The Isopure Company, LLCv.Essen Nutrition Corporation

Trademark Trial and Appeal Board

Nov 23, 2016

No. 91218618 (T.T.A.B. Nov. 23, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 23, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
The Isopure Company, LLC
v.
Essen Nutrition Corporation
_____

Opposition No. 91218618
to Application Serial No. 86170550
_____

Deborah K. Squiers of Cowan, Liebowitz & Latman, P.C.
for The Isopure Company, LLC.

Essen Nutrition Corporation, pro se.
_____

Before Kuczma, Lynch and Pologeorgis,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Essen Nutrition Corporation (“Applicant”) seeks registration on the Principal
Register of ISOCURE in standard characters for “Dietary beverage supplements for
human consumption in liquid and dry mix form for therapeutic purposes” in
International Class 5 (“Application”).1

1 Application No. 86170550, filed on January 21, 2014, based on intent to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
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The Isopure Company, LLC (“Opposer”) opposes the application based on
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
Opposer pleaded ownership of three registered marks:
Registration
No.
Mark Goods Registration
Date & Status
2304802 ISOPURE
(standard
characters)
Food supplements in
powdered drink mix and
beverage form (Int. Class
5)
Dec. 28, 1999;
renewed
3170101 ISOPURE MASS
(standard
characters;
disclaimer of
“MASS”)
Powdered nutritional
supplement drink mix,
namely, powder weight
gain drink mixes (Int.
Class 5)
Nov. 7, 2006;
Section 8 affidavit
accepted; Section
15 affidavit
acknowledged
3719714 ISOPURE PLUS
(standard
characters)
Nutritional supplements,
namely protein drinks
without carbohydrates
and nutritional drinks
with carbohydrates (Int.
Class 5)
Dec. 1, 2009;
Section 8 affidavit
accepted; Section
15 affidavit
acknowledged

In its answer, Applicant denies the salient allegations in the notice of opposition.
Both Opposer and Applicant filed trial briefs, and Opposer also filed a reply brief.
I. Evidentiary Record

Opposer objects first to Applicant’s Trial Exhibits A and 4-8 for lack of
authentication and proper foundation. Exhibits A, 4, and 6, consist of two reported
decisions, Nature’s Best, Inc. v. Ultimate Nutrition, Inc., 323 F.Supp.2d 429 (E.D.NY
2004) (denying a preliminary injunction against use of the name “Isopreme” on or in
connection with whey protein supplements and similar goods) and Katz v. Modiri,
283 F.Supp.2d 883 (S.D.N.Y. 2003) (denying a preliminary injunction that would
prohibit use of the name “Juvenex” for spa services), or in the case of Exhibit A, an
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excerpt of the full opinion at Exhibit 4. We need not address the admissibility as
evidence of these exhibits. These reported cases from other jurisdictions may be cited
by Applicant, and we will consider them in our legal analysis for whatever persuasive
authority they may have. However, we note that these cases involved other
proceedings with different evidentiary records from 12 and 14 years ago. See Smith
Kline & French Labs. v. USV Pharm. Corp., 175 USPQ 666, 667 n.1 (TTAB 1972).
Exhibit 7 is a dictionary definition from Merriam-Webster.com, and Exhibit 8 is a
published report by the U.S. Government Accountability Office entitled “Food
Labeling: FDA Needs to Reassess Its Approach to Protecting Consumers from False
or Misleading Claims.” We deem them admissible under Trademark Rule 2.122(e).
We sustain the objection for lack of foundation to Exhibit 5, which is identified as a
“Polaroid Factor Examination” of the marks at issue, apparently prepared by
Applicant based on the likelihood of confusion test applied in the Second Circuit.
Applicant generally objects to Opposer’s evidence “showing the branding and
marketing of ISOPURE LLC” in light of Opposer’s counsel’s objection to a line of
questioning during the testimony deposition of Mr. Hickey about differences in the
packaging for Opposer’s and Applicant’s goods. Opposer’s objection during the
deposition testimony related to the legal principle that “[r]egistrability is determined
based on the description in the application, and restrictions on how the mark is used
will not be inferred.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993).2 Opposer’s evidence regarding branding and marketing was

2 40 TTABVUE 10 (Opposer’s Reply Brief).
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introduced for other purposes,3 discussed below, and not to imply any restriction in
the manner of use of its mark for purposes of comparison with Applicant’s.
Accordingly, we overrule this objection.
The record consists of:
• The pleadings;
• Pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the
opposed Application Serial No. 86170550;
• Pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), the pleaded
registrations properly made of record in Opposer’s First Notice of Reliance, 21
TTABVUE;
• Articles and advertisements from various publications submitted with
Opposer’s Second Notice of Reliance, 22 TTABVUE;
• Webpage articles submitted with Opposer’s Second Notice of Reliance, 22
TTABVUE;
• Selected answers to interrogatories and request for admission by Applicant,
submitted with Opposer’s Third Notice of Reliance, 26 TTABVUE;
• By stipulation of the parties, 19 TTABVUE, the expert report of Applicant’s
expert, Dr. Gulsat Aygen, 23 TTABUVE (the admissibility of the exhibits
thereto is addressed above);

3 Id. (Opposer’s Reply Brief) (exhibits in question “relevant to . . . priority, strength of
Opposer’s ISOPURE marks, similarity of the marks and goods, recognition of Opposer’s
ISOPURE marks, channels of trade and targeted customers”).
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• By stipulation of the parties, 19 TTABVUE, the declaration and expert report
of Opposer’s expert, Geoffrey Nunberg, and his CV attached thereto as Exhibit
A, 25 TTABVUE;
• The testimony of Applicant’s President, Dr. Madhavan Anirudhan, (the
admissibility of the exhibits thereto is addressed above), 33 TTABVUE; and
• The testimony of Opposer’s President, Chris Hickey, and exhibits thereto, 34
TTABVUE (public version) and 36 TTABVUE (confidential version).
II. Standing and Priority
Opposer must prove standing by showing a real interest in the outcome of the
proceeding and a reasonable basis for believing that it would suffer damage if the
mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposer’s pleaded
registrations showing current status and title set forth above and made of record
through its First Notice of Reliance establish its standing. See Coach Serv. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012).
Opposer’s pleaded registrations further establish that Section 2(d) priority is not
an issue in this case as to the marks and the goods covered by these registrations.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974); Miss Universe L.P. v. Cmty. Mktg. Inc., 82 USPQ2d 1562, 1566 (TTAB
2007). Applicant does not contest Opposer’s priority.
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III. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a 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, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A
likelihood of confusion analysis often focuses primarily on the similarities between
the marks and the similarities between the goods and services. 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.”). Opposer
bears the burden of proving its claim of likelihood of confusion by a preponderance of
the evidence. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848
(Fed. Cir. 2000).
We focus our analysis on Opposer’s Registration No. 2304802 for the standard
character mark ISOPURE (hereinafter, the Registration). If no likelihood of confusion
exists between ISOPURE, standing alone, and ISOCURE, then it follows there would
be no likelihood of confusion as to the other pleaded registrations, in which the marks
and/or the goods bear less similarity to the mark and goods in the subject application.
See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Opposition No. 91218618

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A. The Goods and Trade Channels
Turning first to the goods themselves as set forth in the application and the
Registration, Applicant’s and Opposer’s goods are supplements in powdered drink
mix and beverage form. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (comparison must be assessed
based on the goods identified in the application and registration); Octocom Sys., Inc.
v. Houston Computers Serv. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (same). Opposer’s ISOPURE Registration has an unrestricted and broad
identification of “Food supplements in powdered drink mix and beverage form” that
encompasses all goods of the type described, including Applicant’s “[d]ietary beverage
supplements for human consumption in liquid and dry mix form for therapeutic
purposes.” See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992). We therefore find that the goods overlap in part.
Furthermore, given the lack of restriction in the Registration’s identification, we
must presume that Opposer’s food supplements in powdered drink mix and beverage
form travel in all the usual channels of trade for these goods and that they are
available to all potential classes of ordinary consumers. See Cunningham, 55
USPQ2d at 1846 (affirming Board finding that where the identification is
unrestricted, “we must deem the goods to travel in all appropriate trade channels to
all potential purchasers of such goods”); Elbaum, 211 USPQ at 640. Moreover,
because the goods in the Registration overlap with Applicant’s identified goods, we
therefore presume that they travel through the same channels of trade to the same
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class of purchasers, considerations under the third du Pont factor. See American
Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d
1022, 1028 (TTAB 2011) (where the services were legally identical, “the marketing
channels of trade and targeted classes of consumers and donors are the same”); see
also In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding
Board entitled to rely on this legal presumption in determining likelihood of
confusion).
Applicant improperly strays from the identifications of goods at issue to make a
variety of arguments based on extrinsic evidence. Applicant argues that the goods
differ for likelihood of confusion purposes because they contain different types of
ingredients. However, none of the specifics asserted by Applicant are reflected in the
respective identifications of goods that control our analysis. Similarly, Applicant
claims that its trade channels will be more specialized, selling to weight loss and
medical centers, as well as to adult patients with bone loss. Although Applicant’s
identified goods are “for therapeutic purposes,” thereby indicating trade channels in
the therapeutic realm, the identification in the Registration contains no restriction
and therefore encompasses all types of food supplements in powdered drink mix and
beverage form, including those for therapeutic purposes. Applicant’s assertions about
the age and condition of the purchasers reflect the same improper attempt to deviate
from the identifications of goods at issue. The same holds true for its claims that
Opposer focuses on the body building market, while Applicant focuses on the food and
health industry. “[W]here the goods in a cited registration are broadly described and
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there are no limitations in the identification of goods as to their nature, type, channels
of trade or classes of purchasers, it is presumed that the scope of the registration
encompasses all goods of the nature and type described, that the identified goods
move in all channels of trade that would be normal for such goods, and that the goods
would be purchased by all potential customers.” Elbaum, 211 USPQ at 640; see also
Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357
(Fed. Cir. 2000) (“When the registration does not contain limitations describing a
particular channel of trade or class of customer, the goods or services are assumed to
travel in all normal channels of trade.”). Therefore, we reject Applicant’s arguments
that the trade channels are distinct, and instead, we find that they overlap.
B. Similarity of the Marks and Strength of the Mark in the Registration
We first assess the strength of Opposer’s mark because that affects the comparison
with Applicant’s mark, as “[a] strong mark . . . casts a long shadow which competitors
must avoid.” Kenner Park Toys, Inc. v. Rose Art Indus., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). “In determining the strength of a mark we consider both
its inherent strength based on the nature of the mark itself and its market strength.”
Tea Bd. of India v. Republic of Tea, Inc., 80 USPQ2d 1881, 1898-99 (TTAB 2006).
Opposer argues that ISOPURE is a coined term and that its marks therefore merit
“the highest degree of protection.”4 As background on the mark, Opposer’s
promotional materials state, “Pure is in our name – because Isopure Protein means

4 38 TTABVUE 20 (Opposer’s Brief).
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perfect, delicious 100% Whey Protein Isolate.”5 Also, according to the testimony of
Opposer’s President, Mr. Hickey:
Q. When we look at the term Isopure, can you break it down for me; what
does iso stand for?
A. Isolate, whey protein isolate.
Q. So we put that isolate together and you create that mark or that brand?
A. Correct.
Q. Can you give me an idea of what sort of connotation you believe that that
term has?
A. Sure. So iso, isolate, pure, purity, simplicity, high quality. So the
connotation when the brand was created, was to essentially connote the
highest quality, purest whey protein isolate in the marketplace.6

Other evidence of record supports this connotation of the components of ISOPURE.7
Both parties introduced testimony from linguistic experts who noted that “ISO” has
a scientific connotation, and Applicant’s expert, like Opposer’s President,
acknowledged that for the goods at issue, “ISO” can be an abbreviation for protein
“isolate.”8 Applicant’s President, Dr. Anirudhan, also acknowledged that ISO “could”
refer to isolate.9 In the context of these goods, we find that the “ISO” portion of
Opposer’s mark would be understood as a shorthand for “isolate,” while the “PURE”
portion would be understood as a reference to the quality – or purity – of the goods.

5 34 TTABVUE 316,
6 34 TTABVUE 15.
7 E.g., 34 TTABVUE 485 (“Isopure Low Carb Protein Powder relies on ion exchange whey
protein isolate, microfiltered whey protein isolate….”); Id. at 481 (ISOPURE ZERO CARB
promotional article stating “This higher-purity whey is known as whey protein isolate.”).
8 28 TTABVUE 5 (Aygen testimony declaration) (both connotations); 25 TTABVUE 10
(Nunberg testimony declaration) (scientific connotation).
9 33 TTABVUE 50.
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Accordingly, although ISOPURE may be a coined word, the descriptive or highly
suggestive nature of its components results in some degree of conceptual weakness.10
However, Opposer made a substantial showing of commercial strength of
ISOPURE. For example, Opposer’s confidential sales chart for its products under the
ISOPURE marks indicates significant net revenue through nationwide sales, and
Opposer also has a lengthy customer list.11 Opposer also provided confidential
advertising and marketing expenditures for 2013-2015,12 and while we do not recite
the specifics herein, the spending is considerable. Opposer submitted other testimony
and evidence detailing the marketing and advertising of its ISOPURE goods,
including:
• Print advertisements in national publications such as GQ, Men’s Health,
Muscle and Fitness, and Women’s Health, as well as circulation figures for
these magazines;13

• A video billboard in Times Square on New Year’s Eve;14
• Opposer’s print advertising media plans for 2013-2015;15
• Opposer’s marketing budget document showing print, digital and social media
expenditures;16

10 We note that this is consistent with the finding in the case emphasized by Applicant,
Nature’s Best, Inc. v. Ultimate Nutrition, Inc., 323 F.Supp.2d at 431 (“this Court finds that
Isopure is no more than a suggestive mark of only moderate strength”).
11 36 TTABVUE 318-19 (Confidential Exhibit 10 to Hickey testimony deposition); Id. at 258-
316 (Confidential Exhibit 9 to Hickey testimony deposition).
12 Id. at 417-426 (Confidential Exhibit 22 to Hickey testimony deposition).
13 34 TTABVUE 51-70, 81-82 and Exhibits 12-17 and 23 (Hickey testimony deposition).
14 Id. at 72 and Exhibit 18.
15 Id. at 72-74 and Exhibits 19-21.
16 Id. at 74-81 and Exhibit 22.
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• Events in which Opposer has participated as “a way to drive awareness for [its]
brand across multiple audiences;”17

• Examples of online and social media promotion of ISOPURE, including some
social media popularity or usage information; and18

• An ISOPURE print advertisement being shown on the Conan O’Brien show;19
and

• Examples of print promotional articles referring to ISOPURE products.20

We agree with Opposer that the foregoing evidence shows that the ISOPURE mark
in the Registration can be considered a commercially strong mark. Thus, Opposer has
demonstrated that the ISOPURE mark rises to the level of a strong mark, thereby
casting a long shadow that competitors must avoid. See Kenner Park Toys, 22
USPQ2d at 1456.
Turning to the similarity of Applicant’s and Opposer’s marks, we must compare
them “in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imports, 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). The proper evaluation inquires “not whether the marks can be
distinguished when subjected to a side-by-side comparison, but whether they are
sufficiently similar in their overall commercial impression.” Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.

17 Id. at 85-88 and Exhibit 24.
18 Id. at 91-94 and Exhibits 25-26, 28-29.
19 Id. at 100-01 and Exhibit 30.
20 Id. at 101 and Exhibits 31-33.
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Cir. 2012). When the goods overlap, as they do here, the degree of similarity of the
marks necessary to support a conclusion of likely confusion declines. See Coach
Servs., Inc., 101 USPQ2d at 1722; Century 21 Real Estate v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
The appearance and sound of these marks are similar. They both share the
identical first component, ISO, and the second component of each mark consists of a
consonant letter followed by URE – PURE and CURE. Thus, the marks differ by only
one letter, and they rhyme. In looking for, or calling for the identical goods under
these marks, we find that consumers could mistake one mark for the other because
the variation between them is so small. “The focus is on the recollection of the average
purchaser, who normally retains a general rather than a specific impression of
trademarks.” In re Continental Graphics Corp., 52 USPQ2d 1374, 1375 (TTAB 1999)
(citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975)).
Applicant argues that the marks differ because of their distinct meanings and
different embedded parts of speech – “pure” as an adjective versus “cure” as a noun
or verb. We note that both parties introduced by stipulation the declaration testimony
of linguistic experts, each of whom provided a linguistic analysis of ISOPURE and
ISOCURE. While we have considered both experts’ declarations for their persuasive
value, purchasers’ “understanding of the marks must be determined in light of the
relevant purchasing sector and not that of linguistic experts or those familiar with
the meaning or derivation of words.” Ferro Corp. v. Nicofibers, Inc., 196 USPQ 41, 45
(TTAB 1977).
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We agree with Applicant that to the extent the difference in the marks is noticed
by a consumer, the second component of the marks creates some variation in the
commercial impression. However, as noted above, many consumers may not notice
the one-letter difference in the marks, and even if they do, the other similarities in
the marks may cause them to believe the goods come from the same source. This type
of confusion is particularly likely given the lack of evidence in the record that third
parties in the industry use similar marks, or even marks containing ISO as a prefix,
as well as the commercial strength of ISOPURE. Thus, the overall similarity of the
marks outweighs the difference.
C. Impulse Purchasing
Opposer contends that both parties’ goods are relatively inexpensive “impulse”
purchases, not the type of careful, sophisticated purchases that decrease likely
confusion. Opposer points out that both products are relatively inexpensive, with
Applicant’s selling for less than $10 per unit and Opposer’s selling for less than $7
per unit.21 Applicant asserts, by contrast, that consumers of these goods are
sophisticated because they tend to be educated about health and nutrition. We find
that the relatively low cost of the goods at issue tends to suggest less care by
consumers in making purchasing decisions. Although we agree that some evidence of
record implies that targeted consumers may have an interest in health, nutrition, or
fitness, many members of the general public fit this profile, and the nature of any

21 33 TTABVUE 30-31; 57-58 (Anirudhan testimony); 34 TTABVUE 94-95 (Hickey
testimony).
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such sophistication would not alleviate likely confusion from similar marks used on
the same goods.
D. Other du Pont Factors
Opposer briefly raises several other du Pont factors. First, we agree with Opposer
that the lack of evidence of any third party use of the same or similar marks used on
similar goods weighs in Opposer’s favor. Second, we concur that the lack of evidence
of any actual confusion remains a neutral factor in this case, given the minimal
opportunity for such confusion to occur. Applicant concedes in its Brief that “[u]pon
objection from ISOPURE, Essen removed the mark in question from its webpage and
does not use it. So there has not been actual confusion as Essen’s products with [sic]
ISOCURE name [sic] has never been sold directly to [sic] public.”22
Third, Opposer argues under the thirteenth du Pont factor that evidence of
Applicant’s bad faith adoption of its mark is relevant to our likelihood of confusion
analysis. See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1891 (Fed. Cir. 1991). However, Opposer points to nothing in support
of this contention other than Applicant’s knowledge of the ISOPURE products before
selecting its own mark. Applicant acknowledges being aware of ISOPURE, but alleges
the existence of “hundreds of other products with ISO in [their] name[s] including
Essen’s other products, ISOSHOT and ISOPOWER.”23 Therefore, Applicant contends
that it exercised good faith in selecting a mark combined of the ISO prefix with a

22 39 TTABVUE 17.
23 Id. at 18; see also 33 TTABVUE 53-54 (Anirudhan testimony).
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different word, CURE. An applicant’s prior knowledge of the senior mark is not
enough to invoke intent as a factor in our likelihood of confusion analysis. Action
Temp. Svcs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1310 (Fed. Cir.
1989) (quoting Weiner King, Inc. v. Wiener King Corp., 615 F.2d 512, 522, 204 USPQ
820, 829 (CCPA 1980)). In this case, given that Opposer merely asserts that Applicant
knew of Opposer’s prior marks, we find no showing of bad faith.
IV. Conclusion
Given the strength of Opposer’s ISOPURE mark, the similarity of the marks at
issue, and the overlapping goods that travel in the identical trade channels to the
same classes of consumers in the general public, we conclude that confusion is likely.
Decision: The opposition is sustained.