Primary Investments Group Limited

Trademark Trial and Appeal Board

Sep 21, 2006

No. 76537869 (T.T.A.B. Sep. 21, 2006)

Mailed:
September 21, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Primary Investments Group Limited
________

Serial No. 76537869
_______

Thomas W. Cook for Primary Investments Group Limited.

Alicia P. Collins, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Bucher, Zervas and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Primary Investments Group Limited seeks registration on
the Principal Register of the mark LIBIDO-MAX for goods
identified in the application as “vitamins; nutritional
supplements” in International Class 5.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register applicant’s mark based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining

1 Application Serial No. 76537869 was filed by Primary
Investments Group Limited, a British Virgin Islands corporation,
on August 15, 2003 based upon applicant’s allegation of a bona
fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76537869
- 2 -
Attorney has found that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
LIBIDO, which is registered for “vitamin and mineral
supplements”2 also in International Class 5, as to be likely
to cause confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney
submitted briefs, but applicant did not request an oral
hearing. We affirm the refusal to register.
Applicant argues that the cited mark should be accorded
a narrow scope of protection inasmuch as the word “libido”
has strong descriptive characteristics when applied to
vitamins and nutritional supplements marketed as compounds
to enhance the user’s libido; that especially in light of
the narrow scope of protection that should be accorded the
registrant’s non-distinctive mark, the differences in
appearance, sound, connotation, and commercial impression
between the two marks obviate any likelihood of confusion
with registrant’s mark; that the Trademark Examining
Attorney has failed in her efforts to show that

2 Registration No. 2040060 issued to Lifesource International
Inc., on February 25, 1997, claiming first use anywhere and first
use in commerce at least as early as July 26, 1994; Section 8
(six-year) affidavit accepted and Section 15 affidavit
acknowledged.

Serial No. 76537869
- 3 -
manufacturers often use the term “max” to designate the
“maximum” or “maximal” version of a base product.
By contrast, the Trademark Examining Attorney argues
that the marks of the applicant and the registrant are
confusingly similar in appearance, sound, and commercial
impression; that the goods of the parties are closely
related; that the term “max” means “the maximum” or
“maximal,” and that third-party registrations and Internet
excerpts demonstrate that the term MAX is an extremely weak
term in this field, used to suggest that the goods in
question provide the maximum or maximal benefit to
consumers.
Analysis: Likelihood of Confusion
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Serial No. 76537869
- 4 -
The goods
We turn first to the du Pont factor focusing on the
relationship of the goods as identified in the application
and cited registration. The Trademark Examining Attorney
argues that the goods are very closely related:
First, as identified in the application and
registration, the goods of the parties are
virtually identical, in part. The
Applicant’s mark is intended to be used in
connection with “vitamins,” while the
registered mark is used in connection with
“vitamin supplements.”

Second, as identified in the application and
registration, the Applicant’s “nutritional
supplements” wholly incorporate the
registered goods, “vitamin and mineral
supplements.” …

Third, … copies of third-party registrations
… illustrate that the goods of the parties
are likely to be offered by common sources…

Trademark Examining Attorney’s appeal brief, unnumbered
pages 9 – 10.
In this case, applicant’s goods (vitamins and
nutritional supplements) and registrant’s goods (vitamin and
mineral supplements) are, despite differences in
terminology, essentially identical. In fact, at no time has
applicant ever disputed the fact that the goods are closely
related. We agree with the Trademark Examining Attorney
that for purposes of our legal analysis, these respective
goods are essentially interchangeable. Furthermore, it is
Serial No. 76537869
- 5 -
clear from copies of third-party registrations and Internet
excerpts that even those goods not deemed to be identical
are closely related, as they are know to emanate from a
single source under the same mark:
FIBER-PSYLL for “vitamin supplements; dietary
supplements; herbal supplements;
and nutritional supplements” in
International Class 5;3
WN PHARMACEUTICALS for “nutritional supplements;
dietary supplements; herbal
supplements; vitamins; multi-
vitamins; mineral supplements;
vitamin and mineral supplements;
and dietary and herbal supplements
…” in International Class 5;4

for “dietary supplements,
nutritional supplements, food
supplements, herbal supplements,
vitamin and mineral supplements” in
International Class 5;5

3 Registration No. 2525276 issued on January 1, 2002 claiming
first use anywhere and first use in commerce at least as early as
May 29, 2001.
4 Registration No. 2906140 issued on November 30, 2004
claiming first use anywhere at least as early as August 19, 1996
and first use in commerce at least as early as September 21,
2000.
5 Registration No. 2871386 issued on August 10, 2004 claiming
first use anywhere and first use in commerce at least as early as
February 12, 2001. The mark consists of a silhouette of a man’s
partial body with a heart, heartbeat waves and aura radiating
from his chest.
Serial No. 76537869
- 6 -

ENDOBIOGENIC CONCEPT for inter alia “Herbal
supplements, homeopathic
supplements, Nutraceuticals for
use as dietary supplements,
nutritional supplements, vitamin
and mineral supplements …” in
International Class 5;6
PHYTO-AROMATHERAPY
SEASONAL CONCEPTS
for inter alia “Herbal
supplements, homeopathic
supplements, Anthracitic for use
as dietary supplements,
nutritional supplements, vitamin
and mineral supplements …” in
International Class 5;7

for “food, herbal and dietary
supplements; vitamin and mineral
supplements; dietary supplements
for augmentation of human growth”
in International Class 5;8
FOOD ORIGINS for “nutritional supplements;
herbal supplements; mineral
supplements; vitamins; vitamin
supplements; minerals; herbs and
herbal tinctures” in
International Class 5;9

6 Registration No. 2915086 issued on December 28, 2004
claiming first use anywhere and first use in commerce at least as
early as January 1, 2003.
7 Registration No. 2882933 issued on September 7, 2004
claiming first use anywhere and first use in commerce at least as
early as February 1, 2003.
8 Registration No. 2795040 issued on December 16, 2003
claiming first use anywhere and first use in commerce at least as
early as August 2002. The mark consists of stylized human
figures on a multi-color arch with the literal elements of the
mark appearing below.
9 Registration No. 2902434 issued on November 9, 2004 claiming
first use anywhere and first use in commerce at least as early as
March 30, 2004.
Serial No. 76537869
- 7 -

for inter alia “nutritional
products, namely, dietary
supplements, nutritional
supplements, nutritionally
fortified drinks, vitamin
supplements” In International
Class 5;10
for “ … vitamins; vitamin and
mineral supplements; vitamin
drops; nutritional
supplements; … medicated
chewing gum for supplying
vitamins …” in International
Class 5;11
LIVE SMARTER for inter alia “… nutritional
substances to promote physical
health, mental health, and
general well being, namely
nutritional supplements,
vitamins, mineral supplements,
neutraceuticals, dietary
supplements, herbal
supplements …” in
International Class 5;12
TOOLS FOR WELLNESS for inter alia “… nutritional
substances to promote physical
health, mental health, and
general well being, namely
nutritional supplements,
vitamins, mineral supplements,
neutraceuticals, dietary
supplements, herbal
supplements …” in
International Class 5;13

10 Registration No. 2920639 issued on January 25, 2005 claiming
first use anywhere and first use in commerce at least as early as
July 25, 2000.
11 Registration No. 2899607 issued on November 2, 2004 claiming
first use anywhere at least as early as February 14, 1996 and
first use in commerce at least as early as May 7, 1996.
12 Registration No. 2912840 issued on December 21, 2004
claiming first use anywhere at least as early as June 4, 2003 and
first use in commerce at least as early as June 18, 2003.
13 Registration No. 2910580 issued on December 14, 2004
claiming first use anywhere at least as early as December 8, 1999
and first use in commerce at least as early as February 1, 2000.
Serial No. 76537869
- 8 -
UMCKA COLDCARE for “vitamins, mineral
supplements, dietary
supplements …” in
International Class 5;14
BEACHBODY for inter alia “meal
replacement protein bars,
dietary supplements and diet
aids, namely vitamins and
mineral supplements” in
International Class 5;15
CARB SELECT for “nutritional supplements,
herbal supplements, vitamin
supplements, mineral
supplements, vitamin and
mineral supplements, dietary
supplements, dietary food
supplements and food
supplements, all in bar form”
in International Class 5;16
E-LYTE SPORT for inter alia “dietary
supplements, vitamin
supplements, mineral
supplements, nutritional
supplements, vitamins,
nutritionally fortified water,
dietary food supplements” in
International Class 5;17
YOUTH FLEX for “vitamins and mineral
supplements” in International
Class 5;18

14 Registration No. 2925923 issued on February 8, 2005 claiming
first use anywhere and first use in commerce at least as early as
August 1, 2003.
15 Registration No. 2862904 issued on July 13, 2004 claiming
first use anywhere and first use in commerce at least as early as
May 10, 1999.
16 Registration No. 2918189 issued on January 11, 2005 claiming
first use anywhere and first use in commerce at least as early as
December 1, 2003.
17 Registration No. 2891450 issued on October 5, 2004 claiming
first use anywhere and first use in commerce at least as early as
January 1, 2000.
18 Registration No. 2920099 issued on January 18, 2005 claiming
first use anywhere and first use in commerce at least as early as
October 7, 2004.
Serial No. 76537869
- 9 -

Detoxx Box for “nutraceuticals for the treatment of
toxicity; dietary supplements, vitamin
supplements, mineral supplements,
nutritional supplements, vitamins,
nutritionally fortified water, dietary
food supplements” in International Class
5;19 and

for “vitamins; nutritional supplements;
mineral supplements; nutraceuticals for
use as a dietary supplement; diet
capsules; diet pills; dietary drink mix
for use as a meal replacement; dietary
food supplements; food for medically
restricted diets; meal replacement and
dietary supplement drink mixes; herbal
supplements; appetite suppressants;
dietary supplements; meal replacement
drinks; meal replacement powders;
nutritional drink mix for use as a meal
replacement; and herbal and nutritional
supplements” in International Class 5.20

These third-party registrations, which are based on use
in commerce, and which individually cover a number of
different items, provide some support for the Trademark
Examining Attorney’s position that vitamins and a variety of
dietary/mineral supplements are related because they show
that these goods have been registered by the same source
under the same mark. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) [Although third-party
registrations “are not evidence that the marks shown therein

19 Registration No. 2883426 issued on the Supplemental Register
on September 7, 2004 claiming first use anywhere and first use in
commerce at least as early as August 1, 2002.
20 Registration No. 2912951 issued on December 21, 2004
claiming first use anywhere and first use in commerce at least as
early as March 29, 2003. The mark consists of a stylized eye
design.
Serial No. 76537869
- 10 -
are in use on a commercial scale or that the public is
familiar with them, [they] may have some probative value to
the extent that they may serve to suggest that such goods or
services are the type which may emanate from a single
source”]. See also In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1786 (TTAB 1993).
The Trademark Examining Attorney also found a variety
of websites having listings for vitamins, vitamin
supplements, herbs, herbal remedies, herbal supplements,
mineral supplements, nutritional supplements, health
supplements and dietary supplements.21
As a result, we find that this du Pont factor clearly
favors the position taken by the Trademark Examining
Attorney herein.
Channels of trade
We turn next to the related du Pont factor focusing on
the similarity or dissimilarity of established, likely-to-
continue trade channels. It is clear from the third-party
registrations that some of the same manufacturers apply the
same mark to vitamins and dietary supplements. On this
record, we presume that they move in all appropriate

21 www.earlychildhoodlinks.com, www.greatestherbsonearth.com,
www.meganutrition.com, www.pharmj.com and www.baby-place.com.

Serial No. 76537869
- 11 -
channels of trade and to all appropriate customers for those
goods as identified, and hence could be sold in the same
retail establishments, e.g., health food outlets,
drugstores, etc., and would be purchased by the same
ordinary classes of consumers. If these purchasers were to
encounter the products under the same or similar marks, it
would not be unreasonable for them to assume, mistakenly,
that they originate from the same source. In re Elbaum,
211 USPQ 639 (TTAB 1981). Hence, this factor too favors the
position taken by the Trademark Examining Attorney.
Conditions Under Which Sales are Made
As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing, there is
nothing in this record showing that customers of vitamin
supplements, mineral supplements, nutritional supplements
and vitamins are anything other than ordinary consumers.
Suffice it to say that generally where such goods are sold
at relatively low costs, purchasers are assumed to exercise
a lower standard of purchasing care and attention. See
Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289,
292 (CCPA 1962). See also In re Decombe, 9 USPQ2d 1812,
1814-15 (TTAB 1988); and In re Pellerin Milnor Corp., 221
Serial No. 76537869
- 12 -
USPQ 558, 560 (TTAB 1983). Even if we were to assume that
such consumers are conscious of health and nutritional
matters, it does not mean that they are necessarily
knowledgeable and sophisticated when it comes to
discriminating as to the source or sponsorship of goods
directed principally to the health and nutritional field.
Accordingly, this du Pont factor appears to be a
neutral factor in our likelihood of confusion determination.
The number and nature of similar marks
As to the du Pont factor focusing on the number and
nature of similar marks in use on similar goods, applicant
argues that the cited mark is merely descriptive and hence
should be accorded a narrow scope of protection, i.e., that
even slight differences in the form of a later-adopted,
LIBIDO-formative mark are sufficient to overcome a finding
of likelihood of confusion with the cited mark.
To support its position that the word “libido”
describes the purpose of vitamins and mineral supplements
for enhancing libidos, applicant searched the “health &
personal care” products tab on www.amazon.com for the word
“libido,” and obtained 781 items, of which the record
contains the first twenty-four items, including Sativol’s
extra libido for men and women, Avlimil libido enhancer for
Serial No. 76537869
- 13 -
women, Motivator (“Motivate-Her”) all-natural libido
enhancer for women, Magna-Rx’s Lava libido enhancer for
women, and Emerita/ProGest’s libido formula for women.
Similarly, applicant searched for the word “libido,” on
www.drugstore.com and obtained forty-one items, of which the
record contains all of these items, including Lioness
women’s sexual libido enhancer, Emerita libido formula for
women, Vahard men’s sexual libido enhancer, Applied
Nutritions’ Libido-Max,22 and Irwin Naturals’ Steel-Libido
for women.23 Applicant also submitted web pages about Super
Libido Formula for men, Pyramid Nutritions Testosterol Max
Libido formula, Gaia Herbal’s women’s libido liquid phyto-
caps, Emerita’s libido formula, Fountain of Youth’s libido
lift lotion, Christopher’s Herbal libido formula, Hbee’s
Lusty Libido for her, Sensua’s women’s libido formula,
Avlimil’s female libido enhancer, Emerita/ProGest’s libido
formula dietary supplement for women, as well as a number of
similar products from www.lifesvigor.com and
www.naturalwellbeing.com.
Consistent with this common usage in naming such
products, applicant argues that the cited mark is “weak”

22 Applicant does not explain the relationship between itself
and Applied Nutritions.
23 Again, Applicant does not explain the relationship between
itself and Irwin Naturals. See Registration No. 3080315,
footnote 24, infra.
Serial No. 76537869
- 14 -
inasmuch as there are a number of third-party registrations
for identical or similar goods which composite marks include
the word “Libido.” Applicant properly made of record copies
of registrations covering the following marks, from which
applicant argues that the word “Libido” is descriptive or so
commonly used that members of the public will look to other
elements to distinguish the source of the goods:
STEEL-LIBIDO for “vitamins; nutritional
supplements; food
supplements; nutritional
drink mixes; nutritional
drink mixes for use as a
meal replacement” in
International Class 5;24
DOCTOR’S LIBIDO LIFT for “topical preparation,
namely, a testosterone
enhanced product to enhance
and promote sexual
performance, endurance, and
desire” in International
Class 5;25

for “nutritional
supplements, vitamins, and
herbal supplements in
tablet, capsule, powder and
liquid forms, namely
testosterone complex used to

24 Registration No. 3080315 issued to Primary Investments Group
Limited (applicant herein) on April 11, 2006 claiming first use
anywhere and first use in commerce at least as early as April 30,
2002; no claim is made to the word “libido” apart from the mark
as shown.

25 Registration No. 2648867 issued on November 12, 2002
claiming first use anywhere and first use in commerce at least as
early as May 18, 2001.
Serial No. 76537869
- 15 -
enhance human libidos” in
International Class 5;26

for “nutritional
supplements, vitamins, and
herbal supplements, in
tablet, capsule, and liquid
forms” in International
Class 5;27 and
LIBIDO 2 for “energy drinks, namely
sports drinks enhanced with
vitamins, minerals,
caffeine, nutrients, amino
acids or herbs and aerated
water” in International
Class 32.28

However, we find that none of these marks is as close
to the registered mark as is applicant’s involved mark.
These registrations all contain other seemingly arbitrary,
or at the very least, suggestive, matter, and several of
these composite marks have the word “libido” disclaimed –
presumably in those specific contexts appearing as non-
distinctive matter. Certainly the record is devoid of any

26 Registration No. 2645869 issued to Maximum International
Nutrition Inc. on November 5, 2002 claiming first use anywhere
and first use in commerce at least as early as September 24,
2001; no claim is made to the words “testosterone” and “libido
complex” apart from the mark as shown.
27 Registration No. 2691948 issued to Maximum International
Nutrition Inc. on March 4, 2003 claiming first use anywhere and
first use in commerce at least as early as May 2000; no claim is
made to the words “maximum libido complex” apart from the mark as
shown.
28 Registration No. 2962592 issued on June 14, 2005 claiming
first use anywhere and first use in commerce at least as early as
May 27, 2004.
Serial No. 76537869
- 16 -
marks in this field, other than registrant’s cited mark,
consisting of nothing distinctive beyond the word “Libido.”
We note that in support of its position, applicant has
also included in the record dozens of third-party
registrations where the word “libido” is used in the
identification of goods for vitamins and supplements not
unlike those being marketed by the cited registrant and the
other third-party merchants and manufacturers of alleged
libido-enhancing products.
In view of all of this evidence, we conclude that
“Libido” is a well-recognized term in the field of vitamins
and supplements that suggests to the prospective users the
promise of enhanced sexual drive and performance. We
therefore find that it is a highly suggestive term and that
the registration is entitled to a very narrow scope of
protection, but nonetheless one that is entitled to the
presumptions of Section 7(b) of the Trademark Act. After a
careful reading of their respective briefs, it seems that
perhaps the Trademark Examining Attorney and applicant are
simply disagreeing about just how limited this zone of
protection should be in the instant case.
In this context, applicant argues that the -MAX suffix
added to the end of LIBIDO in its mark is sufficient to
distinguish its mark from the cited mark. If LIBIDO is
Serial No. 76537869
- 17 -
accorded a narrow scope of protection, it would appear that
any distinctive term added to registrant’s mark obviates a
likelihood of confusion. In that regard, then, our
attention turns to the strength of the suffix that applicant
has added.
The Trademark Examining Attorney has placed into the
record several definitions showing that “max” is a shortened
from of “maximum” or “maximal.” She has also included
websites for EcdyMax HP muscle-building supplements, Max
Stamina libido booster, BarleyMax – “A dietary supplement
for maximum nutrition,” SecretaMax HGH stimulator, as well
as third-party registrations for ULTRA MAX vitamins, ESTRO
MAX nutritional and dietary supplements, VIRIL MAX
nutritional and dietary substances, BIO-MAX vitamin, mineral
and nutritional dietary supplements, JOINT MAX nutritional
supplements, ECDY MAX dietary and nutritional supplements,
SKYMAX nutritional supplements, GREEN TEA MAX nutritional
supplements, HEIGHTMAX dietary supplements, and BONEMAX
vitamins and food supplements.
Furthermore, in response to applicant’s request for
reconsideration, the Trademark Examining Attorney placed
into the record
… excerpts retrieved from the Internet which
illustrate that manufacturers of vitamins and
Serial No. 76537869
- 18 -
supplements often market a “max” version of a
base product. For this reason, because of
the similarity in the goods of the applicant
and the registrant, it is likely for
consumers to believe that the goods of the
parties emanate from the same source, the
applicant’s goods being the max version of
the registrant’s base product.

Denial of request for reconsideration, unnumbered page 2.
She attached web pages showing Bricker Labs’ Big-C
supplement and Big-C Max/“Maximal supplement,” Spectrum
Essentials’ Essential Fiber and Essential Max, Naturopathica’s
FatBlaster and FatBlaster Super Strength Max, Nature’s Way’s
Ginkgold and Ginkgold Max, and Champion Nutritions’ MET
Endurance and MET Max. While applicant argues that, in
reality, these examples represent “different marks for
different products,” we find that given the way this overall
record demonstrates that the word “Max” is used with
vitamins and supplements, it stands to reason that potential
consumers might well be inclined to believe that LIBIDO-MAX
is an extra-strength, or follow-on, version of LIBIDO.
The marks
With that in mind, we turn to the du Pont factor
focusing on the similarity of the marks in their entireties.
We must consider whether the marks are similar in sound,
appearance, meaning, and commercial impression. Palm Bay
Serial No. 76537869
- 19 -
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We
also note that if the respective goods of the parties are
essentially identical, as is the case herein, it has been
held that “the degree of similarity [of the marks] necessary
to support a conclusion of likely of confusion declines.”
Century 21 Real Estate v. Century Life of America, 970 F.2d
874, 877, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant argues that these marks are not confusingly
similar because its mark contains the word “Max” not found
in the registered mark, that this suffix represents an
additional syllable, creates a sound not found in the
registered mark, and creates a connotation and commercial
impression different from those of the registered mark.
Applicant has taken registrant’s LIBIDO mark in its
entirety, and merely added the suffix, -MAX. While we have
determined that the word “libido” is a highly suggestive and
commonly-used term for these goods, we cannot disregard the
cited registration. Moreover, we find that as to
connotation and commercial impression, the added term, -MAX,
appears to be a laudatory appendage, whether it refers to an
extra-strength version of a base product, the intensity of
the involved dosage or an improved version of an earlier
Serial No. 76537869
- 20 -
product. Perhaps not unlike the word PLUS, “ … [MAX] is
both a laudatory word, implying a higher quality product …
and a highly suggestive word indicating that the product
adds an additional value or quality to something else or
contains an additional ingredient.” Plus Products v.
Natural Organics, Inc., 204 USPQ 773, 780 (TTAB 1979)
[hence, in dealing with vitamins, minerals and food
supplements, NATURE’S PLUS is not confusingly similar to
PLUS].
As for visual appearance, we believe that applicant’s
mark and registrant’s mark are very similar. As argued by
the Trademark Examining Attorney, it is often the first part
of the mark that is most likely to be impressed upon the
mind of the purchaser and remembered. Presto Products, Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988). Both
marks herein begin with the term “Libido,” and “-Max” is
similarly not particularly distinctive for these goods.
While we compare the marks in their entireties, our primary
reviewing court has held that in articulating reasons for
reaching a conclusion on the question of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature or portion of a mark. That is, one
feature of a mark may have more significance than another.
Serial No. 76537869
- 21 -
See Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987) [because the word
“sweats” is commonly used as a highly descriptive name for
fleece garments, no likelihood of confusion between
opposer’s , the word “sweats” disclaimed, sweats jj,
and , and applicant’s SUPER SWEATS, the word
“sweats” disclaimed]; and In re National Data Corporation,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) [CASH
MANAGEMENT ACCOUNT likely to be confused with THE CASH
MANAGEMENT EXCHANGE]. While applicant would use this line
of argument to have us minimize our attention to the
“Libido” portion of its mark, we find that it is also a
reason that prospective consumers would tend to minimize the
visual impact of the “-Max” portion of its mark in
distinguishing between these marks.
Similarly, as to sound, adding this fourth syllable to
registrant’s mark in a position where consumers of this type
of product are quite accustomed to seeing the suffix,
“-Max,” limits the distinguishing capability of any
perceived aural differences between these marks as well.
Certainly, similarity as to any one of the factors of
sight, sound and meaning may be sufficient to support a
finding that the marks are confusingly similar –
Serial No. 76537869
- 22 -
particularly when they are used on goods that are
essentially identical. However, in this case we need not be
concerned with focusing on only one of these factors because
we find that applicant’s mark is, at a minimum, very similar
to registrant’s mark with regard to sound, appearance,
meaning, and commercial impression.
In sum, given the similarity of these marks, we find
that their use on such closely-related goods is likely to
result in confusion.
Conclusion
Upon careful review of this record and the arguments,
we believe that purchasers and potential purchasers,
including those with an interest in health and nutrition,
who are familiar with registrant’s LIBIDO vitamin and
mineral supplements, who might then encounter applicant’s
LIBIDO-MAX vitamins and nutritional supplements, are likely
to believe, because of the similarities of the marks, that
all of these vitamins and supplements come from the same
source.
Finally, to the extent that any of applicant’s
arguments may serve to create any possible doubt as to our
conclusion of a likelihood of confusion, according to
precedent, we must resolve any such doubt in favor of the
Serial No. 76537869
- 23 -
prior user and registrant. See In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984); and In re Pneumatiques Caoutchouc Manufacture et
Plastiques Kelber-Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA
1973).
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.