Rodale Inc.

Trademark Trial and Appeal Board

Oct 26, 2004

No. 75776753 (T.T.A.B. Oct. 26, 2004)

Mailed: October 26, 2004
Paper No. 17
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Rodale Inc.
________
Serial No. 75776753
_______
Jody H. Drake of Sughrue Mion PLLC for Rodale Inc.
Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Hohein, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Rodale Inc. has filed an application to register the
mark "LIVING BETTER LONGER" for "publications, namely, magazines
in the fields of health, fitness, diet, exercise and lifestyle."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "LIVING BETTER, LONGER," which is registered for "retail
store services featuring nutritional products, beverage bar,
1 Ser. No. 75776753, filed on August 16, 1999, based on an allegation
of a bona fide intention to use such mark in commerce and which, by an
amendment to allege use, sets forth a date of first use anywhere and
in commerce of February 2000.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75776753
2
vitamins, minerals, herbs, protein powders, supplements,
nutrient-rich foods, enzymes, body care products, teas, coffees,
candles, incense, pillows, bath robes, aromatherapeutic products,
ceramic items, juicers, books and other periodicals relating to
nutrition, cards and stationery, and air purifiers,"2 as to be
likely to cause confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and services and the similarity of the marks.3 Here, inasmuch as
the respective marks are virtually identical in all respects,
including evocation of essentially the same overall commercial
impression,4 it is plain that the contemporaneous use thereof in
2 Reg. No. 2,535,238, issued on February 5, 2002, which sets forth a
date of first use anywhere and in commerce of May 1998.
3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and differences
in the marks."
4 Applicant, in fact, states in its initial brief that "it is conceded
that the marks are nearly identical."
Ser. No. 75776753
3
connection with related goods and services would be likely to
cause confusion as to source or sponsorship. The principal focus
of our inquiry is accordingly on the similarities and
dissimilarities in the respective goods and services, including
similarities and dissimilarities in established, likely to
continue channels of trade and the conditions under which and
buyers to whom sales are made.
Applicant argues, among other things, that confusion is
not likely from contemporaneous use of the marks at issue due to
the differences in the respective goods and services, and the
sophistication of the purchasers thereof. In particular,
applicant emphasizes in its initial brief its assertion that
"[c]onsumers view registrant's LIVING BETTER, LONGER service mark
as identifying a retail store location, and presumably do not
identify the products sold within the retail store location as
LIVING BETTER, LONGER products." By contrast, applicant insists,
while its "publication entitled LIVING BETTER LONGER deals with
issues generally connected to health, fitness, nutrition and
well-being," consumers purchasing such publication "would not
leap to the conclusion that applicant is in the field of retail
store services selling ... products bearing hundreds of different
marks on a wide variety of nutritional products." Thus,
according to applicant:
It follows that registrant would not be
logically tied to the publishing field. In
other words, applicant's magazine should be
viewed as dissimilar from registrant's retail
store services, and it follows that consumers
viewing both marks would not be lead [sic] to
the conclusion that they are related goods
and services sharing a common origin.
Ser. No. 75776753
4
As to the Examining Attorney's attempt to show that
there is a relationship between the goods and services at issue
herein by making of record "Internet evidence ... showing several
web sites promoting online services promoting nutritional
products that also provide books, magazines and printed matter,"
applicant maintains that such evidence "does not support the
argument that retail store services and the title of a
publication would be considered proximate goods and services."
The reason therefor, applicant contends, is that such web sites
"simply promote the publications of various third parties on a
variety of health and nutrition topics." Also, with respect to
certain third-party registrations made of record by the Examining
Attorney which include "retail store services and publications in
the same registration," applicant dismisses such as evidence of
the relatedness of the goods and services in this appeal because
"the cited registration in this case is simply for retail store
services" and does not include publications.
Applicant additionally asserts its belief that
"consumers exercise greater care when purchasing health-related
or nutritional products, and that this consumer discretion
further supports applicant's position that consumers will likely
distinguish registrant's retail store services from the title of
applicant's publications." In consequence thereof, applicant
contends that "[t]he simple fact that applicant's magazine could
be sold in retail stores does not lead to the conclusion that
trade channels overlap and consumers will be confused."
Applicant urges, moreover, that the mere fact that registrant's
Ser. No. 75776753
5
retail store services specifically include the sale of "books and
other periodicals relating to nutrition" does not mean that its
magazines must be considered to be related to such services
since, "[i]f the Examining Attorney's logic is followed, then all
the goods listed in the registrant's recitation of services could
conceivably be viewed as "related" to registrant's services if
any of them happened to bear a mark similar to LIVING BETTER,
LONGER (for example, LIVING BETTER, LONGER candles, bathrobes,
juicers, all allegedly sold in registrant's retail store)."
Finally, applicant asserts that even if there is some
overlap between the respective goods and services, "the mere
movement of goods through the same overlapping [trade] channels
in connection with the services will not necessarily result in a
likelihood of confusion," absent a showing of "something more."
Applicant, citing, inter alia, In re Coors Brewing Co., 373 F.3d
1340, 68 USPQ2d 1059 (Fed. Cir. 2003), maintains that:
If an overlap is considered de minimus [sic],
then a likelihood of confusion should be
viewed as unlikely. Any potential overlap
between registrant's and applicant's goods in
this case should be considered de minimus
[sic].
The Examining Attorney, citing Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70 (TTAB 1981), notes on the other
hand that where, as here, the marks at issue are nearly
identical, "the relationship between the goods and services need
not be as close to support [a finding of likelihood of
confusion.]" According to the Examining Attorney, in the present
case:
Ser. No. 75776753
6
The evidence of record supports a
finding that the goods and services are
related. The evidence demonstrates that it
is common for providers of health and
nutrition retail stores, such as that of the
registrant, to also produce publications,
such as magazines, under a single trademark.
Attached to the October 30, 2002 office
action is evidence of eight registrations
showing producers and service providers using
a single mark for magazines ... as well as
retail store services .... Additionally,
attached to the Final office action of June
25, 2003 are websites evidencing retail
service providers who sell publications as
well as produce magazines. ....
In particular, as to the various use-based third-party
registrations which are of record, it is settled that while such
registrations are not evidence that the different marks shown
therein are in use or that the public is familiar with them, they
may nevertheless have some probative value to the extent that the
registrations serve to suggest that the goods and services listed
therein are of the kinds which may emanate from a single source.
See, e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-
86 (TTAB 1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 at n. 6 (TTAB 1988). Although none of the eight use-
based third-party registrations of record involves the same goods
and services which are at issue herein, the copies thereof
clearly show that as to six of such registrations, the same mark
is registered for the following publications, on the one hand,
and retail store services involving such publications and/or
their subject matter, on the other hand: (i) "periodically
published magazines, newsletters, price guides, and catalogs in
the field of collectible dolls" and "retail store and catalog
Ser. No. 75776753
7
services in the field of collectible dolls"; (ii) "fishing
magazines" and an "on-line retail store in the nature of fishing
merchandise"; (iii) "printed magazines providing review of books
and literature" and "retail store ... services for books, printed
publications and related products"; (iv) "magazines, catalogs,
brochures, and pamphlets concerning ... philatelic products" and
"retail store and outlet services ... featuring philatelic
products"; (v) "magazines, pamphlets and brochures relating to
stuffed and plush toy animals and dolls" and "retail store ...
services in the fields of stuffed toy animals and plush toy
animals, and ... magazines and brochures relating to stuffed and
plush toy animals and dolls"; and (vi) "magazines, bulletins,
newsletters in the field of sports and entertainment" and a
"retail store featuring ... sports related merchandise." With
respect to the website evidence which the Examining Attorney
contends shows "retail service providers who sell publications as
well as produce magazines," such evidence demonstrates that
several on-line retailers of various health and fitness products
offer, under the same mark, printed and/or electronic magazines
or newsletters which feature articles or books and other
publications on such subjects as food and diets, vitamins and
nutritional supplements, or weight loss and well being.
In view of the above, and additionally arguing that
"the applicant's magazines may be sold through the [cited]
registrant's retail establishment"5 inasmuch "as it is common for
5 Notably, however, the Examining Attorney has not explained why the
cited registrant would wish to allow such sales if, as the Examining
Attorney insists, confusion would be likely.
Ser. No. 75776753
8
health and nutrition retailers to retail health and nutrition
publications," the Examining Attorney insists that magazines and
retail store services of similar subject matter are commercially
related for purposes of the analysis as to whether confusion is
likely. In particular, the Examining Attorney points out in this
regard that:
Trademark Trial and Appeal Board
precedent holds the goods and services of the
parties related in this case. In The Conde
Nast Publications Inc. v. Vogue Travel, Inc.,
205 USPQ 579 (TTAB 1979)[,] the ... Board
discussed at length the categories of cases
where magazines are typically found related
to other goods and services. The TTAB, in In
re Cruising World, Inc., 219 USPQ 757 (TTAB
1983), paraphrased the Board's categorization
in Conde Nast Publications where it stated:
This is not the first case to deal
with similar marks in use on a
magazine and on goods or services
which are in some way related
thereto. Four separate categories
of such cases, wherein conflicts
were found to exist, have been
defined in Conde Nast Publications
Inc. v. Vogue Travel, Inc., 205
USPQ 579 (TTAB 1979)[,] and cases
cited therein. Briefly they are
(a) where the goods or services are
of a type normally featured in the
magazine and/or there was an
advertising tie-in between goods or
services of this type and the
magazines[;] (b) where both were
directed to the same segment of the
public and involved closely related
communications media (i.e., radio
broadcasting and magazine); (c)
where both were sold through the
same outlets; and (d) where other
activities were engaged in under
the auspices of the magazine which
activities enhanced the likelihood
that there would be confusion as to
the source of the goods or services
of a second user of a similar mark.
Ser. No. 75776753
9
In re Cruising World, Inc., 219 USPQ 757, 758
(TTAB 1983).
....
The case at hand includes facts similar
to those in [category "(a)" of] Cruising
World and requires the same holding of
relatedness of the goods and services. Like
in Cruising World, the marks at issue here
are essentially identical. Moreover, the
subject matter featured in the [applicant's]
magazines as well as the subject matter of
the registrant's retail services are related.
The applicant's magazines are in the fields
of "health, fitness, diet, exercise and
lifestyle." The registrant's services
involve the retail[ing] of "nutritional
products," "vitamins," "minerals," "herbs,"
"protein powders," "supplements," "nutrient-
rich foods," "enzymes," "body care products,"
as well as "books and other periodicals
relating to nutrition." ....
Because "[t]he fields of 'health, fitness, diet, exercise and
lifestyle' typically include subjects involving 'nutritional
products,' 'vitamins,' 'minerals,' 'herbs,' 'protein powders,'
'supplements,' 'nutrient-rich foods,' 'enzymes,' 'body care
products,' as well as 'books and other periodicals relating to
nutrition,' the Examining Attorney maintains that, "as in
Cruising World, the Applicant and Registrant ... [respectively]
provide magazines and retail services in the same field[s] under
essentially identical marks."
With respect to applicant's contention that consumers
typically exercise greater care when purchasing health-related or
nutritional products and thus, in view of such discrimination and
sophistication, will be able to distinguish between the sources
of registrant's retail store services and applicant's
publications, the Examining Attorney notes that "no evidence
Ser. No. 75776753
10
exists in the record establishing purchaser sophistication." The
Examining Attorney contends, instead, that customers for
applicant's publications and registrant's retail services would
appear to be ordinary consumers, pointing out in particular that:
The applicant's publication, judging by the
example of record, does not appear to be a
high priced, sophisticated or scientific
publication. On the contrary[,] examination
of the specimen of record shows that it's
[sic] content is intended for the masses and
is easily digestible and readable. Likewise,
no evidence exists in the record that users
of Registrant's service[s] are sophisticated.
Observing, furthermore, that "the applicant's magazines and the
goods of the typed [sic] retailed by the registrant are
relatively inexpensive items," the Examining Attorney notes that
"[p]urchasers of low cost items which are subject to impulse
purchase are held to a lesser standard of purchasing care, and
thus are more likely to be confused as to the source of the goods
and services here," citing Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir.
1984). Moreover, the Examining Attorney insists that, even if
customers for the goods and services at issue herein were to be
considered knowledgeable and sophisticated in the fields of
health and nutritional products and services related thereto,
such would not mean that they necessarily are knowledgeable and
sophisticated in the field of trademarks and service marks or
immune from source confusion.
Applicant, in reply, asserts among other things that:
In the instant case, the parties' goods
and services do not have the level of
similarity and/or overlap as existed in The
Conde Nast Publ'n [sic] Inc. and In re
Ser. No. 75776753
11
Cruising World, Inc. The parties do not
operate solely within the same niche field.
Although the Examining Attorney ... has
characterized registrant's retail store
services as being limited in nature to that
of a specialty nutritional and health store,
the identification in the cited registration
does not reflect or support that
characterization. Instead, the
identification reflects a retail store that
provides some nutritional products amongst a
variety of different products[,] many of
which are unrelated or loosely related to
health and nutrition (e.g., candles, incense,
pillows, bath robes, cards and stationery).
Registrant's identification reads like a run-
of-the-mill variety store..., which certainly
would not be considered specialty nutritional
and health stores. In contrast, applicant's
magazine is limited to the nutritional and
health field. ....
Moreover, there is no evidence of record
that the registrant's retail services offered
under its mark have been advertised in
Applicant's magazine, as in In re Cruising
World, Inc. Nor does this case involve a
very well-known mark like VOGUE in The Conde
Nast Publ'n [sic] Inc., which was a factor in
the Board's finding of a likelihood of
confusion in that case.
Applicant reiterates, instead, that the facts of this appeal are
more analogous to such cases as In re Coors Brewing Co, supra, as
well as John Deere & Co. v. Payless Cashways, Inc., 681 F.2d 528,
217 USPQ 606 (8th Cir. 1982) and Family Circle, Inc. v. Family
Circle Associates, Inc., 332 F.2d 534, 141 USPQ 848 (3d Cir.
1964), in which the variety of goods offered as part of the
various services is simply so large that customers would not
attribute the same source to the services and individual goods.
We are constrained, however, to agree with the
Examining Attorney that contemporaneous use of the virtually
identical marks "LIVING BETTER LONGER" and "LIVING BETTER,
Ser. No. 75776753
12
LONGER" in connection with, respectively, applicant's magazines
in the fields of health, fitness, diet, exercise and lifestyle,
and registrant's retail store services featuring, inter alia,
nutritional products, beverage bar, vitamins, minerals, herbs,
protein powders, supplements, nutrient-rich foods, enzymes, body
care products, aromatherapeutic products, juicers, books and
other periodicals relating to nutrition, and air purifiers is
likely to cause confusion as to the origin or affiliation of such
goods and services. In this regard we note, first of all, that
it is well settled that the issue of likelihood of confusion must
be determined on the basis of the goods and services as they are
set forth in the involved application and the cited registration,
and not in light of what such goods and services are asserted to
actually be. See, e.g., Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Thus, where an applicant's goods and a registrant's services are
broadly described as to their nature and type, it is presumed in
each instance that in scope the application and registration
respectively encompass not only all goods and services of the
nature and type described therein, but that the identified goods
and services are available through all channels of trade which
Ser. No. 75776753
13
would be normal for those goods and services, and that they would
be purchased by all potential buyers thereof. See, e.g., In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Moreover, it is well established that an applicant's
goods and a registrant's services need not be competitive in
nature in order to support a finding of likelihood of confusion.
It is sufficient, instead, that the respective goods and services
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
In the present case, we disagree with applicant that
registrant's services, as identified, are so wide-ranging as to
be essentially akin to those of a department store or mass
merchandiser. Rather, just as applicant's magazines are
primarily directed, as applicant concedes, to the nutritional and
health field since they include articles pertaining to matters of
fitness, diet, exercise and lifestyle, registrant's retail
services likewise principally feature products devoted to the
nutritional and health field, including a beverage bar, vitamins,
minerals, herbs, protein powders, supplements, nutrient-rich
foods, enzymes, body care products, aromatherapeutic products,
Ser. No. 75776753
14
juicers, books and other periodicals relating to nutrition, and
air purifiers. While perhaps, as applicant argues, consumers
familiar with its magazines as being devoted to health and
nutritional matters would not necessarily assume that applicant
was also providing retail store services dealing with products in
the health and nutritional field, it is nonetheless the case that
customers who are aware of registrant's retail store services
could reasonably believe, upon encountering applicant's
magazines, that such publications emanate from or are sponsored
by or affiliated with registrant, given that the marks at issue
are virtually identical and the focus of the respective goods and
services is on matters pertaining to health and nutrition.
Stated otherwise, we disagree with applicant that at
most there is only a de minimis degree of overlap between
applicant's goods and registrant's services. Instead, we find
that such overlap is substantial, given the focus of both
applicant's publications and registrant's retail store services
on the health and nutritional field and the website evidence
furnished by the Examining Attorney showing that several on-line
retailers of various health and fitness products offer, under the
same mark, printed and/or electronic magazines or newsletters
which feature articles or books and other publications on such
subjects as food and diets, vitamins and nutritional supplements,
or weight loss and well-being. Furthermore, while we disagree
with applicant that, for instance, the holding in In re Coors
Brewing Co., supra, that "something more" must be shown in order
for a specific food item to be considered related to restaurant
Ser. No. 75776753
15
services necessarily must be extended to the goods and services
at issue herein, such "something more" is nonetheless shown by
the specific emphasis of applicant's goods and registrant's
retail store services on the subject matter of health and
nutrition. See, e.g., In re Azteca Restaurant Enterprises Inc.,
50 USPQ2d 1209, 1211 (TTAB 1999) [because evidence indicated that
"Mexican food items are often principal items of entrees served
by ... Mexican restaurants," "[t]he average consumer, therefore,
would be likely to view Mexican food items and Mexican restaurant
services as emanating from or sponsored by the same source if
such goods and services are sold under the same or substantially
similar marks"].
In addition, as contended by the Examining Attorney,
there is nothing which shows that customer's for applicant's
publications and registrant's retail services are anything other
than ordinary consumers. The fact that such consumers are
conscious of health and nutritional matters, however, does not
mean that they are necessarily knowledgeable and sophisticated
when it comes to discriminating as to the source or sponsorship
of goods and services directed principally to the health and
nutritional field, particularly where such goods and services, as
in the case of applicant's magazines and registrant's retail
store services, are offered under virtually identical marks, and
would not generally receive the care and attention for their
selection which would typically be exercised with respect to
goods and services which are relatively expensive and/or highly
scientifically or technically oriented. See, e.g., Wincharger
Ser. No. 75776753
16
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 USPQ 558, 560 (TTAB
1983).
We accordingly conclude that ordinary consumers,
including those with an interest in health and nutrition, who are
familiar or acquainted with registrant's "LIVING BETTER, LONGER"
mark for "retail store services featuring nutritional products,
beverage bar, vitamins, minerals, herbs, protein powders,
supplements, nutrient-rich foods, enzymes, body care products,
teas, coffees, candles, incense, pillows, bath robes,
aromatherapeutic products, ceramic items, juicers, books and
other periodicals relating to nutrition, cards and stationery,
and air purifiers," would be likely to believe, upon encountering
applicant's essentially identical mark "LIVING BETTER LONGER"
mark for "publications, namely, magazines in the fields of
health, fitness, diet, exercise and lifestyle," that such closely
related services and goods emanate from, or are sponsored by or
associated with, the same source. To the extent, however, that
applicant's arguments may serve to create any possible doubt as
to such conclusion, we resolve that doubt, as we must, in favor
of the registrant. See, e.g., 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 under Section 2(d) is affirmed.