ProMark Brands Inc.

Trademark Trial and Appeal Board

Sep 7, 2004

No. 75941977 (T.T.A.B. Sep. 7, 2004)

Mailed: 9/7/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re ProMark Brands Inc.
________
Serial No. 75941977
_______
Bert A. Collison and Gianfranco G. Mitrione of Duane Morris
for applicant.
Ira Goodsaid, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by ProMark Brands Inc. to
register the mark shown below
for “baby food.”1
1 Application Serial No. 75941977, filed March 11, 2000, based on
an allegation of a bona fide intention to use the mark in
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75941977
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used on applicant’s goods, so
resembles the previously registered mark NATURE’S GOODNESS
for “dietary supplements, vitamins and minerals, and herbs,
botanicals, extracts, concentrates, constituents and
combinations for use as dietary supplements”2 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant contends that the marks are different in
sound, appearance, meaning and commercial impression.
Applicant points to the stylized print and the heart design
feature in its mark, the latter of which is “so intertwined
with the words NATURE’S GOODNESS” that, according to
applicant, “[t]he purchasing public would not mentally
dissect applicant’s mark but would recognize the mark in
its entirety and not simply by the words alone.” (Brief,
p. 4). Applicant contrasts this with the cited mark which
“appears on registrant’s label without a design in print so
commerce. Applicant subsequently filed an amendment to allege
use setting forth a date of first use anywhere and a date of
first use in commerce of July 31, 2000.
2 Registration No. 2576369, issued June 4, 2002.
Ser No. 75941977
3
small that it is extremely difficult for a potential
purchaser to determine whether the mark is associated with
the registrant’s dietary supplements.” (Brief, p. 4). As
to sound, although applicant admits the similarity therein,
applicant asserts that sound does not play a part in the
sale of applicant’s goods because “a potential purchaser
does not order these products by ‘calling for the goods’
but merely reaches up and takes whatever baby food product
he or she has been using.” (Brief, p. 5). As to the
goods, applicant states that baby food is different from
dietary supplements, and that “parents take great care in
choosing food for their babies and it is not logical to
believe that parents, as sophisticated consumers, would be
so confused as to buy registrant’s goods rather than
applicant’s baby food to feed their baby.” (Brief, p. 7).
Applicant further contends that its baby food is sold in
grocery stores and supermarkets in a particular section
whereas registrant’s dietary supplements are sold in
vitamin or health food specialty stores. Lastly, applicant
highlights the absence of any instances of actual
confusion, setting forth details of its own significant
sales and advertising figures. In urging reversal of the
refusal, applicant submitted a copy of registrant’s label
bearing the registered mark; copies of a variety of
Ser No. 75941977
4
applicant’s promotional items bearing the mark sought to be
registered, including coupons and advertisements for its
baby food, as well as excerpts taken from applicant’s web
site on the Internet; copies retrieved from the PTO’s TARR
database of fifteen third-party registrations of marks
which include, as a portion thereof, the terms “NATURAL”
and/or “GOODNESS,” or variations thereof, in the food
field; and the affidavit of Stephen Ward, a private
investigator in intellectual property matters.
The examining attorney maintains that the literal
portions of the marks are identical, and that the cited
mark, being presented in typed form, is not limited to any
particular depiction. According to the examining attorney,
neither the stylization nor the design feature of
applicant’s mark sufficiently distinguishes it from
registrant’s mark. With respect to the goods, the
examining attorney claims that baby food and dietary
supplements are related products. Further, the examining
attorney points to the absence of any restrictions in the
respective identifications of goods and, thus, contrary to
applicant’s arguments, it must be presumed that the goods
move in normal trade channels for such goods. The
examining attorney concludes that the trade channels and
classes of purchasers would overlap. In support of the
Ser No. 75941977
5
refusal, the examining attorney introduced four third-party
registrations that show that entities have adopted a single
mark for both types of goods involved herein.3
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 Company, 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
marks and the similarities between the goods and/or
services. 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).
With respect to the marks, we recognize that there are
similarities between them in sound, appearance and meaning.
We find, however, that the highly suggestive nature of the
marks is a significant factor to consider in this case.
3 The examining attorney submitted six additional third-party
registrations to support the same proposition. These
registrations, however, are not use-based, but rather were
registered pursuant to Section 44 of the Trademark Act.
Accordingly, these registrations are of no probative value in our
analysis.
Ser No. 75941977
6
See In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910
(TTAB 1988). The respective marks convey the notion that
the product sold thereunder comes from the goodness of
nature. Or, to put it more simply, that the product is
“natural.” This meaning is highly suggestive, and it
hardly need be stated that this suggestion is pervasive in
the food industry. The fifteen third-party registrations
of marks including the term “NATURE” and/or “GOODNESS” or
variations thereof highlight the fact that “nature” and
“goodness” have in the past appealed to others in the food
industry as appropriate terms for inclusion in a mark to
convey the “natural” suggestion. The mere common presence
in the two marks of the highly suggestive words “NATURE’S
GOODNESS,” which convey the ubiquitous notion that the
product is “natural,” is insufficient here to support a
finding of likelihood of confusion. See: In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir.
1986); and Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693 (CCPA 1976). Also, the addition of the
distinctive apple/heart design in applicant’s logo mark
serves to further distinguish this mark from registrant’s
mark.
We turn next to the second du Pont factor, that is,
the similarity or dissimilarity of the parties’ respective
Ser No. 75941977
7
goods and/or services. As has been often stated, there can
be no “per se” rule that all food products are related by
nature or by virtue of their capability of being sold in
the same grocery stores and supermarkets. Interstate
Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926,
198 USPQ 151 (CCPA 1978); and Hi-Country Foods Corp. v. Hi
Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987). At the same
time, it is not necessary that the goods and/or services of
the parties be similar or competitive, or even that they
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods and/or services of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods and/or services are
such that they would or could be encountered by the same
persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); and In re International Telephone &
Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
The goods are distinctly different. Although both
baby food and dietary supplements are presumed to travel in
the same trade channels (grocery stores and supermarkets)
Ser No. 75941977
8
to the same classes of ordinary purchasers,4 that nexus is
too tenuous a connection on which to base a finding of
likelihood of confusion herein, especially in view of the
suggestiveness of the marks.
The evidence submitted by the examining attorney to
show the relatedness of baby food and dietary supplements
is sparse. The examining attorney introduced only four
use-based third-party registrations (and one registrant
owns two of them) which show that entities have adopted a
single mark for both types of goods. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods are of a type which
may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993). However, because
only three entities could be found with registrations for
both baby food and dietary supplements, we cannot say that
consumers would assume that both types of goods would
4 The issue of likelihood of confusion must be determined on the
basis of the goods as they are identified in the involved
application and registration. Canadian Imperial Bank v. Wells
Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir.
1987); and In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Inasmuch
as the identifications of goods herein do not include any
limitations, it is presumed that the goods move in all normal
channels of trade, and that they are available to all classes of
purchasers. Thus, applicant’s evidence that the goods are sold
in different types of stores is of no consequence. See In re
Bercut-Nandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Ser No. 75941977
9
emanate from the same source. The Office has simply not
provided sufficient evidence for us to find that these
goods are related.
The last factor of significance is the absence of any
known instances of actual confusion, according to
applicant, despite applicant’s extensive use of its mark.
Applicant asserts that the involved marks have been
contemporaneously used since 2001, and sets forth
substantial sales and advertising figures. During 2001-
2003, applicant put total sales of its NATURE’S GOODNESS
baby food at $216 million, and total advertising
expenditures at $110 million. Thus, there appears to have
been a meaningful opportunity for confusion to occur in the
marketplace, yet applicant is not aware of any confusion.
The absence of actual confusion weighs in favor of
applicant.
Based on the record before us, we see the examining
attorney’s assessment of the likelihood of confusion as
amounting to only a speculative, theoretical possibility,
especially in view of the highly suggestive nature of the
marks, and the differences between the goods.
Decision: The refusal to register is reversed.