Oxycal Laboratories, Inc.v.Natural Organics, Inc.

Trademark Trial and Appeal Board

Dec 3, 1999

No. 91101147 (T.T.A.B. Dec. 3, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 3, 99
Hearing: Paper No. 43
June 17, 1999 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Oxycal Laboratories, Inc.
v.
Natural Organics, Inc.
_____
Opposition No. 101,147
to application Serial No. 74/657,446
filed on April 7, 1995
_____
Ronald W. Hind and Edward H. Renner of Cohn, Powell & Hind,
P.C. for Oxycal Laboratories, Inc.
Pasquale A. Razzano and Victoria J.B. Doyle of Fitzpatrick,
Cella, Harper & Scinto for Natural Organics, Inc.
______
Before Seeherman, Hairston and Wendel, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Natural Organics, Inc.
to register the mark ESTERPLEX for “dietary supplements.”1
Registration has been opposed by Oxycal Laboratories,
Inc. under Section 2(d) of the Trademark Act on the ground
of likelihood of confusion between applicant’s mark and

1 Application Serial No. 74/657,446 filed April 7, 1995, alleging
dates of first use of March 1, 1995.
Opposition No. 101,147
2
opposer’s previously used and registered mark ESTER-C.
Opposer is the owner of valid and subsisting registrations
on the Supplemental Register and Principal Register for the
mark ESTER-C for “vitamin and mineral supplements.”2
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The record consists of the pleadings, the file of the
involved application, trial testimony (and related exhibits)
taken by both parties; status and title copies of opposer’s
pleaded registrations; certain of applicant’s responses to
opposer’s discovery requests filed by way of opposer’s
notice of reliance; and the file wrapper and contents of
opposer’s Registration No. 1,354,735 filed by way of
applicant’s notice of reliance. Both parties filed briefs
on the case, and both were represented by counsel at an oral
hearing held before the Board.
The record shows that opposer has continuously used the
mark ESTER-C for vitamin and mineral supplements since 1983.
Opposer’s particular ESTER-C product is Vitamin C in an
esterified form, which is non-acidic and therefore causes
less stomach upset than regular Vitamin C. Opposer’s ESTER-
C products are sold in about 95% of the health food stores
in the United States under private labels such as Solgar,

2 Registration No. 1,354,735 issued August 13, 1985 on the
Supplemental Register, Section 8 affidavit filed; and
Opposition No. 101,147
3
Vitamin World, Pro Health, and Pure Planet. It is generally
sold in tablet or capsule form and sometimes in combination
with another vitamin or mineral. Opposer also sells ESTER-C
products to direct sales companies such as Avon. Between
1994 and 1997 opposer spent approximately $2.5 million in
advertising and promoting ESTER-C products and between 1983
and 1997 opposer’s sales of ESTER-C products totaled more
than $40 million.
The record shows that applicant is also in the business
of marketing vitamin and mineral supplements to health food
stores. Applicant is currently ranked number five among
suppliers of vitamin and mineral supplements to health food
stores. Applicant first used the mark ESTERPLEX in
connection with a dietary supplement on March 1, 1995.
Since that date, applicant’s sales of ESTERPLEX dietary
supplements have been approximately $150,000 per year.
Applicant’s ESTERPLEX dietary supplement contains esterified
Vitamin C and multiple ascorbate and is also gentle on the
stomach.
Inasmuch as a status and title copy of opposer’s
Registration No. 1,598,104, which issued on the Principal
Register, is of record, there is no issue with respect to
opposer’s priority. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

Registration No. 1,598,104 issued May 29, 1990 on the Principal
Opposition No. 101,147
4
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973).
With respect to the goods, opposer’s vitamin and
mineral supplements and applicant’s dietary supplements, are
essentially identical. In fact, the record shows that the
goods of both opposer and applicant are esterified Vitamin
C. These kinds of goods are sold in the same channels of
trade, namely, health food stores, to the same class of
purchasers, namely, ordinary consumers.
Turning then to a consideration of the marks ESTER-C
and ESTERPLEX, opposer argues that confusion is likely
because the respective marks consist of three syllables and
are dominated by the identical term ESTER.
Applicant, on the other hand, contends that confusion
is not likely since the marks include different suffixes,
and thus differ in their overall sound, appearance and
meaning. Further, applicant contends that opposer’s mark,
because it contains the term “ESTER,” is weak and therefore
entitled to only a limited scope of protection. Applicant

Register, Sections 8 & 15 affidavit filed.
Opposition No. 101,147
5
maintains that the term “ESTER” as applied to opposer’s
vitamin C product is highly suggestive and points to the
following dictionary excerpts:
ester: a compound ether derived from an
oxygenated acid. Funk & Wagnalls
Standard Universal Dictionary (undated);
and
ester: any of a class of often fragrant
compounds formed by the reaction between
an acid and an alcohol usu[ally] with the
elimination of water. Webster’s Ninth New
Collegiate Dictionary (1984).3
After careful consideration of the parties’ arguments,
we find that applicant’s mark ESTERPLEX substantially
resembles opposer’s mark ESTER-C, such that when the marks
are used on virtually identical products, confusion as to
origin or affiliation is likely to occur. Each of the marks
begins with the identical term ESTER and it is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered. Presto
Products Inc. v. Nice Pak Products Inc. 9 USPQ2d 1895, 1897
(TTAB 1988); and Mine Safety Appliances Co. v. Management
Science America, Inc., 212 USPQ 105, 108 (TTAB 1987). Also,
while we recognize the highly suggestive/descriptive
significance of the term ESTER, this fact does not help to

3 Although applicant submitted this dictionary excerpt with its
brief on the case, we have considered the excerpt even though it
is technically untimely, inasmuch as the Board may properly take
judicial notice of dictionary definitions. See Hancock v.
American Steel & Wire Rope Co. of New Jersey, 203 F.2d 737, 97
USPQ 330, 332 (CCPA 1953).
Opposition No. 101,147
6
distinguish the marks ESTER-C and ESTERPLEX. The term
ESTER, as used in both marks conveys the same suggestive
significance, namely that the Vitamin C is esterified.
Moreover, the suffixes “C” and “PLEX” in the respective
marks are highly suggestive of an attribute (Vitamin C in
the case of opposer’s goods and a complex formula in the
case of applicant’s goods) of the particular products to
which each mark pertains. In short, the marks are similarly
structured with the term ESTER followed by a highly
suggestive suffix, and when considered in their entireties,
project essentially the same commercial impression when used
in connection with the respective goods.
It must be remembered that, under actual marketing
conditions, consumers do not have the luxury to make side-
by-side comparisons between marks, and instead they must
rely on hazy past recollections. Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255 (TTAB 1980). This is especially
true in this case, because the goods can be relatively
inexpensive and bought off the shelf in health food stores.
Another factor we have considered is that the record is
devoid of any evidence of third-party uses and/or
registrations of ESTER marks for goods similar to the types
of goods involved in this case, namely, vitamin/mineral and
dietary supplements.
Opposition No. 101,147
7
Finally, notwithstanding any alleged weakness in
opposer’s mark, even weak marks are entitled to protection
against the registration by a subsequent user of a
substantially similar mark for virtually identical goods.4
In reaching our decision, we have not overlooked the
instances of actual confusion that opposer asserts have
occurred. Of course, applicant disputes that such instances
constitute evidence of actual confusion. In view of our
findings above with respect to the factors bearing on the
issue of likelihood of confusion, we find it unnecessary to
discuss whether actual confusion has occurred. However, to
the extent that the instances constitute evidence of actual
confusion, they merely reinforce our finding of likelihood
of confusion.
Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, it is settled that such
doubt must be resolved in favor of the prior registrant and
against applicant. Fernando Electric Mfg. Co. v JDF
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA
1977).

4 While we note that opposer’s first registration for the mark
ESTER-C issued on the Supplemental Register which would indicate
that the mark is merely descriptive, opposer’s subsequent
registration issued on the Principal Register without benefit of
a claim of acquired distinctiveness. This latter registration
would indicate that the mark is entitled to the full scope of
protection.
Opposition No. 101,147
8
We conclude that purchasers familiar with opposer’s
vitamin and mineral supplements sold under the mark ESTER-C
would be likely to believe, upon encountering applicant’s
mark ESTERPLEX for dietary supplements, that the respective
goods originate with or are somehow associated with or
sponsored by the same entity.
Decision: The opposition is sustained.
E. J. Seeherman
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board