Rainbow Light Nutritional Systems, LLC

Trademark Trial and Appeal Board

Mar 14, 2017

No. 86572769 (T.T.A.B. Mar. 14, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: March 14, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rainbow Light Nutritional Systems, LLC
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Serial No. 86572769
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Anthony Robinson, General Counsel for Rainbow Light Nutritional Systems, LLC.

Justine D. Parker, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Taylor, Bergsman and Greenbaum,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Rainbow Light Nutritional Systems, LLC (“Applicant”) seeks registration on the
Principal Register of the mark NutriStart (in standard characters) for “dietary and
nutritional supplements,” International Class 5.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark NUTRASTART (typed drawing

1 Application Serial No. 86572769 was filed on March 23, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and
use in commerce since at least as early as January 1, 2006.
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form) for “dietary supplements, vitamins, minerals, herbal supplements, and
concentrated dietary supplements for nutritional drinks, all sold to independent
distributors outside of retail store channels,” in Class 5, as to be likely to cause
confusion.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Our determination under Section 2(d) is based on 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, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind.,
Inc., 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each
du Pont factor that is relevant and for which there is evidence of record. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). 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 In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental

2 Registration No. 2654307, registered November 26, 2002; renewed.
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inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”); see also In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
A. The similarity or dissimilarity and nature of the goods.
Because both Applicant’s description of goods and Registrant’s description of
goods include dietary supplements, the goods are in part identical.
Under this du Pont factor, the Trademark Examining Attorney need not prove,
and we need not find, similarity as to each and every product listed in the description
of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness
is established for any item encompassed by the identification of goods in a particular
class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406,
1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745
(TTAB 2014).
B. Established, likely-to-continue channels of trade.
In finding that the descriptions of goods are in part identical, we are aware that
Registrant’s description of goods includes the restriction that Registrant’s dietary
supplements are “sold to independent distributors outside of retail store channels.”
However, Applicant’s description of goods does not include any restriction or
limitation. Absent such a restriction or limitation, we are required to give “full sweep”
to Applicant’s description of goods. Paula Payne Prods. Co. v. Johnson Publ’g Co.,
Inc., 473 F.2d 901, 177 USPQ2d 77, 77-78 (CCPA 1973); see also In re Viterra Inc.,
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671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002); CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). In this regard, the
Board does not read limitations into the description of goods. See Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific
limitation and nothing in the inherent nature of Squirtco's mark or goods that
restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board,
thus, improperly read limitations into the registration”). Therefore, we must presume
that Applicant’s dietary supplements move in all channels normal for those goods,
and that they are available to all classes of purchasers for those goods, including
“independent distributors outside of retail store channels.”
Applicant argues that its dietary and nutritional supplements are not sold in the
same channels of trade as Registrant’s dietary supplements by including a detailed
explanation of Registrant’s multi-level marketing.3 However, we must consider the
goods as they are described in the application and the registration. See Octocom Sys,
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of registrability of an applicant's
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant's goods, the particular channels of trade or the class of purchasers to which
the sales of goods are directed”); Paula Payne Prods. v. Johnson Publ’g Co., 177 USPQ

3 Applicant’s Brief, pp. 4-9 (4 TTABVUE 5-10).
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at 77 (“Trademark cases involving the issue of likelihood of confusion must be decided
on the basis of the respective descriptions of goods”). Reading the description of goods
broadly, as we must, Applicant’s unrestricted channels of trade for dietary
supplements encompasses Registrant’s restricted channels of trade.4
C. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567.
In comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).

4 We note that Applicant impermissibly resorted to extrinsic evidence to support its argument
that Registrant’s dietary supplements are sold through multi-level marketing. A registration
certificate operates as “prima facie evidence of the validity of the registered mark and * * *
of the [registrant’s] exclusive right to use the registered mark in commerce on or in connection
with the goods * * * specified in the [registration] certificate, subject to any conditions or
limitations stated in the certificate.” Trademark Act §§ 7(b) and 33(a), 15 U.S.C. §§ 1057(b)
and 1115(a). Therefore, we evaluate the usages encompassed by a registration’s statement of
goods and cannot countenance an applicant’s attempt to show that a registrant’s actual usage
is narrower than the statement of goods in the registration. See generally Stone Lion Capital
Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000); In
re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-1535 (Fed. Cir. 1997).
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“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721; see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992).
Applicant is seeking to register the mark NutriStart in standard character form
and the mark in the cited registration is NUTRASTART in typed drawing form.5
Marks presented in standard or typed characters are not limited to any particular
depiction. The rights associated with a mark in standard characters or typed drawing
form reside in the wording, and not in any particular display. Thus, Applicant and
Registrant are entitled to all depictions of their standard character or typed drawing
marks regardless of the font style, size, or color; Applicant’s mark could at any time
in the future be displayed in a manner similar to Registrant’s mark and vice versa,
that is, the word(s) displayed in the same font style and size. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Citigroup Inc. v. Capital City
Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v.
Tomy Corp., 216 USPQ at 939 (rejecting argument that for purposes of determining
whether two marks are similar, a mark in a typed drawing (equivalent to modern

5 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i)
(January 2017).
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standard character format) is distinct from such mark in a logo format; “[b]y
presenting its mark in a typed drawing, a difference cannot legally be asserted by
that party” (emphasis in original)); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448
(TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
Because the only difference between the marks is the letter “I” in Applicant’s mark
and the letter “A” in Registrant’s mark, the marks look and sound similar. Slight
differences in marks do not normally create dissimilar marks. In re Great Lakes
Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover, although there are
certain differences between the [marks’ CAYNA and CANA] appearance, namely, the
inclusion of the letter ‘Y’ and the design feature in applicant’s mark, there are also
obvious similarities between them. Considering the similarities between the marks
in sound and appearance, and taking into account the normal fallibility of human
memory over a period of time (a factor that becomes important if a purchaser
encounters one of these products and some weeks, months, or even years later comes
across the other), we believe that the marks create substantially similar commercial
impressions”); see also United States Mineral Products Co. v. GAF Corp., 197 USPQ
301, 306 (TTAB 1977) (“‘AFCO’ and ‘CAFCO,’ which differ only as to the letter ‘C’ in
USM’s mark, are substantially similar in appearance and sound”); In re Bear Brand
Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The mark of the applicant, ‘KIKS’ and
the cited mark ‘KIKI’ differ only in the terminal letter of each mark. While differing
in sound, the marks are similar in appearance and have a somewhat similar
connotation”).
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The marks also engender similar, if not identical, commercial impressions. The
terms “Nutri” and “Nutra” at the start of both marks suggest nutrition or nutritional
and the word “Start” is defined, inter alia, as “to begin work on.”6 Both marks,
therefore, engender the commercial impression of beginning to work on nutrition or
a nutritional beginning.
Applicant argues that the marks have different appearances and engender
different commercial impressions because Applicant’s trade dress is different and
Applicant’s mark is used in connection with its house mark.7
Applicant’s house mark is a distinctive design of a
Rainbow-Colored Circle with the words Rainbow Light
inside of the Rainbow-Colored Circle. By contrast, the
image on the Registrant’s label is a glass full of the meal
replacement in orange and white packaging.8
The problem with Applicant’s argument is that Applicant seeks to register its
product mark NutriStart without its trade dress and without its house mark. By the
same token Registrant chose to register only the word mark NUTRASTART. It is only
the word marks in the registration and the application which we may consider. See
Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1458
(Fed. Cir. 1992) (“Ordinarily, for a word mark we do not look to the trade dress, which
can be changed at any time.”) (citing Vornado, Inc. v. Breuer Elec. Mfg. Co., 390 F/2d

6 Dictionary.com based on the Random House Dictionary (2017). The Board may take
judicial notice of dictionary definitions, including online dictionaries that exist in printed
format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d
594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96
USPQ2d 1031, 1038 n.14 (TTAB 2010).
7 Applicant’s Brief, pp. 9-10 (4 TTABVUE 10-11).
8 Id.
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724, 156 USPQ 340, 342 (CCPA 1968)); see also Kimberly Clark Corp. v. H. Douglas
Enter., Ltd., 774 F.2d 1144, 1147, 227 USPQ 541, 543 (Fed. Cir. 1985) (“[A] distinction
in trade dress cannot weigh against likelihood of confusion with respect to the
registration of a simple word mark like DOUGHIES. The reason is that such dress
might well be changed at any time; only the word mark itself is to be registered.”); In
re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984) (“The fact that applicant's stapler kits
bear its house mark ‘REXEL’ as well as the product mark ‘LITTLE GOLIATH’ is not
persuasive of a different result since applicant is seeking to register the mark
‘LITTLE GOLIATH’ alone.”).
In view thereof, we find that the marks are similar.
D. Balancing the factors.
Because the marks are similar, the goods are in part identical, and there is a
presumption that the goods move in the same channels of trade, we find that
Applicant’s mark NutriStart for “dietary and nutritional supplements” is likely to
cause confusion with the registered mark NUTRASTART for “dietary supplements,
vitamins, minerals, herbal supplements, and concentrated dietary supplements for
nutritional drinks, all sold to independent distributors outside of retail store
channels.”
Decision: The refusal to register Applicant’s mark NutriStart is affirmed.