Nutri-Sight, LLC

Trademark Trial and Appeal Board

Nov 13, 2015

No. 85910534 (T.T.A.B. Nov. 13, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nutri-Sight, LLC
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Serial No. 85910534
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Kris Kappel of Husch Blackwell LLP,
for Nutri-Sight, LLC.
Clare Cahill, Trademark Examining Attorney,1 Law Office 120,
Michael W. Baird, Managing Attorney.
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Before Taylor, Kuczma and Heasley,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Nutri-Sight, LLC (“Applicant”) seeks registration on the Principal Register of the
mark NUTRI-SIGHT (in standard characters) for:
Vitamins and nutritional supplements in Class 5;
Online retail store services featuring vitamins and
supplements; retail store services featuring vitamins and
supplements in Class 35; and
Distribution services, namely, delivery of vitamins and
nutritional supplements in Class 39.2

1 A different Examining Attorney handled the examination of this application. The present
Examining Attorney was assigned to this case after the appeal was instituted.
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The Trademark Examining Attorney issued a final refusal to register Applicant’s
mark pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing
Registration No. 4422896 as a bar to registration. Registration No. 4422896 owned
by Ketal Patel is for the mark NUTRISIGHT (in standard character format) for
vitamin supplements in Class 5.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the request for reconsideration was denied, the appeal was
resumed and Applicant and the Examining Attorney filed briefs. We have
considered all of the evidence as it pertains to the relevant du Pont factors, as well
as Applicant’s arguments (including any evidence and arguments not specifically
discussed in this opinion). To the extent any other du Pont factors for which no
evidence or argument were presented may nonetheless be applicable, we treat them
as neutral. For the reasons set forth below, the refusal to register is affirmed.
I. Likelihood of Confusion
Applicant contends that in view of the differences between the marks and the
differences in the goods and services covered in its application versus the goods
covered in the cited registration, and also due to the differences in the customers
and trade channels for its products, there is no likelihood of confusion.
Our determination of likelihood of confusion under § 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to the factors bearing on

2 Application Serial No. 85910534 was filed on April 22, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Here, the key considerations are the
similarities between the marks, the relatedness of the goods and services, and the
similarity of the customers and trade channels of the goods and services. See In re
Viterra Inc., 671 F. 3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s
Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999).
A. The relatedness of the goods, channels of trade and classes of customers
We first consider the du Pont factor involving the relatedness of Applicant’s
goods and services (vitamins and nutritional supplements; online retail and retail
store services featuring vitamins and supplements; delivery of vitamins and
supplements), in relation to the goods in the cited Registration (vitamin
supplements). It is well-settled that the issue of likelihood of confusion between
applied-for and registered marks must be determined on the basis of the goods and
services as they are identified in the involved application and registration.
Applicant’s vitamins and nutritional supplements are identified broadly enough
to encompass the vitamin supplements identified in the cited Registration. Thus,
Applicant’s goods and the goods in the cited Registration are very closely related, if
not legally identical.
Applicant’s online retail store, retail store and delivery services, all feature
vitamins and nutritional supplements and, consequently, share a close and obvious
relationship with Registrant’s goods. As shown by the evidence submitted by
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Applicant, it is not unusual for vitamins and nutritional supplements to bear the
same mark as the retail store in which they are sold and the delivery services by
which they are delivered.
Consumers are likely to be confused by the use of similar marks, as more fully
discussed, infra, on or in connection with goods and with services featuring or
related to those goods. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general
merchandise store services likely to be confused with BIGGS for furniture); In re
United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (holding design for
distributorship services in the field of health and beauty aids likely to be confused
with design for skin cream); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985)
(holding CAREER IMAGE (stylized) for retail women’s clothing store services and
clothing likely to be confused with CREST CAREER IMAGES (stylized) for
uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433, 435 (TTAB 1983) (holding
STEELCARE INC. for refinishing of furniture, office furniture, and machinery
likely to be confused with STEELCASE for office furniture and accessories; “It is
well recognized that confusion in trade is likely to occur from the use of similar or
the same marks for goods and products on the one hand, and for services involving
those goods and products on the other.”); Mack Trucks, Inc. v. Huskie Freightways,
Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on
motor trucks and buses likely to cause confusion). See also J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:25 (4th ed. September
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2015) (“[w]here the services consist of retail sales services, likelihood of confusion is
found when another mark is used on goods which are commonly sold through such a
retail outlet.”).
Where, as here, the goods in an application are broadly described and there are
no limitations in the identification of goods as to their nature, type, channels of
trade or classes of purchasers, it is presumed that the scope of the application
encompasses all goods of the nature and type described, that Applicant’s goods
move through all usual channels of trade and are offered to all normal potential
purchasers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing The Kalart Co.,
Inc. v. The Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)); see also,
In re Viterra Inc., 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
The respective goods and/or services need only be related in some manner or the
conditions surrounding their marketing be such that they will be encountered by
the same consumers under circumstances that would give rise to the mistaken
belief that the goods and/or services originate from the same source. General Mills
Inc. v. Fage Dairy Processing Industries, 100 USPQ2d 1584, 1597 (TTAB 2011),
judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014); see On-line
Careline Inc. v. American Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed.
Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984). Moreover, the use of similar marks on or in connection
with both products and retail store services has been held likely to cause confusion
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where the evidence showed that the retail store services featured the same type of
products. See In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding
use of identical marks for beer and for retail store services featuring beer likely to
cause confusion).
Here, the Examining Attorney has submitted copies of third-party registrations
showing marks registered for goods and services of the types that are the same as or
similar to the goods and/or services identified in Applicant’s application and the
cited registration.3 These trademark registrations show that the goods and services
listed therein, namely, vitamin supplements and retail store, on-line retail store
and delivery services, are of a kind that may emanate from a single source under a
single mark. “Third-party registrations which cover a number of differing goods
and/or services, and which are based on use in commerce, although not evidence
that the marks shown therein are in use on a commercial scale or that the public is
familiar with them, may nevertheless have some probative value to the extent that
they may serve to suggest that such goods or services are of a type which may
emanate from a single source.” In re Anderson, 101 USPQ2d 1912, 1919 (TTAB
2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Additionally, the Examining Attorney submitted excerpts from third-party
websites showing that Applicant’s and Registrant’s goods in International Class 5

3 See third-party registrations attached to March 4, 2014 Office Action showing marks
registered in connection with the same or similar goods and/or services as those of both
Applicant and Registrant: Reg. Nos. 2,682,741; 2,645,665; 3,745,823; 4,156,498; and
4,218,825.
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directly overlap (vitamin supplements), and Applicant’s services in International
Classes 35 and 39 share a close and obvious relationship with Registrant’s vitamin
supplements (see additional website evidence attached to April 18, 2015 Request for
Reconsideration Denied showing entities that each provide vitamins, online retail
store services for vitamins and health products, and delivery services with respect
to vitamins and health products).4
We next consider whether Applicant’s goods and services travel in the same
trade channels to the same class of purchasers as Registrant’s goods. Absent
restrictions in the application and registration, the identified goods and services are
“presumed to travel in the same channels of trade to the same class of purchasers.”
In re Viterra Inc., 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Because there are no limitations as to trade channels or classes of purchasers in
the description of goods and services in either the application at issue or the cited
registration, we must assume that the respective goods and services travel through
all usual trade channels for such goods and services, and to all classes of prospective
purchasers for those goods and services. See Packard Press, Inc. v. Hewlett-Packard
Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000) (“When the registration

4 Attached to the September 26, 2014 Final Office Action are copies of excerpts from the
following websites showing online retail store sources of vitamins and supplements using
the same marks on vitamins and nutritional supplements: www.vitacost.com,
www.gnc.mediaroom.com, www.vitaminshoppe.com; and attached to the April 18, 2015
Request for Reconsideration Denied are copies of web pages from www.vitaminshoppe.com,
www.nutritionexpress.com and www.luckyvitamin.com showing one source providing
vitamins, online retail store services for vitamins and health products, and delivery services
with respect to vitamins and health products.
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does not contain limitations describing a particular channel of trade or class of
customer, the goods or services are assumed to travel in all normal channels of
trade.”); In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165
(TTAB 2013); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).
In this case, the identifications set forth in the application and registration have
no restrictions as to nature, type, channels of trade, or classes of purchasers.
Therefore, it is presumed that these goods and services “travel in the same channels
of trade to the same class of purchasers.” In re Viterra Inc., 101 USPQ2d at 1908
(quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1005 (Fed. Cir. 2002)).
The determination of likelihood of confusion is based on the goods and services
as identified in the application and registration. The overlapping goods are directly
competitive and the associated retail sale and distribution services are directly
related to the sale of the competitive goods. Applicant and Registrant place no
restrictions on the channels of trade or classes of customers for the goods and
services in their respective identifications of goods and services. Consequently, the
channels of trade and customers for the goods are identical.
Applicant argues that its goods and services are offered independently of any
other distributor or provider of goods, and therefore its goods and services would
have different consumers and different channels of trade from Registrant’s goods.5

5 March 26, 2015 Request for Reconsideration p. 6 of 7.
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This argument is irrelevant inasmuch as Applicant’s identification of goods and
services do not reflect such limitations. Neither does Registrant’s identification of
goods limit Registrant from marketing its goods through trade channels similar to
those encompassed by Applicant’s identification of its goods and services.
The question of likelihood of confusion is determined based on the description of
the goods and/or services stated in the application and registration at issue, not on
extrinsic evidence of actual use. See Coach Services, Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, (Fed. Cir. 1990).
Based on the legally identical nature of the goods set forth in the application and
cited registration, the relatedness of Applicant’s services to Registrant’s goods, and
the similar trade channels and customers, the du Pont factors of the similarity of
the goods, trade channels and customers favor a finding of likelihood of confusion.
B. The similarity or dissimilarity of the marks as to
appearance/sound/meaning and commercial impression
We next consider the first du Pont factor, focusing on the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. In re Viterra Inc., 101 USPQ2d at 1908; du Pont, 177
USPQ at 567. Where the goods of the applicant and cited registrant are similar
and/or closely related, as they are in this case, the degree of similarity between the
marks required to support a finding of likelihood of confusion is not as great as
would be required with diverse or different goods. In re J.M. Originals Inc., 6
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USPQ2d 1393, 1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393
F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).
The marks in this case, Applicant’s mark NUTRI-SIGHT and Registrant’s mark
NUTRISIGHT, are nearly identical in appearance. The presence of a hyphen
between the terms “NUTRI” and “SIGHT” in Applicant’s mark is an insignificant
difference that is not likely to be noticed or remembered by purchasers when
encountering these marks at separate times. See Mag Instrument Inc. v. Brinkman
Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) aff’d per curiam 2011 WL 5400095 (Fed.
Cir. 2011) (the hyphen does not distinguish MAG-NUM from MAGNUM); Goodyear
Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n. 4 (TTAB 1978) (“Fast-
Finder” with hyphen is in legal contemplation substantially identical to “Fastfinder”
without hyphen); Charrette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040, 2042 (TTAB 1989) (PRO-PRINT is similar to PROPRINT).
Additionally, Applicant’s NUTRI-SIGHT mark is identical in sound and meaning to
Registrant’s NUTRISIGHT mark.
Applicant relies on Packard Press, Inc. v. Hewlett-Packard Co., 56 USPQ2d 1351,
1353 (Fed. Cir. 2000), where the court held that it was an error to compare only the
common term “PACKARD,” and In re Hearst, 25 USPQ2d 1238, 1239 (Fed. Cir.
1992), where the court found that “VARGA GIRL” created a distinct commercial
impression from “VARGAS.” However, these cases are not applicable to the present
case and Applicant’s arguments are unpersuasive. In Hearst and Packard Press, the
issue was that the additional words “GIRL,” and “HEWLETT” and
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“TECHNOLOGIES,” differentiated the respective marks. Here, there is no
additional wording to differentiate the marks; the only difference is the mere
addition of a hyphen in Applicant’s mark. Unlike the terms “GIRL,” “HEWLETT,”
and “TECHNOLOGIES,” a hyphen does not change the appearance, sound,
connotation or commercial impression of Applicant’s mark to distinguish it from
Registrant’s mark. The slight difference in appearance caused by a hyphen is
without legal significance. In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1313 (TTAB
1987) (finding CROSS-OVER and CROSSOVER to be “identical in appearance but
for the inclusion in applicant’s mark of a hyphen, which, for purposes herein, is of
no legal significance”).
The marks have the same overall commercial impressions because they are
highly similar in appearance, sound and meaning. Accordingly, we find this du Pont
factor favors a finding of likelihood of confusion. Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
C. Conclusion
In conclusion, because the marks are nearly identical, and the goods and services
are virtually identical and otherwise closely related, and travel in the same trade
channels to the same customers, there is a likelihood of confusion between
Applicant’s NUTRI-SIGHT mark and the NUTRISIGHT mark in the cited
registration.
Decision: In view of the foregoing, the refusal to register Applicant’s mark
NUTRI-SIGHT is affirmed.