Primelife Research, LLC

Trademark Trial and Appeal Board

May 29, 2020

88216774 (T.T.A.B. May. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 29, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Primelife Research, LLC
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Serial No. 88216774
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David M. Tener of Caesar Rivise, PC
for Primelife Research, LLC

Jessica Hilliard, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
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Before Wolfson, Greenbaum, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Primelife Research, LLC (“Applicant”) seeks registration on the Principal Register
of the mark PRIMELIFE RESEARCH and Design, displayed below
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, with a disclaimer of “RESEARCH” for “Dietary
supplements; Dietary supplements for human consumption; Dietary and nutritional
supplements” in International Class 5.1 The application claims the colors blue and
silver as a feature of the mark, and contains the following description of the mark:
The mark consists of a blue square with a gradient that is
dark blue at left, light blue in the middle, and dark blue on
the right. A silver tree is positioned in the middle of the
blue square with the silver stylized word “PRIMELIFE”
underneath the tree and the silver stylized word
“RESEARCH” underneath that in smaller font.
The Examining Attorney refused registration under Trademark Act Section 2(d),
15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
COLOSTRUM PRIME LIFE in standard characters, with a disclaimer of
COLOSTRUM, for “Dietary and nutritional supplements” in International Class 5.2
After the Examining Attorney made the refusal final, Applicant appealed.
For the reasons set forth below, we affirm the refusal to register.

1 Application Serial No. 88216774 was filed December 4, 2018 based on alleged use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
2 Registration No. 3443915 issued on June 10, 2008, and has been renewed.
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II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the
similarities between the marks and the relatedness of the goods and services. See In
re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004);
Federated Foods, 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.”).
A. The Goods
“[L]ikelihood of confusion can be found ‘if the respective goods are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’” Coach
Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) (internal citations omitted). In analyzing the second DuPont factor, we look to
the identifications in the application and cited registration. See Stone Lion Capital
Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
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2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). A finding of likely confusion with respect to at least one
item in the identification suffices to establish likely confusion for this single-class
application. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB
2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
As identified, the goods are in-part identical, as both the application and cited
registration include dietary and nutritional supplements. Applicant offers no
argument regarding this factor.
The second DuPont factor thus weighs heavily in favor of likely confusion.
B. The Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, because the goods in the cited
registration are identical in part to Applicant’s, we presume that they travel through
the same channels of trade to the same classes of purchasers, considerations under
the third DuPont factor. See American Lebanese Syrian Assoc. Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (where the services were
legally identical, “the marketing channels of trade and targeted classes of consumers
and donors are the same”); see also In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption
in determining likelihood of confusion).
Thus, the third DuPont factor weighs in favor of likely confusion.
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C. The Number and Nature of Similar Marks for Similar Goods
Before reaching the degree of similarity of the marks, we address Applicant’s
evidence and argument under the sixth DuPont factor, “[t]he number and nature of
similar marks in use on similar goods,” DuPont, 177 USPQ at 567, as this may impact
the scope of protection accorded the cited registration. The Federal Circuit has held
that evidence of the extensive registration and use of similar marks by others in the
field can be powerful evidence of a mark’s weakness. Jack Wolfskin Ausrustung Fur
Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The strength of a mark may be assessed
based on its conceptual strength arising out of the nature of the mark itself and its
commercial strength, derived from the marketplace recognition of the mark. See In
re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010).
Unlike cases in which the Federal Circuit found weakness based on “a
considerable number of third parties[’] use [of] similar marks,” Juice Generation, 115
USPQ2d at 1674, Applicant has presented no evidence of actual use and thus no
commercial weakness evidence, and has submitted at most two registrations that
could be relevant to conceptual weakness. This falls far short of the volume of
evidence the Federal Circuit found convincing in Jack Wolfskin and Juice Generation.
See also In re I-Coat Co., LLC, 126 USPQ2d 1730, 1735 (TTAB 2018) (three third-
party uses are “well short of the volume of evidence found convincing in Jack Wolfskin
and Juice Generation.”); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745-46
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(TTAB 2018) (two third-party registrations for related but not identical services and
two registrations for identical services with a non-identical but similar mark were
not sufficient to prove Registrant’s mark was conceptually or inherently weak).
Almost all of the registrations relied on by Applicant are for goods or services quite
distinct from the dietary and nutritional supplements at issue, such as insurance
services, life insurance underwriting, credit card services, and prepared entrees.3
Such registrations have no bearing on the conceptual strength of the term for dietary
and nutritional supplements. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations where the
proffering party “has neither introduced evidence, nor provided adequate explanation
to support a determination that the existence of I AM marks for goods in other classes,
... support a finding that registrants’ marks are weak with respect to the goods
identified in their registrations”). Only two registrations (for PRIME LIFE in a
stylized font) involve supplements, but narrowly identify them and restrict their
trade channels as follows: “bovine and swine feed supplements sold direct to livestock
producers by owner or through owner’s dealers who sell direct to livestock producers
and not through any other consumer channel.”4 Given the small number and limited
nature of these third-party registrations, we deem them insufficient to narrow the
scope of protection for the cited registration, and find this DuPont factor neutral.

3 June 24, 2019 Response to Suspension Inquiry at 27-40.
4 Id. at 39-40.
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D. Similarity of the Marks
We next compare the marks and COLUSTRUM PRIME LIFE
“in their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567).
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” Inn at St. John’s, 126 USPQ2d at 1746 (citing In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
offered under the respective marks is likely to result. Cai v. Diamond Hong, Inc., 901
F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101
USPQ2d at 1721). Where, as here, the goods are in part legally identical, the degree
of similarity of the marks necessary to find likelihood of confusion lessens. Cai, 127
USPQ2d at 1801; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
We find that the marks look and sound similar in large part because of the
common wording PRIMELIFE/PRIME LIFE that dominates both marks. For rational
reasons, we may give more or less weight to a particular feature of a mark, such as a
common dominant element, provided the ultimate conclusion rests on a consideration
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of the marks in their entireties. Viterra, 101 USPQ2d at 1908. In Applicant’s mark
with its tree design and wording, purchasers are more likely to remember and use
the wording to request the goods. See Jack Wolfskin, 116 USPQ2d at 1134; Viterra,
101 USPQ2d at 1908 (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200
(Fed. Cir 1983)); Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560,
4 USPQ2d 1793, 1798 (Fed. Cir. 1987). The PRIMELIFE wording in particular stands
out because of its relatively large font and central location. The mark also contains
the word RESEARCH, but it appears in much smaller font, and Applicant has
disclaimed it as descriptive, reflecting its lesser significance in the likelihood of
confusion analysis, as consumers are less likely to rely on descriptive wording to
indicate source. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997) (in comparing THE DELTA CAFÉ to DELTA, the generic term CAFÉ
lacks sufficient distinctiveness to create a different commercial impression).
Although Applicant argues that consumers would not be aware of the disclaimer, so
it would not affect their perception of the mark, it is not the disclaimer itself but the
underlying reason for it that influences consumer perception. The descriptive or
generic nature of a term renders it less important in the comparison of marks because
consumers would be unlikely to focus on it to distinguish source. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). So, while we do not ignore
RESEARCH in the analysis, “the non-source identifying nature of the word[] and the
disclaimer[] thereof constitute rational reasons for giving those terms less weight in
the analysis.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed.
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Cir. 2018). The tree design in Applicant’s mark is another visual difference, but we
do not find it sufficient to distinguish the marks for consumers. We are unconvinced
by Applicant’s argument that the gradient blue background emphasizes the
importance of the tree, as it appears behind the wording too.
PRIME LIFE dominates the registered mark as well. Even though COLOSTRUM
forms the first part of the mark, PRIME LIFE is more significant, as “the public can
be said to rely more on the non-descriptive portion of [a] mark.” See Nat’l Data, 224
USPQ at 752. In the registered mark, COLOSTRUM is disclaimed, presumably
because the dietary and nutritional supplements feature colostrum, which is “a
yellowish liquid, especially rich in immune factors, secreted by the mammary gland
of female mammals a few days before and after the birth of their young.”5
We reject Applicant’s argument that consumers would not recognize
COLOSTRUM as generic or descriptive because the word is used less often than
PRIME and LIFE. To support the argument, first, Applicant submitted lists of TESS
search results for each of these three words,6 positing that the relative frequency with
which each appears in trademark applications or registrations shows that consumers
would not know the meaning of COLOSTRUM, and would consider it arbitrary or

5 We take judicial notice of this definition, sourced from The Random House Dictionary,
available at https://www.dictionary.com/browse/colostrum?s=t, accessed May 27, 2020. See
In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take
judicial notice of online dictionaries that exist in printed format or have regular fixed
editions).
6 August 13, 2019 Response to Office Action at 7.
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fanciful. Second, Applicant offered “ngram” viewer evidence from Google Books7 to
support the same proposition.
Although Applicant has recast its argument in other terms, essentially it contends
that its evidence shows that COLOSTRUM is a stronger component of the registered
mark, while PRIME LIFE is weaker. Notably, as discussed above, COLOSTRUM has
a generic or descriptive significance in relation to supplements, and mere TESS lists
of applications and registrations, without additional context, lack probative value to
show consumer understanding of the term in relation to these goods. See In re Peace
Love World Live, LLC, 127 USPQ2d 1400, 1405, n.17 (TTAB 2018) (TESS list does
not include enough information to be probative when it lacks goods or services); see
also Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (“We cannot
determine from a mere [TESS] listing like this the nature of the goods or services for
which these purported marks have been applied-for or registered…”). Thus, mere
TESS listings of marks that consist of or include each of the terms are not probative
of the dominance of any component of the registered mark. Similarly, Applicant
provides no context or evidence even to suggest that the Google Books results reflect
consumer understanding of or familiarity with the terms. The ngram results certainly
do not support Applicant’s contention on their face. Thus, although we have
considered Applicant’s evidence and arguments, as Applicant itself notes in its Brief,

7 Id. at 8-13 According to Applicant, the ngram graph for “colostrum” shows the term appears
less often than “prime” or “life” in those “books analyzed by Google.” Applicant provided no
more specific explanation of the relevance of the ngram evidence, and no context for it, to
assist in our assessment of its probative value.
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consumers often “select specific supplements to address specific health concerns,”8
such that consumers would recognize COLOSTRUM in the registered mark as a
reference to the key ingredient in the identified supplements.
For the foregoing reasons, the marks’ connotations and commercial impressions
are similar because of the common dominant wording. We find that consumers would
attribute the same meaning to PRIMELIFE and PRIME LIFE. While the additional
wording in each mark contributes to its overall meaning and connotation, as
explained above, the respective additional words are descriptive or generic, and
consumers would perceive them as references to features of the identified
supplements. The tree design in Applicant’s mark appears decorative, and as
Applicant acknowledges, reinforces the sense of “life”9 referred to in the wording of
both marks, and consumers would not rely on it to distinguish the marks. We find
that consumers encountering the marks likely would view the goods as different types
of supplements offered from the same source.
Given their resemblance in sound, appearance, connotation and commercial
impression, we find the marks to be similar. This factor weighs in favor of a likelihood
of confusion.
E. Sophisticated Purchasing
Relying on the nature of the goods apparent from the identifications in the
application and cited registration, Applicant contends that consumers of supplements

8 4 TTABVUE 16.
9 4 TTABVUE 12.
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engage in careful purchasing decisions. “[W]e must be sensitive to the fact that
patients [or consumers] from the general public will not exercise the degree of care
exhibited by medical professionals.” Alfacell Corp. v. Anticancer Inc., 71 USPQ2d
1301, 1306 (TTAB 2004). We consider ordinary members of the public as potential
purchasers of the dietary and nutritional supplements, and “Board precedent
requires the decision to be based ‘on the least sophisticated potential purchasers.’”
See Stone Lion Capital Partners, 110 USPQ2d at 1163. Even if these ordinary
members of the public exercise some greater degree of care in selecting supplements
based on their ingredients, as noted above, the consumers may still mistakenly
believe that the supplements are different varieties coming from the same source.
III. Conclusion
The overall similarity of the marks for identical goods that move in the same
channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed.