Vim & Vigor, Inc.

Trademark Trial and Appeal Board

Jun 27, 2002

No. 75937091 (T.T.A.B. Jun. 27, 2002)

6/27/02 Paper No. 11
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
____________

In re Vim & Vigor, Inc.
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Serial No. 75/937,091
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Anthony O. Cormier for Vim & Vigor, Inc.

Linda Orndorff, Trademark Examining Attorney, Law Office
111, (Kevin Peska, Managing Attorney).
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Before Cissel, Hanak and Chapman, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Vim & Vigor, Inc. (applicant) seeks to register in
typed drawing form VIM & VIGOR for “wholesale, retail and
mail order catalog services featuring nutritional and
dietary supplements, weight loss products and skin care
products.” The application was filed on March 6, 2000 with
a claimed first use date of April 1, 1998.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the identical mark VIM &
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
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VIGOR, previously registered for a “health and fitness
magazine.” Registration No. 1,821,238.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods and
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods [and services] and differences in the marks.”).
Considering first the marks, they are identical, as
applicant acknowledges at page 4 of its brief. Thus, the
first Dupont “factor weighs heavily against applicant”
because applicant’s mark is identical to the registered
mark. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to a consideration of applicant’s services
and registrant’s goods, we note that because the marks are
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identical, their contemporaneous use can lead to the
assumption that there is a common source “even when [the]
goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993). However, in this case
registrant’s goods (a health and fitness magazine) and
applicant’s services (particularly its mail order catalog
services featuring nutritional and dietary supplements and
weight loss products) are clearly related. Obviously, any
health and fitness magazine would feature articles on
nutritional and dietary supplements as well as weight loss
products.
In its briefs, applicant makes no serious attempt to
dispute that as broadly described in the registration and
application, registrant’s goods and applicant’s services
are at least somewhat related. Rather, in an effort to
“put some distance” between registrant’s goods and its own
services, applicant improperly attempts to prove that
registrant’s actual goods and its own actual services are
dissimilar. For example, at pages 4 and 5 of its brief and
again at page 2 of its reply brief, applicant argues that
“the evidence in the record shows that the registration
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cited by the Examining Attorney is for a magazine
publication that is used to promote a hospital facility in
the San Gabriel Valley, California.” Likewise, despite the
fact that the services set forth in the application include
mail order catalog services featuring nutritional and
dietary supplements and weight loss products, applicant at
page 4 of its brief argues that it currently does not
actually publish a catalog, or for that matter, a magazine.
The problem with applicant’s argument is that in Board
proceedings “the question of likelihood of confusion must
be determined based on an analysis of the mark as applied
to the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
[the cited] registration, rather than what the evidence
shows the goods and/or services to be.” Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987).
We are of the firm belief that if a consumer were to
see a VIM & VIGOR health and fitness magazine and were
later to see a VIM & VIGOR mail order catalog featuring
nutritional and dietary supplements and weight loss
products, that he or she would be likely to assume that
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both the magazine and the mail order catalog emanated from
a common source.
Decision: The refusal to register is affirmed.