Rexall Sundown, Inc.v.Sukrol Laboratories Inc.

Trademark Trial and Appeal Board

Sep 29, 1998

No. 91097562 (T.T.A.B. Sep. 29, 1998)

Paper No. 14
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 30, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Rexall Sundown, Inc.
v.
Sukrol Laboratories Inc.
_______
Opposition No. 97,562
to Application No. 74/456,171
filed on November 5, 1993
_______
M. W. Webner of Sughrue, Mion, Zinn, MacPeak & Seas for
opposer.
Stanley J. Brassington, Esq. for applicant.
_______
Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Rexall Sundown, Inc. filed its opposition to the
application of Sukrol Laboratories Inc. to register the
mark VIGOROL for “high potency vitamins for human
consumption” in International Class 5.1

1 Application Serial No. 74/456,171, filed November 5, 1993, based upon
use of the mark in commerce, alleging dates of first use and first use
in commerce as of October 29, 1993.
Opposition No. 97,562
2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered2 mark IN-
VIGOR-OL for “homeopathic drug/tonic” as to be likely to
cause confusion, under Section 2(d) of the Trademark Act.
Opposer asserts that the dominant portion of its mark is
the root word VIGOR-OL, and that applicant’s mark is
identical thereto.
Applicant, in its answer, denies the salient
allegations of the opposition and asserts that VIGOR is the
dominant portion of opposer’s mark; that the dominant
portion of opposer’s mark is not identical in spelling to
the dominant portion of applicant’s mark; that the goods of
the parties “serve wholly dissimilar purposes”; and that
“the common term VIGOR is used and registered by third
parties in the dietary supplement-related field.”
The Record
The record consists of the pleadings; the file of the
involved application; and the testimony deposition by
opposer of Armend Szmulewitz, senior vice president of
research and product development for the Rexall Showcase
Division of opposer, with accompanying exhibits. Only

2 Registration No. 1,751,784. For the reasons stated herein, this
registration is not considered part of the record in this proceeding.
Opposition No. 97,562
3
opposer submitted any evidence and only opposer filed a
brief on the case. A hearing was not requested.
The Parties
According to the testimony of Mr. Szmulewitz and the
accompanying exhibits, opposer’s IN-VIGOR-OL product is a
homeopathic remedy available in liquid and capsule form and
it is often sold as part of opposer’s “Natural Health
Remedies” pack with other homeopathic products of opposer.
Mr. Szmulewitz stated that IN-VIGOR-OL is “an energy type
tonic [that] the ultimate consumer would take as a
stimulating, invigorating tonic” and that “[IN-VIGOR-OL] is
promoted for whatever you would need an invigorating tonic
for … just being tired, everyday stress, just your daily
work load, just an everyday product for everyone.” The
promotional literature, a sample of which is shown below,
and product labels indicate that the IN-VIGOR-OL product
includes, among other ingredients, alfalfa and echinacea.
IN-VIGOR-OL is sold throughout the United States to
independent distributors, who either consume the product
themselves or re-sell it to their customers. During cross-
examination, Mr. Szmulewitz confirmed that the date of
first use indicated on opposer’s registration, October 24,
1991, is the date opposer first distributed its IN-VIGOR-OL
Opposition No. 97,562
4
product.3 The record indicates that total sales of IN-
VIGOR-OL were in excess of $3 million for the period
January 1, 1992, through November 30, 1996, with sales in
excess of $1 million occurring between August 1995 and
November 1996.
There is no evidence in the record with regard to
applicant or the nature of its business. The application
file includes, as a specimen of use, a label wherein the
mark appears as shown below.
(image not available)
The ingredients printed on the label include various
vitamins, a type of ginseng, an herb, and an ingredient
identified as “Glukrol,” which includes lecithin, yeast and
alfalfa.

3 Opposer cannot rely on its asserted registration in support of its
claim of priority, as opposer has neither submitted a status and title
copy of its registration nor established, through the testimony of its
witness, the current status and title of that registration. We do not
consider applicant, by its lack of presentation of evidence or
briefing, to have treated opposer’s registration as being of record
such that we would so consider it to be of record. However, because of
Mr. Szmulewitz’s position with opposer and his tenure, we accept his
testimony as establishing opposer’s date of first use of the mark IN-
VIGOR-OL in connection with a homeopathic tonic.
Opposition No. 97,562
5
Analysis
Although we do not consider opposer’s registration to
be properly of record in this proceeding, we do find
sufficient evidence of opposer’s first use of its mark in
commerce in connection with a homeopathic tonic as of
October 24, 1991. Inasmuch as this date precedes the
filing date of the application herein, we find that opposer
has adequately established its priority.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In
re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In view of the limited record before us,
key considerations in this case are the similarities
between the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We conclude that applicant’s identified “high potency
vitamins for human consumption” are closely related to the
“homeopathic drug/tonic” identified in opposer’s
registration. While the goods are obviously not the same,
the record establishes that both parties’ goods are
nutritional supplements to increase a person’s energy
Opposition No. 97,562
6
level. Further, as noted from the labeling of the parties’
products, they share at least one common ingredient,
alfalfa. It is reasonable for consumers to mistakenly
conclude that the source of such products, if sold under
substantially similar marks, is the same or related.
Regarding channels of trade and classes of purchasers
for the parties’ goods, the evidence establishes that
opposer sells its goods through independent distributors
and that the ultimate consumer is the general consumer,
including its independent distributors themselves.
Applicant’s identification of goods is broadly worded,
without any limitations as to channels of trade or classes
of purchasers.4 Thus, we must presume that applicant’s
goods are sold in all of the normal channels of trade to
all of the normal purchasers for goods of the type
identified. See, Canadian Imperial Bank v. Wells Fargo,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). It is
reasonable to conclude that both parties’ nutritional
supplements would be sold to the same class of purchasers,
namely, the general consuming public. In view of opposer’s
testimony that, in some instances, its independent

4 While applicant’s identification includes the limitation “for human
consumption,” we assume from the evidence of record that opposer’s
goods are similarly limited. Thus, the channels of trade are
unaffected by this limitation.
Opposition No. 97,562
7
distributors are the ultimate consumers of opposer’s
products, we presume that opposer’s independent
distributors are individuals. It is reasonable to conclude
that these individuals and the people to whom they might
sell opposer’s products are the same members of the general
consuming public who would see vitamins, such as those sold
by applicant, on the shelves in retail establishments such
as pharmacies. In other words, we conclude that the class
of purchasers of the parties’ goods is the same.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
We take judicial notice of the definition, in the
Random House Dictionary of the English Language (2nd ed.,
unabridged, 1987), of “vigor” as “n. 2. Healthy physical or
mental energy or power; vitality” and “invigorate” as “v.t.
Opposition No. 97,562
8
to give vigor to; fill with life and energy; energize.”
Clearly, in relation to both parties’ goods, VIGOR is
suggestive of the desired result of the use of either
product.
Both parties’ marks consist of the root word VIGOR and
end in the syllable “OL.” Opposer, in its promotional
literature and on its labels, emphasizes the VIGOR portion
of its mark by separating the syllables, i.e., IN•VIGOR•OL,
often with the VIGOR portion in larger and bolder print.
Applicant, on its specimen label reproduced above,
emphasizes the VIGOR portion of its mark by the addition of
the phrase, immediately below the mark on the label,
“Virility Vigor.” The only difference between the parties’
marks is the prefix “IN” in opposer’s mark. It is our
view, based on the dictionary definitions, that this would
be perceived as suggesting the word “invigorate,” which is
merely the verb transitive form of the noun VIGOR. As
such, we perceive only a minor difference between the
parties’ marks which does not change the connotation of
opposer’s mark. Opposer’s mark is not distinguished from
applicant’s mark simply because of the suggestive
connotation of VIGOR in relation to the goods. As used in
both marks, VIGOR conveys the same suggestive significance.
Opposition No. 97,562
9
Nor do we believe that the prefix “IN” in opposer’s
mark is sufficient to differentiate the marks in appearance
or pronunciation. Under actual marketing conditions,
consumers do not always have the luxury to make side-by-
side comparisons between marks. Dassler KG v. Roller Derby
Skate Corp., 206 USPQ 255 (TTAB 1980). Because of the
fallibility of memory and the consequent lack of perfect
recall, consumers will retain a general rather than a
specific impression of trademarks or services marks.
Spoons Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992);
and In re Steury Corporation, 189 USPQ 353 (TTAB 1975). In
this case, we find that the overall commercial impression
of opposer’s mark, INVIGOROL, and applicant’s mark,
VIGOROL, is substantially similar.
We also point out that, although applicant alleged in
its answer that VIGOR is a common term used and registered
by numerous third parties in the dietary supplement field,
there is nothing in the record to support this contention.
Therefore, we have no evidence that consumers are so
familiar with “VIGOR” marks that they are able to
differentiate between such marks on the basis of such small
differences as whether one has the prefix “IN” and the
other does not.
Opposition No. 97,562
10
Applicant also alleged in its answer that consumers
purchase the parties’ products with care. No evidence has
been submitted in support of this assumption. As stated
herein, these goods appear to be sold to ordinary consumers
as over-the-counter items. These goods are not
prescription medicines, nor are they restricted in their
sale to doctors or other health-care professionals. Even
if we were to assume that consumers of these goods are
careful simply because the products are health-related, we
still find that, for the reasons stated above, the marks
are so similar in commercial impression that members of the
general public, even if they exercise more than ordinary
care in selecting these products, are likely to believe
that the parties’ products emanate from the same source.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of opposer’s mark,
INVIGOROL, and applicant’s mark, VIGOROL, and because the
goods must be deemed to be purchased by the general
consuming public, their contemporaneous use on the goods
involved in this case is likely to cause confusion as to
the source or sponsorship of such goods.
Decision: The opposition is sustained.
Opposition No. 97,562
11
E. J. Seeherman
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board