PBC Supply, Inc.

Trademark Trial and Appeal Board

Jun 24, 2010

No. 77515674 (T.T.A.B. Jun. 24, 2010)

Mailed:
June 24, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PBC Supply, Inc.
________

Serial No. 77515674
_______

Gregory C. Smith of Garvey, Smith, Nehrbass & North, L.L.C.
for PBC Supply, Inc.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Grendel and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark PHENTRASLIM PLUS (in standard character form)
for goods identified in the application as “natural herbal
dietary supplement.”1

1 Serial No. 77515674, filed on July 7, 2008. The application is
based on applicant’s allegation of a bona fide intent to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77515674
2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the goods identified in the
application, so resembles the mark PHENTRAMIN, previously
registered on the Principal Register (in standard character
form) for goods identified in the registration as
“pharmaceutical, namely, weight control aids, limited
solely to dietary supplements formulated for weight
control,”2 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
The Trademark Examining Attorney also has issued a
final refusal based on applicant’s failure to comply with a
requirement that applicant disclaim the word PLUS.
Trademark Act Section 6, 15 U.S.C. §1056.
Applicant has appealed both final refusals. We affirm
both refusals.
We turn first to the requirement for a disclaimer of
PLUS.
The Office may require the applicant to disclaim an
unregistrable component of the applicant’s mark. Trademark
Act Section 6. A term which is merely descriptive of the

2 Registration No. 3243501, issued May 22, 2007.

Ser. No. 77515674
3
goods identified in the application is unregistrable on the
Principal Register pursuant to Trademark Act Section
2(e)(1), 15 U.S.C. §1052(e)(1), and the Office therefore
may require a disclaimer of such a term. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001). A laudatory term, i.e., a term which attributes
quality or excellence to the goods, is deemed to be merely
descriptive under Trademark Act Section 2(e)(1), and the
Office therefore may require a disclaimer of such a term.
Id.
In this case, we find that the term PLUS in
applicant’s mark is a laudatory term as applied to
applicant’s goods and that it therefore is merely
descriptive of the goods. The Trademark Examining Attorney
has submitted a dictionary definition of “plus” which
defines the term as, inter alia, “favorable, desirable, or
advantageous.” MSN Encarta® Dictionary.3 (October 14,
2008 Office action.) We find that purchasers would
attribute this ordinary dictionary meaning to the term PLUS
as applied to applicant’s goods, i.e., that the term merely
touts the superior quality, excellence or desirability of
the goods.

3 (http://encarta.msn.com/encnet/features/dictionary).
Ser. No. 77515674
4
Additionally, the Trademark Examining Attorney has
submitted printouts of eight third-party registrations of
marks which include the term PLUS, in which the term PLUS
has been disclaimed. (April 27, 2009 final Office action.)
All of these registrations cover the type of goods
identified in applicant’s application in this case, i.e.,
dietary and nutritional supplements. These third-party
registrations, while not dispositive, further support our
finding that PLUS is merely descriptive as applied to
applicant’s goods. We note that applicant has submitted
printouts of three other third-party registrations of marks
which include the term PLUS, in which PLUS has not been
disclaimed. However, the goods covered by each of these
registrations are far afield from the goods identified in
applicant’s application, and we find that the registrations
therefore are of less probative value in our determination
of the mere descriptiveness of PLUS as applied to
applicant’s goods.
Based on the evidence of record, we find that PLUS is
a laudatory term as applied to applicant’s goods, that it
therefore is merely descriptive of the goods, and that the
Trademark Examining Attorney’s requirement that applicant
disclaim the term is proper. We therefore affirm the
Ser. No. 77515674
5
disclaimer requirement and the refusal to register the mark
absent such a disclaimer.
We turn next to the Section 2(d) likelihood of
confusion refusal. To review, applicant seeks registration
of the mark PHENTRASLIM PLUS (in standard character form)
for goods identified in the application as “natural herbal
dietary supplement.” The previously-registered mark cited
by the Trademark Examining Attorney is PHENTRAMIN (in
standard character form) for goods identified in the
registration as “pharmaceutical, namely, weight control
aids, limited solely to dietary supplements formulated for
weight control.”
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Ser. No. 77515674
6
We begin with the second du Pont factor, under which
we determine the similarity or dissimilarity of the goods
as identified in the application and in the cited
registration, respectively.
We find that applicant’s goods as identified in the
application encompass and thus are legally identical to the
goods identified in the cited registration. That is, the
goods identified in the cited registration are dietary
supplements for weight control; applicant’s broadly-
identified “dietary supplements” must be deemed to include
the same goods.4 This element of overlap in the respective
goods makes the goods legally identical, for purposes of
this proceeding involving the registrability of applicant’s
mark. Contrary to applicant’s argument, the fact that
applicant’s broadly-identified “dietary supplements”
potentially might also include supplements used for
purposes other than weight control is not dispositive here.5
“Likelihood of confusion may be found based on any item

4 Applicant’s contention at page 2 of its brief that
“…Appellant’s goods are natural herbal dietary supplements and
are not restricted to supplements for weight control as with the
Registrant’s goods” essentially is an admission that applicant’s
goods encompass registrant’s goods.

5 Without relying on this fact for our decision, we note that
applicant’s website, made of record by the Trademark Examining
Attorney (April 27, 2009 Office action), shows that applicant’s
PHENTRASLIM product in fact is a dietary supplement used for
weight control.
Ser. No. 77515674
7
that comes within the identification of goods in the
involved application and registration.” In re La Peregrina
Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008).
Additionally, the Trademark Examining Attorney has
submitted six third-party registrations which include in
their identifications of goods both the goods identified in
applicant’s application and the goods identified in the
cited registration. (April 27, 2009 final Office action.)
Although such registrations are not evidence that the marks
shown therein are in use or that the public is familiar
with them, they nonetheless have probative value to the
extent that they serve to suggest that the goods listed
therein are of a kind which could be marketed by a single
source under a single mark. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
For these reasons, we find that applicant’s goods as
identified in the application are similar to, and indeed
legally identical to, the goods identified in the cited
registration. Accordingly, we find that the second du Pont
factor weighs heavily in favor of a finding of likelihood
of confusion.
Under the third du Pont factor, we determine the
similarity or dissimilarity of the trade channels in which
Ser. No. 77515674
8
and the purchasers to whom applicant’s goods and the prior
registrant’s goods, as identified in the application and
the registration respectively, are or would be marketed.
Here, because there are no limitations or restrictions as
to trade channels or classes of purchasers in the
respective identifications of goods, we presume that the
goods are marketed in all normal trade channels and to all
normal classes of purchasers for such goods. In re Elbaum,
211 USPQ 639 (TTAB 1981). Moreover, because the goods as
identified in the application and in the cited registration
are legally identical (see above), we presume that the
respective goods are or will be sold in the same trade
channels and to the same classes of purchasers. In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
For these reasons, we find that the third du Pont
factor weighs in favor of a finding of likelihood of
confusion.
We turn finally to the first du Pont factor, under
which we determine the similarity or dissimilarity of the
marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
Ser. No. 77515674
9
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Although the marks at issue must be considered in
their entireties, it is well-settled that one feature of a
mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). In this
case, we find that the dominant feature of applicant’s mark
in terms of the mark’s function as a source-indicator is
the prefix PHENTRA-.
On this record, PHENTRA is an arbitrary and indeed a
coined term as applied to the goods. The suffix -SLIM is
suggestive, at most, and the laudatory word PLUS lacks
distinctiveness, as discussed above in connection with the
disclaimer refusal. –SLIM and PLUS therefore contribute
Ser. No. 77515674
10
much less to the source-indicating significance of
applicant’s mark than does the unusual and highly
distinctive prefix PHENTRA-. Also, the prefix PHENTRA-
dominates the mark’s commercial impression because it
appears first in the mark, i.e., it is how the mark starts.
For these reasons, we find that the prefix PHENTRA-
dominates the commercial impression of applicant’s mark and
the mark’s function as a source-indicator. We do not
ignore the other elements of applicant’s mark, but we
accord more significant weight to PHENTRA- in our
comparison of applicant’s mark and registrant’s mark.
In terms of appearance, the marks differ to the extent
that applicant’s mark is presented in two words and to the
extent that the suffixes –SLIM and –MIN are not identical.
However, we find that these differences are outweighed by
the visual similarity between the marks which results from
the fact that both marks begin with the coined and oddly-
spelled prefix PHENTRA-. On balance, we find that the
marks are similar in terms of appearance.
In terms of sound, the marks differ to the extent that
the registered mark has three syllables while applicant’s
mark includes the word PLUS as a fourth syllable, and to
the extent that the –SLIM and –MIN suffixes are not
identical. However, the marks both begin with the
Ser. No. 77515674
11
identical-sounding prefix PHENTRA-, and the third syllables
in both marks are near-rhymes based on the same vowel
sound, i.e., the short “i” vowel, adjacent to the letter
“m”. We find that these points of aural similarity between
the marks outweigh the points of dissimilarity, and that on
balance the marks are similar in terms of sound.
In terms of connotation, the registered mark appears
to be coined and therefore has no apparent meaning.
However, whatever meaning purchasers might attach to the
term PHENTRA-, it would have the same meaning in both marks
as applied to the same goods. Applicant’s mark includes
the suffix –SLIM, which might be understood to suggest that
applicant’s goods are used in connection with weight
control. It would have the same connotation in connection
with opposer’s goods as well. Applicant’s mark also
includes the word PLUS, which as a laudatory term would
connote merely that the goods are of enhanced or superior
quality and would not affect the meaning, if any, of
PHENTRASLIM itself. On balance, we find that the marks are
similar in terms of connotation.6

6 To the extent that the marks might be deemed to be dissimilar
in connotation, that dissimilarity as to connotation does not
suffice, when the marks are viewed in their entireties, to
overcome the similarities between the marks in terms of
appearance, sound, and commercial impression.

Ser. No. 77515674
12
In terms of commercial impression, we find that the
marks are highly similar. Both marks start with the coined
and unusually-spelled prefix PHENTRA-, followed by a single
syllable which sounds very similar in both marks.
Purchasers, with their generally imperfect recollections of
trademarks, are unlikely to recall these minor differences
between the marks when they encounter the marks at
different times. Moreover, even if purchasers were to
recall the specific differences between the marks at all,
they still would be likely to assume, based on the presence
of the prefix PHENTRA- in both marks, that the goods
originate from the same or a related source and that the
marks merely identify different products in a line of
PHENTRA- dietary supplements produced by that single
source. Applicant’s addition of the word PLUS to its mark
does not distinguish the marks as source indicators,
because PLUS is a non-distinctive term that has little or
no source-indicating significance and would be seen by
purchasers as merely as an indication that these PHENTRA-
goods are of enhanced or higher quality.
Finally, in cases such as this where the applicant’s
goods are legally identical to the goods identified in the
cited registration, the degree of similarity between the
marks which is required to support a finding that the marks
Ser. No. 77515674
13
are confusingly similar under the first du Pont factor (and
thus a finding that a likelihood of confusion exists) is
less than it would be if the goods were not identical.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In summary, we find that the marks are similar when
viewed in their entireties. The marks are not identical
when viewed side-by-side but, as noted above, that is not
the test. We find that the first du Pont factor weighs in
favor of a finding of likelihood of confusion.
Having considered all of the evidence of record as it
pertains to the du Pont factors, and for all of the reasons
discussed above, we find that a likelihood of confusion
exists. We have considered applicant’s to the contrary but
we are not persuaded by them. We therefore sustain the
Section 2(d) refusal of registration.

Decision:
The Section 2(d) likelihood of confusion refusal is
affirmed. The refusal based on applicant’s failure to
disclaim the word PLUS is affirmed.7

7 If applicant submits the required disclaimer to the Board
within thirty days of the date of this decision, this decision
insofar as it affirms the disclaimer refusal will be set aside
and the disclaimer will be entered into the application record.
The proper form of the disclaimer is “No claim is made to the
Ser. No. 77515674
14

exclusive right to use PLUS apart from the mark as shown.”
However, applicant is advised that regardless of whether
applicant submits the disclaimer and the decision affirming the
disclaimer requirement is set aside, the decision affirming the
Section 2(d) refusal will stand.