The Mediceutical Association, Inc.

Trademark Trial and Appeal Board

Sep 25, 2017

No. 86779222 (T.T.A.B. Sep. 25, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 25, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re The Mediceutical Association, Inc.
_____

Serial No. 86779222
_____

Brick G. Power of Durham Jones & Pinegar, P.C.
for The Mediceutical Association, Inc.

Karen Sulita Dindayal, Trademark Examining Attorney, Law Office 117
(Hellen Bryan-Johnson, Managing Attorney).
_____

Before Quinn, Masiello, and Heasley, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
The Mediceutical Association, Inc. (“Applicant”) filed an application1 for
registration on the Principal Register of the mark MEDICEUTICAL in standard
characters for the following goods:
Amino acid preparations for medical purposes; Amino
acids for nutritional purposes; Dietary and nutritional
supplements; Dietary supplements; Multi-vitamin
preparations; Nutritional supplements; Nutritional

1 Application Serial No. 86779222 was filed on October 6, 2015 on the basis of Applicant’s
bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15
U.S.C. § 1051(b).
Serial No. 86779222

2

supplements for amino acid supplementation, bone care,
skeletal care, joint support, brain support, nerve support,
prenatal care, postnatal care, preparation for surgery,
recovery from surgery, recovery from trauma and recovery
from bone fractures; Prenatal vitamins; Vitamin and
mineral preparations for medical use; Vitamin and
mineral supplements; Vitamin supplements, in
International Class 5.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the following registered standard
character marks2 as to be likely to cause confusion, or to cause mistake, or to
deceive:
MEDICEUTICALS for: skin care products, namely, face creams,
lotions, and gels; skin masks; skin peels; skin
cleansers; skin scrubs; non-medicated skin
care treatment, namely, cleansers, anti-
bacterial creams, gels, and lotions, lotions,
toners, oils, and moisturizers; non-medicated
skin care treatment preparations; anti-aging
creams, lotions, and gels; anti-wrinkle
creams, lotions, and gels; skin moisturizing
creams, lotions, and gels; foot creams and
lotions; skin toners; bubble baths, in
International Class 3; and

medicated skin care products, namely, face
creams, lotions, and gels; medicated skin
masks; medicated skin peels; medicated skin
cleansers; medicated skin scrubs; medicated
anti-aging creams, lotions, and gels;
medicated anti-wrinkle creams, lotions, and
gels; medicated skin moisturizing creams,
lotions, and gels; medicated foot creams and

2 Although the title records indicate that the two cited registrations are owned by two
differently named entities, we note that the record owners share the same address on
Pebble Drive, Fort Worth, TX.
Serial No. 86779222

3

lotions; medicated skin toners; medicated
skin care preparations for use in the
treatment of oily skin, dry skin, psoriasis,
rosacea, in International Class 5.3

MEDICEUTICALS for: hair shampoo, in International Class 3.4

When the refusal was made final, Applicant appealed to this Board and requested
reconsideration. The Examining Attorney denied the request for reconsideration,
and this appeal proceeded. Applicant and the Examining Attorney have filed briefs.
1. Evidentiary matter.
Applicant attached to its brief 17 pages of evidence.5 That evidence is untimely
and we have not considered it. 37 C.F.R. § 2.142(d);6 see also Trademark Trial and
Appeal Board Manual of Procedure (TBMP) § 1207.01 (June 2017). While it appears
that the newly submitted evidence may have already been in the record, we have
not compared it to the record evidence, but have based our decision solely on the
evidence that is properly of record. See TBMP § 1203.02(e) (evidence already of
record should not, as a matter of course, be resubmitted as exhibits to the brief).
2. Refusal under Section 2(d).
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the issue of likelihood of confusion

3 Reg. No. 4448041, issued December 10, 2013.
4 Reg. No. 0932375, issued April 11, 1972; renewed.
5 Applicant’s brief, 8 TTABVUE 13-29.
6 “Evidence should not be filed with the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce additional evidence after an
appeal is filed, the appellant or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application for further examination.”
Serial No. 86779222

4

as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). In any likelihood of confusion analysis, two key considerations
are 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). In this case, Applicant and the Examining Attorney
have also presented evidence and arguments regarding the relevant trade channels
and customers.
(a) The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of
the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Moreover, marks
must be considered in light of the fallibility of memory. In re St. Helena Hosp., 774
F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014).
The marks are virtually identical in appearance, sound, and meaning, the sole
difference between them being the final letter S in the cited registered marks.
Although, strictly speaking, the letter S affects the appearance, sound, and meaning
of the marks, in practical terms it has little distinguishing effect. See Wilson v.
Serial No. 86779222

5

DeLaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding “no material
difference, in a trademark sense, between the singular and plural forms of the word
…”). To the extent that the final letter S in Registrant’s mark is taken to have a
pluralizing effect, we note that Applicant itself, in its own promotional materials,
repeatedly switches between use of the singular and plural forms of its mark, e.g.:
INTRODUCING MEDICEUTICALS
WHAT IS A MEDICEUTICAL?
Mediceuticals are an emerging category of nutritional
products … Mediceutical products represent the focused
application of nutritional science …
MEDICEUTICAL QUALIFICATIONS
In order to qualify as a mediceutical, a supplement must:
…7
In this case we see almost no distinction between the overall commercial
impressions created by the marks at issue. Accordingly, the du Pont factor of the
similarity or dissimilarity of the marks favors a finding of likelihood of confusion.
(b) The goods.
We next consider the similarity or dissimilarity of the goods as identified in the
application and the cited registrations. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Applicant’s goods are dietary and nutritional supplements, vitamin

7 Applicant’s response of August 2, 2016 at 19.
Serial No. 86779222

6

supplements, and related goods. Registrant’s goods are various skin care products
(medicated and non-medicated) and shampoo.
The goods are, to some degree, similar in nature, as the record shows that some
skin and hair care products are promoted as providing vitamins or minerals or
functioning as a nutritional supplement, such as PHYTO Phytologist shampoo
(“The best supplement to absolute hair thinning prevention”);8 SWANSON Vitamin
C Cream for skin;9 SWANSON Vitamin K Cream with Menaquinone-7, Vitamin E
Cream, and Niacin Skin Cream;10 and CALENDULA Vitamin E Cream and Zinc
Chamomile Cream.11
To show that the goods of Applicant and Registrant are commercially related, the
Examining Attorney has submitted evidence from the internet showing nutritional
supplements and skin and hair care products offered by a single producer under the
same trademarks. We note the following:
CVS brand moisturizers, foaming cleanser, shampoos,
omega-3 krill oil, multi-vitamins, and glucosamine
chondroitin tablets;12
RITE AID brand acne gel, day cream, regenerating
serum, moisturizer, shampoo, magnesium capsules,
vitamin D-3 softgels, and glucosamine/chondroitin
capsules;13

8 Office Action of March 19, 2017 at 36.
9 Id. at 45.
10 Id. at 47-48.
11 Office Action of February 2, 2016 at 12.
12 Id. at 13-15.
13 Id. at 16-18.
Serial No. 86779222

7

ARBONNE brand shampoo, facial oil, rejuvenating
cream, “calcium plus” tablets;14
CAUDALIE brand moisturizers, face lifting soft cream,
night infusion cream, and dietary supplement capsules;15
DR. BAUMANN brand shampoos, facial care creams,
mineral food supplements, and omega-3 food
supplements;16
HERBALIFE NUTRITION brand shampoo, aloe skin
cleanser, herbal toner, moisturizer, night cream, and
“targeted nutrition products”;17
PHYTO brand shampoo and dietary supplements;18
SWANSON brand shampoos, moisturizing creams, oils,
and lotions, skin serum, vitamin and multivitamin tablets
and softgels;19
MURAD brand skin cleansers, spot lightening gel, toners,
moisturizers, and dietary supplements and “Pure Skin
Clarifying Dietary Supplement “;20
PERRICONE MD brand omega-3 supplements, “skin
clear supplements,” metabolic support supplements,
moisturizers, exfoliators, cleansers, serums;21
XTENDLIFE brand dietary supplement and “age defying
day cream”;22
MITOQ brand blood sugar capsules and cream serum for
skin.23

14 Office Action of March 19, 2017 at 9-14.
15 Id. at 17-20.
16 Id. at 24-28.
17 Id. at 30-35.
18 Id. at 36, 39.
19 Id. at 42-54.
20 Office Action of August 24, 2016 at 11-12.
21 Id. at 13-14.
22 Id. at 15-16.
Serial No. 86779222

8

We need not find similarity as to each and every product listed in the application
and registrations. For purposes of our analysis, it is sufficient that relatedness be
established for any item encompassed by the identification of goods in a particular
class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Applicant argues that the offering of supplements and beauty products under
mass-market house brands like CVS and RITE AID does not show that such goods
are so related as to suggest that customers would mistakenly believe they originate
from the same source.24 Even if we give somewhat reduced weight to such evidence,
it nonetheless supports the Examining Attorney’s position and bolsters the other
marketplace evidence of record indicating that the goods at issue are, in fact, offered
under the same mark. Applicant also argues that “the vast majority of sources of
shampoo and skin care products are not sources of specialized supplements.”25 Even
assuming this to be true, the fact that all producers of beauty products are not also
producers of supplements does not undercut the Examining Attorney’s position if
some businesses offer both types of products to the extent that customers would
believe they may emanate from the same source.
We find the Examining Attorney’s evidence sufficient to persuade us that relevant
customers are likely to believe that nutritional supplements and skin and hair care
products are types of goods that may come from a single source. Therefore, the du

23 Id. at 17-18.
24 Applicant’s brief at 4, 8 TTABVUE 8.
25 Id. at 6, 8 TTABVUE 10.
Serial No. 86779222

9

Pont factor of the similarity or dissimilarity of the goods weighs somewhat in favor
of a finding of likelihood of confusion.
(c) Trade channels; Customers.
The Examining Attorney argues that, because there are no restrictions as to trade
channels and customers in the application and registrations at issue, we may
presume that the goods “travel in the same channels of trade to the same class of
purchasers,”26 citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012). However, such a presumption is not logically valid where the goods at
issue are not identical. The Examining Attorney is correct in noting that we may
presume that the goods will move through all channels of trade that are normal for
such goods and be available to all types of customers for such goods. See Octocom,
16 USPQ2d at 1787; Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76 (CCPA 1973); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992).
The only evidence of record regarding trade channels is the Examining Attorney’s
evidence (discussed in detail above) showing that beauty products for hair and skin
are offered over the internet together with nutritional supplements, primarily
through the online stores of their makers. Although this evidence may show that
customers using the internet might find the products of both Applicant and
Registrant, it is not evidence that the goods of different makers would be found in
the same online stores. In this regard, it seems to support Applicant’s contention

26 Examining Attorney’s brief, 11 TTABVUE 13.
Serial No. 86779222

10

that Applicant’s own goods are “currently available” online only through Applicant’s
own website.27 However, there is evidence of at least one online store – i.e., the
RITE AID store – that offers goods under various third-party brands and also offers
both nutritional supplements and hair and skin products.28 Applicant’s contention
that the only other channel through which its goods are available is “the offices of
healthcare providers”29 is not supported by evidence of record and, in any event,
there is no such limitation of trade channels set forth in the application.
Overall, neither the Examining Attorney nor Applicant has persuasively
supported its contentions regarding the relevant trade channels and customers to
be considered in our analysis. Accordingly, we treat these du Pont factors as
neutral.
(d) Balancing the factors.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The marks at
issue are nearly identical in appearance, sound, meaning and overall commercial
impression. The goods at issue are sufficiently related such that customers would
believe that they emanate from the same source. Accordingly, we find that
Applicant’s mark so resembles the cited registered marks as to be likely to cause
confusion as to the source of Applicant’s goods.
Decision: The refusal under Section 2(d) is AFFIRMED.

27 Applicant’s brief at 3, 8 TTABVUE 7.
28 Office Action of February 2, 2016 at 16-18.
29 Applicant’s brief at 3, 8 TTABVUE 7.