Sun Chlorella Corp.

Trademark Trial and Appeal Board

Jun 20, 2018

No. 87171946 (T.T.A.B. Jun. 20, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: June 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sun Chlorella Corp.
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Serial No. 87171946

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Mark B. Harrison and Catherine Mitros, of Venable LLP,
for Sun Chlorella Corp.

Colleen Dombrow, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Zervas, Ritchie, and Lynch,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Sun Chlorella Corp. (“Applicant”) seeks registration on the Principal Register of
the mark HEALTH IS WEALTH, in standard character form, for goods identified as
“dietary supplements; nutritional supplements; dietary and nutritional
supplements,” in International Class 5.1 The Examining Attorney refused

1 Serial No. 87171946, filed on September 15, 2016, pursuant to Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b) alleging a bona fide intent to use the mark in commerce.
Serial No. 87171946
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registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), as to be likely to cause confusion, mistake, or to deceive, based on the
following two prior registrations, owned by two different registrants:
1. HEALTH IS WEALTH, also in standard character form, (the “166
Registration”), for “providing physical fitness instruction services, namely,
providing Pilates instruction and training for groups and individuals;
providing physical fitness instruction; and providing physical fitness and
exercise services, namely, indoor cycling instruction,” in International Class
41;2 and
2. (the “360 Registration”), for “counseling in the
field of mental health and wellness; Counseling services in the fields of health,
nutrition and lifestyle wellness; Providing healthy lifestyle and nutrition
services, namely, personal assessments, personalized routines, maintenance
schedules, and counseling; Providing wellness services, namely, personal
assessments, personalized routines, maintenance schedules, and counseling,”
in International Class 44:3

2 Registration No. 4169166 issued July 3, 2012.
3 Registration No. 5147360 issued February 21, 2017. The description of the mark reads: The
mark consists of capital letters "MPG" appearing in gold with white trim in a black rectangle
carrier with slightly rounded corners, one straight gold bar above the rectangle with slightly
rounded corners downward to match the rounded corners of the rectangle, one straight gold
Serial No. 87171946
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After the Examining Attorney made the refusal final, Applicant filed this appeal,
which is fully briefed. We affirm the refusal as to both cited registrations.
I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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. 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).
We consider the du Pont factors for which arguments or evidence were presented. The
other factors, we consider to be neutral.
A. The Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The mark in the 166 Registration is HEALTH IS WEALTH, in standard

bar below the rectangle with slightly rounded corners upward to match the rounded corners
of the rectangle, and the phrase "HEALTH IS WEALTH" in all capital letters in black with
gold trim appears directly below the rectangle and gold bar.
Serial No. 87171946
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character format. Applicant’s mark also is HEALTH IS WEALTH, in standard
characters. There is no evidence that the commercial impression would be different
when applied to Applicant’s goods rather than to Registrant’s services, both of which
are designed to accomplish goals relating to health and fitness.
The mark in the 360 Registration is . This mark also
incorporates in full the term “HEALTH IS WEALTH,” while including also the term
“MPG.” This appears to be an acronym. To the extent it is a house mark, we note that
it has often been said that likelihood of confusion will not be avoided when trade
names and house marks are added to otherwise highly similar terms. “[S]uch addition
may actually be an aggravation of the likelihood of confusion as opposed to an aid in
distinguishing the marks so as to avoid source confusion.” In re Christian Dior, S.A.,
225 USPQ 533, 534 (TTAB 1985) (citations omitted) (finding LE CACHET DE DIOR
confusingly similar to CACHET). See also In re West Point-Pepperell, Inc., 468 F.2d
200, 175 USPQ 558, 559 (CCPA 1972) (stating that addition of a trade name will
make consumers think that products have a common origin or that the companies
have merged); Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1201-02 (TTAB
2007) (applying principle that “the addition of a trade name or house mark or other
such matter to one of two otherwise similar marks will not serve to avoid a likelihood
of confusion.”). The design aspects of the mark in the 360 Registration are in the
nature of background for the wording. We do not find this to significantly change the
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commercial impression of the mark. While we recognize that the registrant’s mark
includes a design element, in the cases of marks consisting of words and a design, the
words are normally given greater weight because they would be used by consumers
to request the services. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911
(Fed. Cir. 2012)
Applicant argues that the marks in the cited registrations are weak because there
are six similar third-party registrations for similar goods and services. Applicant
argues that “[t]hese registrations establish the weakness of the HEALTH-rhyming-
with-WEALTH wording in the fitness and wellness industry and demonstrate that
the cited registrations’ protection should be narrowly construed.”4
MARK GOODS/SERVICES REGISTRATION NO.
YOUR HEALTH IS
YOUR GREATEST
WEALTH
personal fitness training
and physical fitness
consultation
4811463
WEALTH WITHOUT
HEALTH IS
WORTHLESS
medical clinic providing
weight loss solutions,
nutritional counseling,
and other services
4675274
YOUR HEALTH IS
YOUR WEALTH
medical clinics 4743945
YOUR HEALTH IS
YOUR GREATEST
WEALTH
massage therapy services 4883772
TRUE WEALTH IS
YOUR HEALTH
providing assistance,
fitness evaluation,
consultation, and
4589121

4 4 TTABVUE 16. The third-party registrations are attached to the May 10, 2017 Response
to Office Action at 2-17.
Serial No. 87171946
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nutrition, health and
wellness information
HEALTH IS WEALTH computer software for
management and
education in the field of
healthcare
4814651

We observe that evidence of third-party registrations is relevant to “show the
sense in which . . . a mark is used in ordinary parlance.” Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015), citing J.
Thomas McCarthy, 2 McCarthy on Trademark and Unfair Competition § 11:90 (4th
ed. 2015); see also 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). Those cases are distinguishable, however, in that Applicant here submitted
only six registrations, which does not rise to the “powerful” demonstration of
weakness demonstrated in the precedents on this issue. See Juice Generation, 115
USPQ2d at 1672 n.1 (finding at least twenty-six relevant third-party uses or
registrations); Jack Wolfskin, 116 USPQ2d at 1136 n.2 (finding at least fourteen); see
also Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d
1030, 1033-36 (TTAB 2016) (weakness of term ROSE in opposer’s mark PRIMROSE
found based on at least 85 actual uses of ROSE-formative marks for similar services,
eight similar third-party registrations, expert testimony and other evidence
regarding the common nature of ROSE-formative marks in the industry, and
testimony by opposer that it did not vigorously enforce its mark).
Serial No. 87171946
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As to the mark in the 166 Registration, we note that Applicant’s mark is identical
to the mark in the cited registration, whereas five of the six marks in the third-party
registrations are less similar thereto. The existence of a single, identical registration
is not enough to narrow the scope of protection of the cited registration. Cf. Promark
v. GFA Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015) (“Such third-party
registrations and uses are competent to show that the common term has an accepted
meaning in a given field.”). As to the mark in the 360 Registration, we find some
slight weakness, but we note also that the exact term which Applicant seeks to
register is incorporated in full in the mark in the 360 Registration, and that term,
“HEALTH IS WEALTH” is identical to only one of the six third-party registrations,
and the services are dissimilar. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other
types of goods where the proffering party had neither proven nor explained that they
were related to the goods in the cited registration). Thus, Applicant’s mark and the
360 Registration are more similar to each other than to any of the others listed.
Overall, we find as to the 360 Registration, that the marks are similar in sight,
sound, connotation, and commercial impression, and that this first du Pont factor
weighs in favor of finding a likelihood of confusion. We find as to the 166 Registration,
that the marks are identical in sight, sound, connotation, and commercial impression,
and that this first du Pont factor weighs heavily in favor of finding a likelihood of
confusion.
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B. Goods and Services, Trade Channels and Purchasers
When considering the similarity or dissimilarity of the goods and services, we note
that with identical marks, as with the 166 Registration, the goods and services need
not be as similar for us to find a likelihood of confusion. In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). Moreover, goods and services need not be identical
or even competitive in order to support a finding of likelihood of confusion. Rather, it
is enough that the goods and services are related in some manner or that some
circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which could give rise, because of the
marks used or intended to be used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or that there is an
association between the producers of the parties’ goods or services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991).
To demonstrate the relatedness of the identified goods with the services recited in
the 166 Registration, the Examining Attorney submitted copies of third-party
registrations with dietary or nutritional supplements, as identified in the application,
on the one hand, and physical fitness instruction, as identified in the 166
Registration, on the other. Copies of use-based, third-party registrations may help
establish that the goods are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). Examples
include METHOD 5 FITNESS (Registration No. 4610853); BODY CONSTRUCT BY
LORI-ANN MARCHESE (Registration No. 4806875); RATIO ONE.61, and design
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(Registration No. 4920652); KOSAMA COMPLETE BODY TRANSFORMATION,
and design (Registration No. 3919466); U EVOLUTION (Registration No. 4491987);
and PHITNIQUE (Registration No. 5092766).5
In addition to third-party, use-based registrations, the Examining Attorney also
submitted third-party websites that advertise both dietary or nutritional
supplements and physical fitness instruction. These include
www.Lifetimefitness.com;
www.DavidKirschwellness.com; and
http://TracyAnderson.com.6
We thus find that the goods in the application are related to the services of the
166 Registration and are likely to travel through the same channels of trade to the
same classes of consumers, which are members of the general public who are seeking
to accomplish goals relating to fitness and health. The second and third du Pont
factors favor finding a likelihood of confusion for the 166 Registration.
For the 360 Registration, also, the Examining Attorney submitted copies of third-
party registrations with dietary or nutritional supplements, as identified in the
application, on the one hand, and counseling services in the fields of health, nutrition
and lifestyle wellness, as identified in the 360 Registration, on the other. These
include a design mark (Registration No. 4828008); HYDROLOGY; (Registration No.

5 Attached to December 23, 2016 Office Action, at 7-31; and April 27, 2017 Office Action, at
10-22.
6 Attached to April 27, 2017 Office Action, at 71-72; and June 1, 2017 Final Office Action, at
8-36.
Serial No. 87171946
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5083487); RADO PERFORMANCE NUTRITION (Registration No. 5076655); and
HEALTH TAKES GUTS (Registration No. 5160929).7
In addition to third-party, use-based registrations, the Examining Attorney
submitted third-party websites that advertise both dietary or nutritional
supplements and nutrition and wellness counseling. These include
www.Lifetimefitness.com;
http://DianneRishikof.com;
http://Smartforlife.com;
www.Cleanprogram.com; and
www.NicoleGranato.com. 8
We thus find that the goods in the application are related and are likely to travel
through the same channels of trade to the same classes of consumers as those services
for the 360 Registration, which are members of the general public who are seeking to
accomplish goals relating to fitness and health. The second and third du Pont factors
also favor finding a likelihood of confusion for the 360 Registration.
C. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the marks in the application and in the 166
Registration are identical in sight, sound, connotation, and commercial impression,

7 Attached to April 27, 2017 Office Action, at 40-64.
8 Attached to April 27, 2017 Office Action, at 74-77; and June 1, 2017 Final Office Action, at
2-28.
Serial No. 87171946
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and the goods and services are related and travel through overlapping channels of
trade and are encountered by the same general classes of consumers. We further find
that the mark in the application is similar to the mark in the 360 Registration in
sight, sound, connotation, and commercial impression, and the goods and services are
related and travel through overlapping channels of trade and are encountered by the
same general classes of consumers.
Thus, we find a likelihood of confusion with both cited registrations.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.