutical industries, mainly comprising plant extracts; active chemical ingredients used in cosmetic formulation; mineral salts, namely, magnesium salts.” To the extent that there is any evidence, the record shows that applicant’s products will be sold business-to-business and that its class of purchasers will be “contract manufacturers and finished product manufacturers.”16 In this regard, Ms. Sheppard testified that opposer’s products are “consumer goods” sold “through traditional retailers such as supermarkets; drug stores; mass market 16 Applicant’s supplemental response to opposer’s Interrogatory No. 5. Opposition No. 91198368 15 retailers such as Walmart; specialty stores such as Vitamin Shoppe and GNC; and online retailers such as Amazon.com, Drugstore.com, and Walgreen’s, and the Natrol.com website.”17 E. Balancing the factors. 1. Class 1 Opposer’s dietary supplements are not related to applicant’s products in Class 1 and there is no evidence that those products move in the same channels of trade or are sold to the same classes of consumers. Therefore, we find that applicant’s mark NATROX when used in connection with “chemicals as raw materials for cosmetics and the food and pharmaceutical industries, mainly comprising plant extracts; active chemical ingredients used in cosmetic formulation; mineral salts, namely, magnesium salts” is not likely to cause confusion with opposer’s mark NATROL. 2. Class 3 Because the marks are similar and because applicant’s cosmetic products in Class 5 are related to opposer’s dietary supplements and they move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark NATROX when used in connection with “soaps; perfumes; cosmetics; essential oils; odoriferous substances, namely, body sprays used as personal deodorants and as fragrance, perfumery; cosmetics in galenic form and 17 Sheppard Dep., p. 8. To the extent that opposer sells “raw ingredients” for private label usage, the record was not developed to allow us to draw any conclusions about how raw ingredients are sold. Opposition No. 91198368 16 mainly containing plant extracts, not for medical purposes; plant and herb extracts sold as components of cosmetics for beauty and skin, body, facial, hair or nail care, in the form of capsules, tablets, ampules, yeast, powders, bars, creams or beverages” is likely to cause confusion with opposer’s mark NATROL. Decision: The opposition is dismissed in connection with the goods in Class 1. The opposition is sustained in connection with the goods in Class 3. Copy with citationCopy as parenthetical citation