Tampa Bay Nutraceutical Company, LLC

Trademark Trial and Appeal Board

Nov 14, 2007

No. 78655765 (T.T.A.B. Nov. 14, 2007)

Mailed: November 14, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tampa Bay Nutraceutical Company, LLC
________

Serial No. 78655765
_______

Garrett M. Weber of Lindquist & Vennum PLLP for Tampa Bay
Nutraceutical Company, LLC.

Angela Micheli, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Rogers and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Tampa Bay Nutraceutical
Company LLC to register the mark NUTRACAL in standard
character form on the Principal Register for “nutritional
supplements” in International Class 5.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Application Serial No. 78655765 was filed on June 22, 2005,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78655765
2
applicant’s mark, as intended to be used on or in
connection with its identified goods, so resembles the mark
NUTRI-CAL, previously registered on the Principal Register
in typed or standard character form for “dietary
supplements for veterinary use” in International Class 31,2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs
addressing the issue on appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA

2 Registration No. 0961908 issued on June 26, 1973. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.

Ser No. 78655765
3
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first consider the similarity of the marks. In
this case, applicant’s mark, NUTRACAL, is nearly identical
to the cited mark, NUTRI-CAL, in appearance and sound.
Both consist of three syllables, respectively, “NU-TRA-CAL”
and “NU-TRI-CAL.” The only differences between the marks
is the substitution of the letter “A” in applicant’s mark
for the corresponding letter “I” in the marks’ middle
syllable and the absence from applicant’s mark of the
hyphen before the last syllable thereof. The difference of
a single vowel in the middle of the marks and the absence
of a hyphen from applicant’s mark do little to distinguish
applicant’s mark from that of registrant in terms of
appearance or sound. The marks thus are nearly identical
in appearance and could easily be articulated the same by
many speakers. Both marks appear to be coined terms with
root elements connoting nutrition and calories and, when
used on or in conjunction with the identified goods, the
composites would both suggest products that provide
nutritional enhancement of calories being ingested or
expended. There is no evidence in the record that either
mark has any recognized meaning. As a result, the marks do
Ser No. 78655765
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not only look and sound the same, but also have highly
similar connotations and convey highly similar overall
commercial impressions.
Applicant argues that NUTRI-CAL is a weak mark
entitled to a narrow scope of protection. In support of
its position, applicant submitted evidence from a private
database of three third-party registrations for “NUTRA”-
formative marks. These marks include NUTRACLUB for “herbal
supplements” (Reg. No. 2622883); NUTRACHEW for “nutritional
supplements for pets” (Reg. No. 2095158); and NUTRACELL for
“oral dietary supplements” (Reg. No. 2080743). In
addition, applicant notes that in the first Office action,
the previous examining attorney also cited Reg. No. 0836366
for the mark NUTRI-CAL for “low calorie concentrated
vitamin, mineral, and protein food for use as a weight-
reducing diet sold to distributors for resale through door-
to-door or neighborhood group sales campaigns” and prior
pending application Serial No. 76549611 (which we note has
subsequently registered) for the mark NATRACAL for
“pharmaceutical products and dietetic substances adapted
for medical use, namely, dietary food supplements including
protein powders made from milk, milk products, and milk
fractions” and “milk, powdered milk, cheeses, and butter.”
Ser No. 78655765
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Applicant’s arguments and evidence are not persuasive.
First, we note that submitting copies of third-party
registrations obtained from private search companies is not
sufficient to make them of record in a Board ex parte
proceeding. See In re Dos Padres Inc., 49 USPQ2d 1860,
1861 n.2 (TTAB 1998); and In re Broadway Chicken Inc., 38
USPQ2d 1559, 1560 n.6 (TTAB 1996). Moreover, even if
considered the proffered registrations are not evidence of
use of the marks shown therein. Thus, they are not proof
that consumers are familiar with such marks so as to be
accustomed to the existence of the same or similar marks in
the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); and
Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989
(TTAB 1982). We note in addition that while the mark
NUTRI-CAL in Reg. No. 0836366 is identical to the mark in
the cited registration, the goods and their specified
channels of trade are less similar than the goods recited
in either the cited registration or the application at
issue. In addition, none of the marks in the remaining
registrations made of record by applicant are as similar to
registrant’s NUTRI-CAL mark as applicant’s NUTRACAL mark.
Thus, even if we were to find, based on applicant’s
evidence, that registrant’s NUTRI-CAL mark is weak and
Ser No. 78655765
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entitled to a narrow scope of protection, the scope is
still broad enough to prevent the registration of
applicant’s NUTRACAL mark for related goods. See In re
Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277,
278 (CCPA 1971).
Finally, each case must be decided on its own merits,
and previous decisions by examining attorneys are not
binding on the Office or the Board. See In re Sunmarks
Inc., 32 USPQ2d 1470 (TTAB 1994); and In re National Novice
Hockey League, Inc., 222 USPQ 638, 641 (TTAB 1984).
Thus, despite the slight difference between them,
NUTRI-CAL and NUTRACAL, taken as a whole, are highly
similar in appearance, sound, connotation and commercial
impression. Accordingly, this du Pont factor favors a
finding of likelihood of confusion.
The Goods and Their Channels of Trade
Turning next to the goods, applicant argues that there
is no likelihood of confusion because its products are for
human consumption and registrant’s products are for pets.
However, it is well settled that the question of likelihood
of confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than on the basis of what the record reveals the
Ser No. 78655765
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goods to be. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and
The Chicago Corp. v. North American Chicago Corp., 20
USPQ2d 1715 (TTAB 1991). Further, where the goods in an
application or cited registration are broadly described,
such that there are no restrictions as to trade channels
and purchasers, it is presumed that the identification of
goods encompasses not only all goods of the nature and type
described therein, but that the identified goods are
offered in all the normal channels of trade, and that they
would be purchased by all the usual customers. See, e.g.,
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In this case, registrant’s “dietary supplements…” as
identified in the cited registration, are specifically “for
veterinary use.” However, because applicant’s “nutritional
supplements” are not limited to any particular type of use,
we must assume that they encompass nutritional supplements
suitable for use by humans and animals. Thus, for purposes
of our likelihood of confusion analysis, the fields of use
of applicant’s goods are presumed to encompass those of
registrant.
Furthermore, the examining attorney has made of record
a number of use-based, third-party registrations which show
that various entities have adopted a single mark for
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nutritional and dietary supplements intended for use by
humans and animals. See, for example:
Registration No. 2685760 for food supplements for
horses, veterinary use and humans;

Registration No. 2852648 for food/dietary
supplement for human and veterinary use;

Registration No. 2846862 for vitamin and mineral
supplements for human and veterinary use;

Registration No. 2808826 for food/dietary
supplement for human and veterinary use;

Registration No. 3090417 for nutritional
supplements for human and veterinary use;

and

Registration No. 3035331 for food and dietary
supplement for human and veterinary use.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
In addition, the examining attorney submitted evidence
from commercial Internet web sites suggesting that the same
entities provide both applicant’s and registrant’s types of
goods. The following samples are illustrative:
nutritional supplements for humans and pets
(www.healthyplanetrx.com);

Ser No. 78655765
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dietary and nutritional supplements for humans
and pets,
(www.judyshealthcafe.com);

nutritional supplements for humans and pets,
(www.kalahealth.com); and

nutritional supplements for humans and pets,
(www.adamspetsupplies.com).

In making our determination regarding the relatedness
of the channels of trade in which parties’ goods are
encountered, we must again look to the goods as identified
in the involved application and cited registration. See
Octocom Systems, Inc. v. Houston Computers Services 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.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) The goods as
identified in the cited registration and involved
application contain no restrictions as to their channels of
Ser No. 78655765
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trade. Accordingly, both applicant’s and registrant’s
goods are presumed to move in all normal channels of trade
and be available to all classes of potential consumers,
including consumers of applicant’s goods. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Based upon established law and the above evidence, we
find that applicant’s unrestricted identification of goods
must be read to encompass the goods of registrant and both
applicant's and registrant's goods presumptively move in
the same channels of trade to overlapping classes of
consumers. Accordingly, these du Pont factors also favor a
finding of likelihood of confusion.
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to require analysis, inasmuch
as we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its NUTRI-CAL
mark would be likely to believe, upon encountering
applicant’s goods rendered under the mark, NUTRACAL, that
the goods originate with or are somehow associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
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doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal under Section 2(d) of the Act
is affirmed.