PM-International AG

Trademark Trial and Appeal Board

Nov 19, 2015

No. 86165070 (T.T.A.B. Nov. 19, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re PM-International AG
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Serial No. 86165070
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Ronni S. Jillions of Browdy and Neimark, PLLC,
for PM-International AG.
Ira J. Goodsaid, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Bergsman, Shaw and Goodman,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
PM-International AG (“Applicant”) seeks registration on the Principal Register
of the mark

in stylized form for “Dietary nutritional supplements; nutritional supplement
shakes; powdered nutritional supplement drink mix and concentrate,” in
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International Class 5.1 Applicant claimed ownership of three other U.S.
registrations for marks comprising the term FITLINE, in whole or in part,
Registration Nos. 2781217,2 3008993,3 and 3857510.4
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion with
the mark in U.S. Registration No. 3739762 for the mark PROSHAPE, in standard
character form, for “Dietary and nutritional supplements; Natural herbal
supplements,” in International Class 5.5
When the refusal was made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration,
and the appeal resumed. The case is fully briefed.
Analysis
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence relevant to the factors set forth in In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key considerations are the similarities
between the goods and the similarities between the marks. See Federated Foods,

1 Application Serial No. 86165070 was filed on January 14, 2014, 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. § 1(b).
2 Issued November 1, 2003; renewed.
3 Issued October 25, 2005.
4 Issued October 5, 2010.
5 Issued January 19, 2010.
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Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). These
factors, and any other relevant du Pont factors in the appeal now before us, will be
considered in this decision.
A. The similarity or dissimilarity and nature of the goods and the established,
likely-to-continue trade channels.

We first consider the similarity of the goods. We base our evaluation on the
goods as they are identified in the application and registration. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
Both Applicant’s and Registrant’s goods include “nutritional supplements.” The
goods therefore are in part identical, and Applicant does not dispute this. Moreover,
in analyzing the similarity of the goods, it is sufficient for a refusal based on
likelihood of confusion that relatedness of the goods is established for any single
item encompassed by the description of goods in the application. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981).
Neither does Applicant dispute the attendant presumption that the channels of
trade and classes of purchasers are the same. In re Viterra Inc., 671 F.3d 1358,
1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent restrictions in an application
and/or registration, identical goods are “presumed to travel in the same channels of
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trade to the same class of purchasers.”) (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
These du Pont factors relating to similarity and nature of the goods and
similarity of established, likely to continue channels of trade favor a finding of
likelihood of confusion.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

Next, we consider the du Pont factor relating to the similarity of the marks. In
comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the
average purchaser who normally retains a general, rather than specific, impression
of trademarks.
We must also keep in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Lastly, although we consider the mark as a whole, “in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark. . . .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
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Registrant’s mark consists solely of the term PROSHAPE in standard
characters. Applicant’s mark is FITLINE PROSHAPE in the stylized form shown
above. The Examining Attorney argues that Applicant has “appropriated the
Registrant’s entire mark, thus claiming it as its own.”6
With respect to the PROSHAPE portions of the marks, the terms are identical in
appearance, sound, and meaning. However, we must consider the entire marks,
including the presence of FITLINE in Applicant’s mark, to determine their
commercial impressions.
Here, the entire marks are similar because they both contain the term
PROSHAPE. It is long established that the mere addition of a term to a registered
mark generally does not obviate the similarity between the marks nor does it
overcome a likelihood of confusion under Trademark Act Section 2(d). See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S
ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram &
Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL
LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406
(CCPA 1967) (THE LILLY and LILLI ANN); and In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266 (TTAB 2009) (TITAN and VANTAGE TITAN).
Applicant argues that “[p]urchasers will readily look to the FITLINE portion of
applicant’s mark as a means of distinguishing between the sources of applicant’s

6 Examining Attorney’s Br. at 6, 9 TTABVUE 6.
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products and products by others including the owner of the cited mark.”7 We
disagree. The addition of FITLINE to PROSHAPE doesn’t distinguish Applicant’s
mark from Registrant’s PROSHAPE mark. Rather, customers who are familiar with
Registrant’s goods, upon seeing Applicant’s mark, or vice versa, would likely
assume that the goods were related and that FITLINE PROSHAPE is a line of the
PROSHAPE nutritional supplements. The fact that Applicant has used its FITLINE
marks continuously for more than five years is of no consequence and merely
suggests a likelihood of reverse confusion. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 (Fed. Cir. 1993) (“The term ‘reverse confusion’ has been used to
describe the situation where a significantly larger or prominent newcomer
‘saturates the market’ with a trademark that is confusingly similar to that of a
smaller, senior registrant for related goods or services.” [Citation omitted]).
The stylization of Applicant’s mark also does not distinguish it from Registrant’s
mark inasmuch as Registrant is entitled to protection of its standard character
mark PROSHAPE in any font style. Citigroup Inc. v. Capital City Bank Group Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). Thus, Registrant could
display its mark as ProShape.
Applicant further argues that the marks at issue do not create the same
commercial impression because Applicant’s mark contains the term FITLINE.
Applicant cites to Shen Mfg. Co., Inc. v. The Ritz Hotel Ltd., 393 F.3d 1238, 73
USPQ2d 1350 (Fed. Cir. 2004) to support the premise that “additional matter,

7 Applicant’s Br. at 6, 7 TTABVUE 10.
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including house marks” can “convey a significantly different commercial impression
considering the marks in their entireties….”8 We find Shen to be inapposite. In
Shen, unlike here, the additional matter sufficiently modified the commercial
impression of the term “Ritz” so as to distinguish the marks of the parties,
particularly when used on unrelated goods. Here, the addition of FITLINE does
nothing to modify the commercial impression or meaning of the term PROSHAPE,
and Applicant’s and Registrant’s goods are identical. The significant space between
the terms FITLINE and PROSHAPE further reinforces a lack of any modifying
interplay between these terms.
We find that when the marks are compared in their entireties, they are similar
overall in sound, appearance, meaning, and commercial impression. This du Pont
factor favors a finding of likelihood of confusion.
C. Conclusion

The marks are similar because they both contain the identical word
PROSHAPE. The addition of Applicant’s FITLINE mark to its FITLINE
PROSHAPE mark is a difference between the marks, but it does not result in marks
that are dissimilar for likelihood of confusion purposes. Customers who become
familiar with Applicant’s mark are likely to assume that it simply identifies what
had previously been the unidentified or anonymous source behind Registrant’s
mark. As to the goods, they are identical, are sold or provided through the same
trade channels, and are used by the same classes of consumers. Because the marks

8 Applicant’s Br. at 7, 7 TTABVUE 11.
Serial No. 86165070
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are similar, and the goods are identical and travel in the same trade channels, there
is a likelihood of confusion between Applicant’s FITLINE PROSHAPE mark in
stylized form and the PROSHAPE mark in the cited registration.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Lanham Act is affirmed.