Simpson Industries, Inc.

Trademark Trial and Appeal Board

Oct 7, 2019

87635385 (T.T.A.B. Oct. 7, 2019)

Mailed: October 7, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Simpson Industries, Inc.
_____
Serial No. 87635385
_____
Laura T. Geyer of Vorys, Sater, Seymour and Pease LLP
for Simpson Industries, Inc.

Louis Kolodner, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
_____
Before Shaw, Adlin and English, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Simpson Industries, Inc. seeks registration of the mark RAINFOREST
NUTRITION (standard characters, NUTRITION disclaimed) for “dietary and
nutritional supplements” in International Class 5.1 The Examining Attorney refused
registration under Section 2(d) of the Trademark Act on the ground that Applicant’s
mark so resembles the registered mark RAINFOREST ANIMALZ, in standard

1 Application Serial No. 87635385, filed October 5, 2017 under Section 1(b) of the Trademark
Act, based on an alleged intent to use the mark in commerce.
This Opinion is Not a
Precedent of the TTAB
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characters, for “nutritional supplements,”2 that use of Applicant’s mark in connection
with Applicant’s goods is likely to cause confusion. After the refusal became final,
Applicant appealed and filed a request for reconsideration which was denied.
Applicant and the Examining Attorney filed briefs.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See 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, Channels of Trade and Classes of Consumers
The goods are in-part identical because both the involved application and cited
registration identify “nutritional supplements.” Where, as here, the goods are in-part
identical, we must presume that the channels of trade and classes of purchasers for
those goods are also the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels

2 Registration No. 3729949, issued December 22, 2009; renewed.
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of trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same);
Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Instit., 101
USPQ2d 1022, 1028 (TTAB 2011).
The identity (in part) of Applicant’s and Registrant’s goods and their overlapping
channels of trade and classes of consumers weigh heavily in favor of a finding of
likelihood of confusion. In addition, where, as here, the goods are in-part identical,
the degree of similarity between the marks necessary to find a likelihood of confusion
declines. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Grp. Ltd., 93 USPQ2d
1243, 1248 (TTAB 2010).
B. The Marks and Strength of the Cited Mark
We must consider the marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). In this case, the marks are similar because
they each consist of two words or terms and begin with RAINFOREST, but different
because NUTRITION, the second word in Applicant’s mark, is easily distinguishable
from ANIMALZ, the second term in Registrant’s mark. When we balance the
similarities against the differences, we ultimately find that the marks would not be
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confused, in large part because Applicant has established that the word the marks
have in common – RAINFOREST – is conceptually and commercially weak for
nutritional supplements and related goods.
1. Comparison of the Marks
At the outset, we agree with the Examining Attorney that the term RAINFOREST
in Applicant’s mark is its dominant feature, for two reasons. First, RAINFOREST
appears and will be read and spoken first. In re Detroit Athletic Co., 903 F.3d 1297,
128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity of the marks’ initial two words
is particularly significant because consumers typically notice those words first.”);
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t
is often the first part of a mark which is most likely to be impressed upon the mind
of a purchaser and remembered”). Second, the term NUTRITION is at best
descriptive of Applicant’s dietary and nutritional supplements, and disclaimed, so it
is entitled to less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court
has noted that the ‘descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); see also In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (DELTA, not the
disclaimed term CAFÉ, is the dominant portion of the mark THE DELTA CAFÉ).
Because the dominant portion of Applicant’s mark is identical to the first term in the
cited mark, the marks look and sound more similar than dissimilar, despite the
obvious differences between NUTRITION and ANIMALZ.
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On the other hand, the marks convey different meanings. Applicant’s mark
suggests that its supplements provide nutritional benefits derived from rainforests.
Registrant’s mark, by contrast, conveys that its RAINFOREST-related goods are
animal-shaped, as illustrated by Registrant’s specimen of use, which Applicant
introduced into the record during prosecution:

June 25, 2019 Request for Reconsideration TSDR 74.
To determine whether these marks, considered in their entireties, are sufficiently
similar in overall commercial impression for confusion to be likely, we must also
consider the relative commercial and conceptual strength of Registrant’s mark and
the marks’ shared term RAINFOREST.
2. Strength of the Cited Mark
Applicant has established that third parties widely use the marks’ shared term
RAINFOREST for nutritional supplements, including in food and beverage form,
either as a trademark, or to describe the goods, as shown in the following examples
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of products available in the United States:

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July 11, 2018 Office Action response TSDR 13-19, 29; June 25, 2019 Request for
Reconsideration TSDR 79-80.
Moreover, a number of retail stores offer nutritional supplements under
“Rainforest” trade names, including “Rainforest Pharmacy,” “Rainforest
Nutritionals,” “Organic Rainforest Company” and “Rainforest Foods”:
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Id. at 21-28, 34-49.
Applicant also introduced evidence that RAINFOREST is used as a mark or
descriptively for food or beverage products such as teas which purport to have health
benefits. We find these products to be relevant here even though they are not in the
more traditional pill/capsule form of other dietary or nutritional “supplements”:
Serial No. 87635385
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Id. at 20; June 25, 2019 Request for Reconsideration TSDR 76-78.
Applicant introduced use-based registrations for RAINFOREST/RAIN FOREST
marks for dietary or nutritional supplements, or food or beverage products, owned by
different third-parties, including:
Mark/Goods Reg. No. Mark/Goods Reg. No.

(AMAZON HERB CO.,
RAINFOREST and BIO-
ENERGETICS disclaimed)
(dietary and nutritional sup-
plements)
2871110

(dietary and nutritional
supplements)
4572582,
4572583

(RAINFOREST IMMUNE
disclaimed)
(sports drinks; energy
drinks)
4029089 RAINFOREST GRANOLA
(granola)
2127376
RAINFOREST CRUNCH 5013686 BORNEO RAINFOREST
TEA
2857065
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Mark/Goods Reg. No. Mark/Goods Reg. No.
(nut, fruit and seed snacks) (RAINFOREST tea dis-
claimed)
(organic tea for consump-
tion)

(PURE RAINFOREST and
ACAI disclaimed)
(preparations for making
fruit drinks)
3826458 BAI RAINFOREST
VARIETY PACK
(fruit based beverages)
5018123
RAIN FOREST
(bottled drinking water)

(RAIN FOREST disclaimed
in design version)
4351720
(Supp.
Reg.),
4720428
(design
version)
(Principal
Reg.)
NEON RAINFOREST
(candy)
4686052

(RAIN FOREST
PRODUCTS disclaimed)
(on-line retail store services
featuring a wide variety of
consumer goods of others)
5506587
July 11, 2018 Office Action response TSDR 57-62, 64-69, 71-76. These third-party
registrations tend to “show the sense in which [the term RAINFOREST] is used in
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ordinary parlance.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting 2 MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:90 (4th ed. 2015)) (“‘[a] real evidentiary value of third party
registrations per se is to show the sense in which … a mark is used in ordinary
parlance’). “Third party registrations are relevant to prove that some segment of the
composite marks which both contesting parties use has a normally understood and
well recognized descriptive or suggestive meaning, leading to the conclusion that that
segment is relatively weak.” Id.
As Applicant points out, this evidence of widespread third-party use and
registration of the term RAINFOREST for dietary and nutritional supplements and
certain other ingestible products should perhaps not be surprising. The record reveals
that plants, chemicals and other materials derived from rainforests have medicinal
or other health benefits. For example, an article entitled “Medicinal Treasures of the
Rainforest” on the “adventure-life.com” website discusses the “abundant botanical
resources” in rainforests, which “have already provided tangible medical advances.”
July 11, 2018 Office Action response TSDR 78-79. The article goes on to state that
“the blueprint for aspirin is derived from extracts of willow trees found in the
rainforest,” and that “[f]or thousands of years, indigenous groups have made
extensive use of the materials contained in the rainforest to meet their health needs.”
Id. Similarly, the article “Owed to Nature: Medicines from Tropical Forests,” on the
“rainforesttrust.org” website indicates that important medications for high blood
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pressure and other conditions are derived from rainforests. Id. at 86-91; see also id.
at 92-100 (“Tropical Forests In Our Daily Lives” from “rainforest-alliance.org”).
The evidence of record thus establishes that the term RAINFOREST is
commercially and conceptually weak for nutritional and dietary supplements, as well
as food and beverage products, especially those touting health benefits. Indeed, the
record reveals at least nine third party uses of the term RAINFOREST (or, on
occasion, RAIN FOREST) in connection with dietary or nutritional supplements (in
pill/capsule form); and four additional uses of the term for products touted as
“supplements” or as providing health benefits such as “immunity defense” or
“metabolism boost”. This shows that the term is commercially weak in this field. Some
of this evidence also reveals use of the term in a descriptive manner, which
establishes conceptual in addition to commercial weakness.
The third party registration evidence corroborates the third party use evidence, to
the extent it shows that RAINFOREST is conceptually weak for dietary or nutritional
supplements, as well as food or beverage products, especially those touting health
benefits. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95
(CCPA 1976); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d
1458, 1471 (TTAB 2014).
3. Registrant Has Acknowledged that RAINFOREST Marks are
Weak for Supplements
Before it filed the application which matured into the cited registration,
Registrant prosecuted another application to register the same mark, RAINFOREST
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ANIMALZ in typed form,3 for “nutritional supplements for children” (Application
Serial No. 78260202). Obviously, the goods in that application are encompassed by
the identification of goods in both the here-involved application and cited registration.
That earlier application was refused based on a likelihood of confusion with the mark
RAINFOREST NATURALS in typed form for “nutritional and dietary supplements”
(Reg. No. 2978317).
Registrant argued during prosecution of its earlier application that confusion was
unlikely between RAINFOREST ANIMALZ and RAINFOREST NATURALS, based
on the dissimilarity of the marks. Specifically, Registrant argued that the marks
create different commercial impressions because while RAINFOREST NATURALS
conveys “nutritional supplements that contain all natural ingredients that are as
pure as a rainforest,” RAINFOREST ANIMALZ conveys that Registrant’s “goods are
nutritional supplements for children … shaped liked (sic) various creatures found in
the rainforest so as to make the supplements more attractive to children.” June 25,
2019 Request for Reconsideration TSDR 59.
Moreover, in response to a later Office Action, Registrant argued that
RAINFOREST “is not a distinctive mark,” because it “has a varied and widespread
use.” Id. at 66. Registrant concluded that “[t]he consumer would look to the other
terms in the marks for identification of the source of the goods, which as discussed

3 There is no substantive difference between “standard character” marks and marks in
“typed” form. In re Viterra, 101 USPQ2d at 1909 n.2 (“until 2003, ‘standard character’ marks
formerly were known as ‘typed’ marks, but the preferred nomenclature was changed in 2003
to conform to the Madrid Protocol … we do not see anything in the 2003 amendments that
substantively alters our interpretation of the scope of such marks”).
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earlier, makes the marks dissimilar.” Id. Registrant’s prosecution of its prior
application to register an identical mark further supports a finding in this case that
Applicant’s mark is unlikely to be confused with the cited mark. See generally Juice
Generation, 115 USPQ2d at 1675 (“Although estoppel based on prosecution of an
application has played a more limited role for trademarks than for patents … we have
recognized that such comments have significance as ‘facts “illuminative of shade and
tone in the total picture confronting the decision maker.’’’”) (citations omitted).
4. Conclusion Regarding Strength and Similarity of the Marks
While Applicant’s and Registrant’s marks both begin with the term
RAINFOREST, that term is simply too weak to result in a finding of confusing
similarity here, even when the marks are used for identical goods. In fact, consumers
are used to seeing the term RAINFOREST in connection with dietary and nutritional
supplements, whether it is used as a trademark or descriptively/suggestively, and
Applicant’s mark will thus be perceived as just one more of the many uses of
RAINFOREST/RAIN FOREST for dietary or nutritional supplements or related
goods. Given the established weakness of the shared term RAINFOREST, “the closer
[Applicant’s] mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Juice
Generation, 115 USPQ2d at 1674. See also Sure-Fit Prods. Co. v. Saltzson Drapery
Co., 254 F.2d 158, 117 USPQ 295, 297 (CCPA 1958); Couch/Braunsdorf, 110 USPQ2d
at 1476-78 (finding, based on this principle, “that the mark PERKSPOT is sufficiently
different from the marks PERKS and PERKSCARD to avoid a likelihood of confusion”
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even though the marks were used for legally identical services); Plus Prods. v.
Natural Organics, Inc., 204 USPQ 773, 779-80 (TTAB 1979) (allowing registration of
NATURE’S PLUS for vitamins despite prior registration of PLUS for vitamins given
coexistence of a number of registrations containing PLUS for similar goods). As the
Federal Circuit stated in analogous circumstances:
Jack Wolfskin’s evidence demonstrates the ubiquitous use
of paw prints on clothing as source identifiers. Given the
volume of evidence in the record, consumers are
conditioned to look for differences between paw designs
and additional indicia of origin to determine the source of
a given product. Jack Wolfskin’s extensive evidence of
third-party uses and registrations of paw prints indicates
that consumers are not as likely confused by different,
albeit similar looking, paw prints.

Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). And as its
predecessor court similarly stated:
It seems both logical and obvious to us that where a party
chooses a trademark which is inherently weak, he will not
enjoy the wide latitude of protection afforded the owners of
strong trademarks. Where a party uses a weak mark, his
competitors may come closer to his mark than would be the
case with a strong mark without violating his rights. The
essence of all we have said is that in the former case there
is not the possibility of confusion that exists in the latter
case.

Sure-Fit Prods., 117 USPQ at 297.
In short, given the weakness of the term RAINFOREST, the marks are unlikely
to be confused. This factor weighs heavily against finding a likelihood of confusion.
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C. Lack of Actual Confusion
Finally, Applicant has established that although it has been using its mark for
supplements since before 2009, when Registrant first used its mark, there have been
no known instances of actual confusion. June 25, 2019 Request for Reconsideration
TSDR 14-53 (evidence of use and Affidavit of Richard Simpson, Applicant’s CEO).
The problem with this argument is that despite the concurrent use of Applicant’s and
Registrant’s marks for a fairly long period of time, there is no evidence concerning
the channels of trade or classes of consumers for Registrant’s goods, and precious
little about the channels of trade or classes of consumers for Applicant’s goods.
Therefore, we cannot gauge whether or the extent to which there has been an
opportunity for confusion to occur if it were likely to occur. See Cunningham, 55
USPQ2d at 1847; Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12
USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual confusion
is of very little, if any, probative value here because (1) no evidence was presented as
to the extent of ETF’s use of the VITTORIO RICCI mark on the merchandise in
question in prior years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB
1984). Moreover, a lack of evidence of actual confusion carries little weight in an ex
parte case such as this. Majestic Distilling, 65 USPQ2d at 1205. This factor is neutral.
Cf. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1163-64 (Fed. Cir. 2019)
(remanding to Board because it failed to consider the lack of actual confusion, when
the applicant “presented evidence of concurrent use of the two marks for a
Serial No. 87635385
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particularly long period of time – over 40 years – in which the two businesses operated
in the same geographic market”).
II. Conclusion
Although the goods, channels of trade and classes of consumers are identical, and
there is therefore a lower threshold for establishing a likelihood of confusion, the term
the marks share is too weak, and the marks thus too different in their entireties, for
confusion to be likely. See Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason why, in a particular case,
a single duPont factor may not be dispositive.”).

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is reversed.