Primary Investments Group Limited

Trademark Trial and Appeal Board

Sep 10, 2007

No. 76630560 (T.T.A.B. Sep. 10, 2007)

Mailed: September 10, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Primary Investments Group Limited
________

Serial No. 76630560
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Thomas W. Cook for Primary Investments Group Limited.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Primary Investments Group Limited has filed an
application to register the mark SUPER KID MULTI for
“vitamins and nutritional supplements.”1
The trademark examining attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark so

1 Serial No. 76630560, filed February 7, 2005, based on an
allegation of a bona fide intention to use the mark in commerce.
The term “MULTI” is disclaimed apart from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76630560
2
resembles the mark SUPERKIDS, previously registered for
“nutritional supplements,”2 that if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
The examining attorney contends that applicant has
essentially appropriated the registered mark and added to
it the descriptive term MULTI, which does not serve to
distinguish the marks. Further, the examining attorney
argues that, even assuming the registered mark SUPERKIDS is
a weak mark, such mark is still entitled to protection
against applicant’s very similar mark. Finally, the
examining attorney maintains that the goods of applicant
and registrant are identical in part and otherwise closely
related.
Applicant, in urging reversal of the refusal to
register, argues that the addition of the term MULTI in its
mark creates a mark which is different in sound,
appearance, connotation and commercial impression from the
registered mark. Further, applicant contends that the
registered mark SUPERKIDS is not distinctive, that marks

2 Registration No. 1614589, issued September 25, 1990, first
renewal.
Ser No. 76630560
3
containing/consisting of SUPERKIDS are weak marks, and that
the registered mark is therefore entitled to only a limited
scope of protection. With respect to the goods, applicant
does not dispute that they are identical in part and
otherwise closely related. However, applicant maintains
that consumers are not likely to be confused because
consumers exercise greater than normal care when purchasing
health products such as vitamins and nutritional
supplements.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are 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,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Considering first the similarity of the goods, as
noted, applicant does not dispute that its goods are
Ser No. 76630560
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identical in part (nutritional supplements) and otherwise
closely related (vitamins) to registrant’s goods. In view
thereof, and in the absence of any limitations in the
respective identifications of goods, we must presume that
the identifications encompass all goods of the type
described, and that the identified goods move in all
channels of trade and to all classes of purchasers that
would be normal for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). Thus, for purposes of our likelihood of
confusion analysis, we must presume that the channels of
trade and classes of purchasers are identical.
Turning next to the marks, we must compare applicant’s
mark SUPER KID MULTI and registrant’s mark SUPERKIDS in
terms of appearance, sound, meaning and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). In comparing the marks, the test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in their entireties that confusion
as to the source of the goods offered under the respective
marks is likely to result. Furthermore, although the marks
must be considered in their entireties, it is well settled
that one feature of a mark may be more significant than
Ser No. 76630560
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another, and it is not improper, for rational reasons, to
give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Finally, we note that “when marks would appear on
virtually identical goods …, 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, 32 USPQ2d 1698 (Fed. Cir. 1992).
Applicant’s mark is SUPER KID MULTI; the cited mark is
SUPERKIDS. Applicant argues that the additional term MULTI
in its mark creates a mark which is different in
appearance, pronunciation, connotation and commercial
impression. We disagree. The term MULTI, as applied to
applicant’s goods, is descriptive thereof. In this regard,
we take judicial notice that the term “multi” is defined as
“[m]any; much; multiple,” and the term “multivitamin” is
defined as “[c]ontaining many vitamins.” The American
Heritage Dictionary of The English Language (4th ed. 2000).
In addition, we note applicant’s disclaimer of the term
MULTI and the numerous third-party registrations submitted
by the examining attorney of MULTI marks for vitamins and
nutritional supplements which bear a disclaimer of the
term. Thus, consumers will view the term SUPER KID as the
Ser No. 76630560
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source-indicating portion of applicant’s mark.
Accordingly, it is entirely proper to treat this portion of
applicant’s mark as the dominant element.
The minor differences in appearance, pronunciation and
connotation of the marks resulting from the fact that
applicant’s mark includes the singular SUPER KID and MULTI
while the registered mark consists solely of the plural
SUPERKIDS do not serve to distinguish the marks. The
dominant term SUPER KID in applicant’s mark is still
substantially similar in appearance, pronunciation and
connotation to registrant’s mark SUPERKIDS. We recognize
that the additional descriptive term MULTI in applicant’s
mark connotes vitamins and nutritional supplements that
contain more than one vitamin and/or mineral and that this
extra connotation is not present in the registrant’s mark.
However, we find that this point of difference is not
sufficient to distinguish the marks. Rather, when the
applicant’s mark and registrant’s mark are considered in
their entireties, the marks engender sufficiently similar
commercial impressions that if the identical and closely
related goods involved in this case are offered thereunder,
confusion would be likely to occur among consumers.
Consumers familiar with registrant’s mark SUPERKIDS are
likely to view SUPER KID MULTI as identifying a line of
Ser No. 76630560
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“multi” vitamins and nutritional supplements originating
from registrant.
Applicant, in contending that the marks are not
similar, asserts that marks containing/consisting of the
term SUPERKIDS are weak marks which are entitled to only a
limited scope of protection. Specifically, applicant
maintains that the term SUPERKIDS is not distinctive when
used in connection with vitamins and nutritional
supplements, that such term is frequently used in marks,
and consumers are therefore able to distinguish between
such marks on the basis of even slight differences. In
support of its position in this regard, applicant submitted
three printouts from the USPTO’s TESS database consisting
of lists of marks that include the term SUPERKIDS, SUPER,
and KIDS, respectively; printouts of four third-party
applications and five third-party registrations of marks
that consist of or include the term SUPERKIDS; printouts
from the Google and Yellowpages.com search engines of hits
retrieved by the search of “superkids;” and two examples of
uses of “Super Kids” at third-party websites, i.e., “Super
Kids Throat Spray” and “Super Kids Salve.”
First, applicant’s assertion that the term SUPERKIDS
is not distinctive is essentially a contention that
registrant’s mark is merely descriptive. Such a contention
Ser No. 76630560
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constitutes an impermissible collateral attack on the
validity of the cited registration and will not be
entertained in an ex parte appeal. See e.g., In re Peebles
Inc., 23 USPQ2d 1795 (TTAB 1992); and In re C. F. Hathaway
Co., 190 USPQ 343 (TTAB 1976).
Second, applicant’s evidence is of limited probative
value for several reasons. With respect to the TESS
printouts, those consist simply of lists of marks with
registration numbers and serial numbers and fail to
indicate the particular goods or services in connection
with which the marks are registered or are sought to be
registered. A mere listing of registration/application
numbers and marks is insufficient to make the registrations
and applications properly of record. See In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). With respect to the
printouts of third-party applications, the Board has held
that third-party applications are evidence only of the fact
that they were filed; they otherwise have no probative
value. In re Juleigh Jeans Sportswear, Inc., 24 USPQ2d
1694 (TTAB 1992). In any event, a review of these
applications reveals that none covers vitamins and/or
nutritional supplements. Similarly, with respect to the
third-party registrations, none covers vitamins and/or
nutritional supplements. Insofar as the Google and
Ser No. 76630560
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Yellowpages.com search results are concerned, a review of
the excerpts reveals that none of the “hits” appears to use
the term “superkids” in connection with vitamins and/or
nutritional supplements. Finally, the goods identified at
the third-party websites, i.e., throat spray and salve, are
different from those involved herein. In short, the
evidence submitted by applicant does not constitute a
showing that SUPERKIDS marks have been so commonly adopted
for their suggestive significance in the field of vitamins
and nutritional supplements that purchasers would be
expected to look to other portions of such marks as the
distinguishing elements thereof. Nevertheless, even if
marks which consist of or contain the term SUPER KIDS are
considered to be weak, due to a high degree of
suggestiveness conveyed by such term, even weak marks are
entitled to protection where confusion is likely. Here,
notwithstanding any alleged weakness in the term SUPER
KIDS, for the reasons discussed, the applicant’s mark is
still substantially similar in sound, appearance,
connotation and commercial impression to registrant’s mark.
Finally, applicant argues that consumers are not
likely to be confused because consumers exercise greater
than normal care when purchasing health products such as
vitamins and nutritional supplements. The fact that
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consumers are conscious of health and nutritional matters,
however, does not necessarily mean that they are immune
from source confusion, particularly where as here,
identical and otherwise closely related health products
would be offered under substantially similar marks. In re
Decombe, 9 USPQ2d 1812 (TTAB 1988).
In view of the foregoing, we conclude that purchasers
and prospective customers, familiar with the registered
mark SUPERKIDS for nutritional supplements, would be likely
to believe, upon encountering the substantially similar
mark SUPER KID MULTI for applicant’s vitamins and
nutritional supplements, that such identical and otherwise
closely related goods emanate from or are associated with
or sponsored by the same source.
Decision: The refusal to register under Section 2(d)
is affirmed.