Neways, Inc.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 76223029 (T.T.A.B. Aug. 29, 2003)

Mailed:
8/29/03
Paper No. 10
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Neways, Inc.
________
Serial No. 76/223,029
_______
Albert L. Schmeiser of Schmeiser, Olsen & Watts LLP for
Neways, Inc.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On March 12, 2001, applicant the filed the above-
referenced application to register the mark PROMEGA on the
Principal Register for “nutritional and herbal
supplements,” in Class 5. The application was based on
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce in connection with
the goods.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/223,029
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that applicant’s mark so resembles the mark
PROOMEGA, which is registered for “natural dietary omega-3
fish oil supplement, derived from fish,” 1 in Class 5, that
if applicant were to use its mark in connection with
nutritional and herbal supplements, confusion would be
likely. She2 reasoned that the marks are similar and that
the goods identified in both the application and the cited
registration are nutritional supplements.
Responsive to the refusal to register, applicant
amended the application to identify the goods as an “herbal
weight loss supplement,” in Class 5, and argued that
confusion would not be likely because the mark applicant
seeks to register is not similar to the cited registered
mark and the marketing activities surrounding the goods
will not lead to confusion as to origin.
The Examining Attorney accepted the amendment to the
identification-of-goods clause, but was not persuaded by
applicant’s arguments on the issue of whether confusion
would be likely, and in the second Office Action, he made
1 Reg. No. 2,077,609, issued on the Principal Register on July 8,
1997 to Westport Scandinavia, a partnership under California law.
2 The original Examining Attorney, Joyce A. Ward, was
subsequently replaced by Examining Attorney Brown.
Ser No. 76/223,029
3
the refusal to register under Section 2(d) of the Act
final. He discussed the similarities between the marks and
argued that even as amended, the goods in question are the
same or closely related.
In support of this contention he submitted a copy of a
page from the website of GNC, a business that sells health-
related items such as vitamins, minerals, herbs and other
nutrients. Under the heading “GNC PRODUCTS,” the following
items, among others, are listed: “Vitamins & Minerals,”
“Herbs,” “Natural Remedies” and “Weight Management.” Under
the heading “HEALTHNOTES,” the following topics, among
others, are listed: “Vitamin Guide,” “Herbal Remedies” and
“Weight Management.”
Also submitted in support of the refusal to register
were three excerpts from articles the Examining Attorney
retrieved from a computer database of articles from
publications. The Examining Attorney contended that the
excerpts establish the fact that the major ingredient in
the supplements of the registrant, omega-3 fish oils, “can
be used to maintain and lose weight.” (Second Office
Action, p. 2). As applicant subsequently pointed out,
however, although each of the excerpts does show use of the
terms “weight loss” and “omega-3 fish oils” in different
sections of the article, the two terms are not used in
Ser No. 76/223,029
4
conjunction with each other, and, contrary to the express
contention of the Examining Attorney, the excerpts do not
establish that omega-3 fish oils can be used to maintain
and/or lose weight.
Applicant timely filed a Notice of Appeal, which was
followed in timely fashion by applicant’s appeal brief.
The Examining Attorney then filed his appeal brief, but
applicant did not request an oral hearing before the Board.
In the case of In re E. I. Du Pont Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to our
primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among those factors are the similarity of the marks
as to appearance, pronunciation, meaning and commercial
impression, and the similarity of the goods as set forth in
the application and the registration, respectively.
In the instant case, we agree with the Examining
Attorney that confusion is likely because the marks at
issue are highly similar and the goods with which applicant
intends to use the mark it seeks to register are closely
related to the goods specified in the cited registration.
While not identical to each other, the marks PROMEGA
and PROOMEGA have obvious similarities which far outweigh
distinctions which may be drawn from the fact that one mark
Ser No. 76/223,029
5
has an additional letter “O” in it. The issue is not
whether the marks can be distinguished based on a side-by-
side comparison, but rather, whether the marks create
similar overall commercial impressions. Visual Information
Institute, Inc. v. Vicom industries Inc., 209 USPQ 179
(TTAB 1980). We must consider the perception and
recollection of the average purchaser of the respective
products, who normally retains a general, rather than a
specific, impression of trademarks. Chemtron Corp. v.
Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979).
While it is possible that the pronunciations of the two
marks could vary, the deletion of one of the “O”s from the
registered mark does not result in a mark that is very
different in appearance or spelling. Contrary to
applicant’s argument that the connotations of the two marks
differ when the marks are considered in connection with the
goods in the cited registration and those set forth in the
application, respectively, without engaging in more
analysis of these two marks than the average purchaser of
dietary supplements is likely to conduct, these marks have
similar connotations. Both combine the prefix “PRO” with
the word for the Greek letter “OMEGA.” Applicant’s version
just compresses the two terms so that they share one “O.”
When PROMEGA and PROOMEGA are considered in their
Ser No. 76/223,029
6
entireties, rather than dissected and evaluated part by
part, the commercial impressions engendered by these marks
are very similar. Clearly, their use in connection with
the same or closely related products would be likely to
cause confusion within the meaning of Section 2(d) of the
Lanham Act.
The goods set forth in the cited registration and
those identified in this application are, if not the same,
closely related. As amended, the application identifies
the goods with which applicant intends to use its mark as
an “herbal weight loss supplement,” whereas the product
identified in the registration is a dietary fish oil
supplement. As the Web page made of record by the
Examining Attorney demonstrates, businesses which offer
health-related products sell not only vitamins, minerals
and herbs, but also products used to help customers control
their weight. Thus, even if herbal weight loss supplements
are not encompassed within the term “natural dietary omega-
3 fish oil supplements” specified in the cited
registration, if similar marks were used in connection with
both such supplements, prospective purchasers would assume
a common source.
Applicant argues that it is a direct sales company.
marketing its product through distributors to consumers who
Ser No. 76/223,029
7
know applicant’s distributors personally, whereas
registrant’s goods are sold through traditional channels of
trade such as grocery stores and health/nutritional stores.
It is well settled, however, that the determination of
whether confusion would be likely must be made based on the
goods as they are identified in the application and the
cited registration, respectively, without limitations or
restrictions that do not appear therein. Toys “R” Us, Inc.
v. Lamps R Us, 219 USPQ 340 (TTAB 1983). When we employ
these principles in our analysis of the case before us, the
distinctions applicant asserts do not come into play.
Applicant’s argument with regard to the strength of
the registered mark is not well taken. Based on the
results of a search applicant conducted of the Patent and
Trademark Office database, which applicant argues indicated
that thousands of registrations and applications to
register involve marks which incorporate the term “PRO,”
and over seven hundred others which use the term “OMEGA,”
applicant takes the position that the cited registered mark
is weak in source-identifying significance. To begin with,
none of the applications or registrations upon which
applicant’s argument is predicated is even argued to be for
the mark PROMEGE or PROOMEGA. In any event, none of the
alleged “PRO” or “OMEGA” registrations or applications was
Ser No. 76/223,029
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made of record by applicant. Furthermore, neither
applications nor registrations are evidence of use of the
marks therein, much less that such use has been so
extensive that prospective purchasers look to other
elements in marks incorporating terms common to them in
order to distinguish among them, so even if applicant had
made of record a substantial number of marks similar to the
cited registered mark in connection with commercially
related goods, such evidence would be of little probative
value in determining whether confusion would be likely. In
re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983).
Moreover, as the Examining Attorney points out, even if
applicant had demonstrated that PROOMEGA is a weak mark in
the field of dietary supplements, even weak marks are
entitled to protection against the registration of similar
marks for closely related products. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Finally, any doubt as to whether confusion would be
likely must be resolved in favor of the prior user and
registrant, and against the applicant, who, as the second
comer, has a duty to select a mark which is not likely to
cause confusion with one that is already in use in the same
field of commerce. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 60 USPQ2d 1025 (Fed. Cir. 1998).
Ser No. 76/223,029
9
DECISION: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.