WYHA? TTAB Finds "5 DAY FASTING DIET" Merely Descriptive of Nutritionally Balanced Prepared Meals

The Board affirmed a Section 2(e)(1) refusal of 5 DAY FASTING DIET, finding the proposed mark to be merely descriptive of nutritionally balanced prepared meals for medical use sold only after consultation with a doctor. Applicant L-Nutra feebly argued, inter alia, that the word "fast" could not immediately describe its goods because the word has 37 different dictionary meanings. Not so fast, said the Board. In re L-Nutra, Inc., Serial No. 88757432 (December 3, 2021) [not precedential] (Opinion by Judge Christopher Larkin).

L-Nutra insisted that a consumer could not, just by looking at the mark, understand that the goods require a medical consultation. The Board pointed out, however, that "these arguments reflect an all-too-common and fundamental misunderstanding of the test for mere descriptiveness, but they are particularly troubling here because Applicant’s counsel is not writing them on a clean slate." The Board had rejected the same arguments in two other appeals filed by L-Nutra: for the proposed marks 1 DAY FASTING DIET and FASTING BAR. As the Board pointed out in both prior decisions, "the fact that the word 'fast' 'may have other meanings in different contexts is not controlling.'”

We must consider the meaning of the word FASTING, the gerund form of the verb “fast,” in the context of the goods identified in the application, and not, as Applicant has now argued three times, in the abstract.

The Board again found that the word FASTING in the proposed mark describes a feature or attribute of the goods identified in the application, “namely, that they are . . . to be consumed . . . while ‘eat[ing] sparingly or abstain[ing] from certain foods.’” In sum, the word FASTING is descriptive of the identified goods, as are the other words in the proposed mark. 

L-Nutra also maintained that Examining Attorney Jillian R. Cantor’s evidence regarding the use of the constituent words of the mark was insufficient to show descriptiveness because, "as Applicant claims ad nauseam," each of the articles in the record "does not use the Mark in a descriptive fashion in connection with the Applicant’s goods." The Board rejected the same argument in the FASTING BAR case.

As the Board bluntly put it, “[t]hat is not the law.” Id. “‘There is no requirement that the Examining Attorney prove that others have used the mark at issue or that they need to use it, although such proof would be highly relevant to an analysis under Section 2(e)(1).’” *** The “‘fact that Applicant may be the first or only user of a term does not render that term distinctive, if it otherwise meets the standard’ for descriptiveness.” 

Finally, L-Nutra pointed to a number of FAST-formative marks for various goods in class 5, but the Board pointed out for the umpteenth time that each case must be decided on its own evidentiary record, noting that "[m]arks that are merely descriptive or generic do not become registrable simply because other seemingly similar marks appear on the register."

The Board had no doubt that the proposed mark is descriptive of the goods, and so it affirmed the refusal to register.

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TTABlogger comment: Well, would you have appealed?

Text Copyright John L. Welch 2021.

Precedential No. 32: Color "Cream" for Guitar Pickups Lacks Acquired Distinctiveness, Says TTAB

A single color mark on a product design is registrable only upon a showing of acquired distinctiveness. Wal-Mart (citing Qualitex). Applicant Dimarzio, Inc. failed to prove that its claimed color "cream" for electronic guitar pickups met that test, and so the Board affirmed a refusal to register under Sections 1, 2, and 45 of the Lanham Act. Among other problems with Dimarzio's evidence, the Board found that its use of the proposed mark was not substantially exclusive, as required under Section 2(f). In re Dimarzio, Inc., Serial No. 87213400 (December 3, 2021) [precedential] (Opinion by Judge Mark Lebow).

Pagination problem: Dimarzio led off with a sour note when the Board refused to consider its appeal brief because the brief exceeded the 25-page limit of Rule 2.142(b)(2). Examining Attorney Tasneem Hussein blew the whistle, pointing out that the brief was 16-pages long but not single-spaced, as required by Rule 2.126(a)(1). The Board sustained her objection, agreeing that the brief would have exceeded 25 pages if double-spaced (at 250 words per page). The Board, however, did consider Dimarzio's reply brief.

Applicable law: The question at hand was simply whether relevant member of the public - consumers of guitar pickups - understand the primary significance of the proposed mark "as identifying the source of the goods rather than merely ornamenting them." See Milwaukee Elec. Tool Corp., 2019 USPQ2d 460354 at *23. In making that determination, the Board applied the CAFC's Converse factors, noting that no single factor all six factors are to be weighed and no one factor is determinative. See Guaranteed Rate, Inc. 2020 USPQ2d at 10869.

•  (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys);
•  (2) length, degree, and exclusivity of use; 
•  (3) amount and manner of advertising; 
•  (4) amount of sales and number of customers; 
•  (5) intentional copying; and 
•  (6) unsolicited media coverage of the product embodying the mark

Converse Inc. v. Int'l Trade Comm'n, 128 USPQ2d at 1546.

Finally, the burden of proof to establish a prima facie case of acquired distinctiveness rests on the applicant. See Yamaha Int'l Corp. v Hoshino Gakki Co. Ltd., 6 USPQ2d at 1004.

Analysis: Although, as noted in Converse, consumer association is usually measured by surveys, Dimarzio did not offer one. Instead it submitted "fill-in-the-blank" declarations from eight different distributors and customers. The Board found them of little, if any, probative value. Aside from their small number, conclusory nature, and lack of identifying information, none of the declarations related to the proposed mark, the color cream. Similarly, Dimarzio's evidence of enforcement activity related to a product configuration mark with color, not color alone.

Dimarzio claimed use of the proposed mark since 1979, with millions of consumers observing its guitar pickups in videos, advertisements, and musical performances. The Board pointed out, however, that long-time use of a supposed mark does not establish that the use is substantially exclusive or that consumers perceive the supposed mark as a source indicator. In fact, the evidence showed that DiMarzio's use of the color cream on guitar pickups was not substantially exclusive (see example of competitor product below).

Dimarzio contended that these competitor products were the wrong shade of cream, but it the color cream was not narrowly defined in its application to register.

As Applicant points out, it did not use a commercial color identification system, such as Pantone, to identify its claimed color. Thus, even if the shades of the third-party cream-colored pickups vary somewhat from Applicant’s self-styled “distinctive” shade, those uses, at minimum, are of a substantially similar shade of cream, i.e., shades close enough in appearance to impair Applicant’s “ability to show that its proposed color mark has acquired distinctiveness in that market.” Milwaukee Elec. Tool, 2019 USPQ2d 460354, at *25.

Moreover, the shades of cream in some of the competitor products are "quite similar" to the shades of cream that Dimarzio considered to be infringing in its enforcement efforts, and the shades of cream actually used by DiMarzia appear to differ from that shown in the application drawing.

Dimarzio also feebly claimed that the third-party uses involved the wrong kind of guitar pickup, but the Board quickly pointed that the goods in the application are identified as "electronic sound pickups for guitar" and are not limited to any particular kind of pickup.

With respect to DiMarzio's marketing efforts, the Board noted the lack of "look-for" advertising but acknowledged that such advertising is not required for a showing of acquired distinctiveness. However, Dimarzio's advertising characterized the color cream as one of may colors available, and so there was nothing to lead consumers to perceive the color cream as a mark. The Board concluded that DiMarzio's advertising fell short of supporting its Section 2(f) claim. DiMarzio did not provide details regarding its purported sales or its market share, nor did it submit evidence of unsolicited media coverage.

Conclusion: The Board found that Dimarzio had failed to establish a prima facie case of acquired distinctivness, and so it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is there any aesthetic functionality problem here? Shouldn't guitar makers be able to match the color of the pick up with the color of the guitar?

Text Copyright John L. Welch 2021.

TTABlog Test: How Did These Three Section 2(d) Oppositions Come Out?

A TTAB judge once told me that you can predict the outcome of a Section 2(d) case 95% of the time by just looking at the goods/services and the marks. I kid you not! Let's see how you do with the three cases summarized below. Answer(s) in the first comment.

MG Financial, LLC v. Kiran Sureshbhai Shah, Oppositions Nos. 91250240 and 91250316 (November 15, 2021) [not precedential] (Opinion by Judge Christen M. English). [Section 2(d) oppositions to registration of OLD HARBOR (stylized) for "tea" in view of the standard form mark OLD HARBOR registered for "coffee."]

Kona USA, Inc. v. Global Esprit Inc., Opposition No. 91244876 (November 22, 2021) [not precedential] (Opinion by Judge Christopher Larkin).[Section 2(d) opposition to KONA81 (Stylized) for various clothing items, including sport shirts, sports jerseys, and sports pants, in view of the registered mark KONA for bicycles and the common law mark KONA for jerseys for cycling, pants for cycling, and shirts for cycling.]

Rolex Watch U.S.A., Inc. v. PWT A/S, Opposition No. 91231624 (November 29, 2021) [not precedential] (Opinion by Judge Marc A. Bergsman). [Section 2(d) opposition to registration of the design mark shown below left, for various goods in classes 3 (perfume and cosmetics), 9 (sunglasses), 18 (wallets and bags), 25 (clothing), and 35 (wholesale and retail store services), in view of the design mark shown below right, for "time pieces of all kinds and parts thereof" and "retail store services featuring watches, timepieces, clocks and jewelry" (class 35).] Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2021.

Precedential No. 31: TTAB Affirms Section 2(a) Refusal of "NATO" for Tents, for Falsely Suggesting a Connection With ... Guess What?

The Board affirmed a Section 2(a) refusal to register the proposed mark NATO for "Canopies comprised primarily of tensile fabric membranes; canopies of textile or synthetic materials; Tents; Tents made of textile materials; canvas canopies,” finding that the mark falsely suggests a connection with the North Atlantic Treaty Organization ("NATO"). Because "military personnel are housed in tents, and third-party specialty retailers advertising the goods for sale tout the quality of these products used by NATO forces," the Board concluded that the applicant’s tents "are the type of items consumers would associate with the military," and thus with the Treaty Organization. In re International Watchman, Inc., 2021 USPQ2d 1171 (TTAB 2021) [precedential] (Opinion by Judge Angela Lykos)

Section 2(a), in pertinent part, bars registration of a mark that "consists of or comprises . . . matter which may . . . falsely suggest a connection with . . . institutions . . . ." The Board first determined that the North Atlantic Treaty Organization qualifies as an "institution" for purposes of this provision.

As an intergovernmental organization and military alliance, the North Atlantic Treaty Organization is an “institution” as contemplated under Section 2(a). See In re N. Am. Free Trade Ass’n, 43 USPQ2d at 1285-86 (finding that the “NAFTA is an institution, in the same way that the United Nations is an institution…”). And while Applicant may be right that the North Atlantic Treaty Organization is not a “juristic person” capable of being sued, this does not diminish its status as an “institution” within the meaning of the statute.

Next, the Board applied the four-part test articulated in University of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co.: to establish that a proposed mark falsely suggests a connection with a person or institution, it must be shown that:

•  (1) The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; 
• (2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; 
• (3) The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and 
• (4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

 

As to the first element, in view of the "pervasive use of NATO in a variety of sources [including use by the Organization itself] as shorthand for the North Atlantic Treaty Organization," the Board had no trouble finding that NATO is "the same as or a close approximation of the name or identity previously used" by the Treaty Organization.

As to the second element, evidence showed that NATO points uniquely and unmistakably to the Organization. NATO has been widely used as an acronym for the Organization since its inception following World War II. None of the dictionary reference of record include alternative meanings, and media reference showed extensive use of the term NATO without any mention of "North Atlantic Treaty Organization."

As to the third element, the applicant admitted that the Organization has no connection with the identified goods.

Finally, as to the fourth element, the Board observed that it is not necessary that the institution at issue actually provides the goods in question, or that the reputation of the institution is closely related to the applicant's goods.

As long as an applicant’s goods are of a type that consumers would associate in some fashion with the named person or institution, and the named party is sufficiently famous, then it may be inferred that purchasers of the goods or services would be misled into making a false connection of sponsorship, approval, support or the like with the named party. See, e.g., In re Nieves & Nieves, 113 USPQ2d at 1647-48; In re Cotter & Co., 228 USPQ at 204-05.

Here, since military personnel are housed in tents, and third-party retailers tout the quality of these products used by NATO forces, the applicant's tents are the type of goods that consumer would associate with the military. And since NATO is a military alliance with active duty soldiers, consumers would associate these goods with NATO.

Finally, the Board observed that a false suggestion of a connection under Section 2(a) may be found as to an entire class on the basis of any one item listed within the identification of goods in that class. See Piano Factory Grp., 2021 USPQ2d 913 at *14-15.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: On the same day that the Board handed down this decision, it also issued non-precedential decisions in five other appeals filed by this applicant. The Board affirmed Section 2(a) refusals of NATO for "Metal caps for bottles; Metal bottle caps; Bottle caps of metal;2 Metal dog tags," and for "Flashlights; LED flashlights; LED flashlights; LED flashlights; Tactical flashlights," but reversed refusals for "Decals; Pens," for "Nutritional supplement energy bars; Nutritional supplement meal replacement bars for boosting energy," and for "“Lip balm; Sunscreen preparations." In each of the reversals, the Board stated "Perhaps on a more developed record, we would have found otherwise."

Text Copyright John L. Welch 2021.

CAFC Reverses TTAB's "MONEY MART" Decision Due to Error in Assessing Priority

In a non-precedential ruling, the CAFC reversed the Board's decision [here] denying cancellation of registrations for the mark MONEY MART in standard character form for loan financing, check cashing services, not including pawn shop services, and for the mark in design form (below) for pawn shop and pawn brokerage services, concluding that the Board had erred in denying petitioner's claim of priority. The Board had found that Respondent Dollar Financial had priority because of earlier use of the MONEY MART mark for "loan financing services," which encompass pawn shop services. Wrong, said the court. Brittex Financial, Inc. v. Dollar Financial Group, Inc. Appeals Nos. 2021-1370 and 2021-1449 (Fed. Cir. November 23, 2021) [not precedential].

Petitioner Brittex claimed use of the mark MONEY MART for pawn brokerage services since 1993. Dollar began using MONEY MART for "certain services in 1984 that fit under the the labels 'loan financing, check cashing, and electronic fund transfer services,'" and it owned a 2007 registration for the mark for "loan financing" services.

The Board found that Brittex was the first to offer pawn brokerage and pawn shop services under its mark MONEY MART PAWN (1993). However it found that those services were "covered or encompassed by loan financing," and so Dollar had priority (1984). Because Dollar's registration was more than five years old, Dollar had the exclusive right to use the mark in connection with those services. Having decided the priority issue in Dollar's favor, the Board denied the petition for cancellation.

The CAFC, however, ruled that "the Board's conclusion regarding priority cannot stand." "Brittex, not Dollar, was the first to use that mark in connection with pawn brokerage and pawn shop services."

The Board set forth no sound basis for drawing a different conclusion. The evidence readily showed, of course, that one part of pawn brokerage and pawn shop services is one kind of “loan financing.” But the Board did not cite any authority, or offer legal support, for using that fact to strip Brittex of its facial priority. *** Even as a general matter, the Board provided no support for the notion that a registrant has priority as to a specific service it was second to offer just because it was first to offer a different specific service that is a species of a genus that covers both specific services.

Moreover, pawn brokerage and pawn shop services "integrate two different components, only one of which can be labeled 'loan financing'—the lending, but not the retail sale of collateral." So if the Board found that this "mixed-character business" is covered by "loan financing services," that was "unreasonable and unsupported by the evidence."

However, the Board did not err in denying Dollar's Morehouse defense - i.e., that because of Dollar's earlier registration for loan financing services, Brittex could not be damaged by registration of Dollar's mark for pawn-related services. A Morehouse defense requires that the prior registration be for the same mark and the same services as the mark in the challenged registration. Here, as the court concluded, the services are not the same.

And so the CAFC reversed and remanded the case to the TTAB for further proceedings.

Read comments and post your comment here.

TTABlogger comment: The Morehouse defense very rarely works, but here is a case where it did.

Text Copyright John L. Welch 2021.

TTAB Posts December 2021 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled eight (VIII) oral hearings for the month of December 2021. The hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.

December 1, 2021 - 11 AM: In re Solar Foundations USA, Inc., Serial No. 88206624 [Refusal to register SOLAR FOUNDATIONS USA for "installation of solar energy systems and alternative energy products for residential and commercial use, namely, foundations and racking systems for ground mount solar arrays" and "design of solar energy systems and alternative energy products for residential and commercial use, namely, support structure and racking systems for ground mount solar arrays" [USA disclaimed] on the ground of genericness.]

December 2, 2021 - 10 AM: In re Jasmin Larian, LLC, Serial No. 87522459 [Refusal to register the three-dimensional design shown below, for "handbags" under Sections 1, 2, and 45 of the Lanham Act on the ground that the design is a generic configuration.]

December 7, 2021 - 11 AM: Made in Nature, LLC v. Pharmavite LLC, Oppositions Nos.  91223683, 91223352, and 91227387 [Section 2(d) opposition to registration of NATURE MADE for, inter alia, snack bars containing dried fruits and fruit juice, on the ground of likely confusion with the registered mark MADE IN NATURE for dried fruits and vegetables, snack products, and fresh fruit.]

December 8, 2021 - 1 PM: Eazy-PZ LLC v. Ez Etail, Inc., Cancellation No. 92064031 [Petition for cancellation of a registration of the mark EZPZ for "on-line retail store services featuring a wide variety of consumer goods of others" on the ground of likelihood of confusion with the registered mark EZ PZ for "On-line retail gift shops; On-line retail store services featuring downloadable electronic books; On-line wholesale and retail store services featuring products for infants babies, and small children."]

December 9, 2021 - 10 AM: In re Six Continents Limited, Serial Nos. 88430142 and 88430162 [Refusal to register ATWELL SUITES, in standard character and stylized form, for various hotel-related services [SUITES disclaimed] on the ground that the proposed mark is primarily merely a surname under Section 2(e)(4).]

December 14, 2021 - 11 AM: In re Lincoln Global, Inc., Serial No. 87896781 [Section 2(d) refusal of PYTHONXOS for "software for controlling the operation of a robotic or automated welding or plasma cutting machine system" on the ground of likelihood of confusion with the registered mark PYTHON for “electric arc welding torches and parts therefor."]

December 15, 2021 - 1 PM: Flex Ltd. v. Bad Elf, LLC, Opposition No. 91254336 [Section 2(d) opposition to registration of FLEX for "Global positioning system (GPS) apparatus; Global positioning system (GPS) receivers" in view of the identical mark registered for custom manufacture of electronics, engineering services and new product development services.]

December 16, 2021 - 2 PM: Belay Mortgage Group, Inc. v. DFB Corporation, Opposition No. 91251959 [Opposition to registration of BELAY FINANCIAL for "banking services; Financial trust operations; Mortgage banking; Mortgage lending" [FINANCIAL disclaimed] on the ground of likely confusion with the common law mark BELAY MORTGAGE GROUP for mortgage brokerage services.]

Read comments and post your comment here.

TTABlog comment: Any predictions? Any WYHAs?

Text Copyright John L. Welch 2021.

Ted Davis: 2021 Annual Review of U.S. Federal Case Law and TTAB Developments

In connection with his latest presentation at the recent INTA Annual Meeting, Ted Davis offered his "Annual Review of U.S. Federal Case Law and TTAB Developments." Thank you, Ted, for permitting me to post this link.

Ted Davis

As a companion piece to my presentation, here is a link to my outline of CAFC and TTAB decisions for the past 14 months.

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

Holiday Reading: The Trademark Modernization Act of 2020 and Newly-Issued Implementing Regulations

The USPTO has issued its final regulations under the Trademark Modernization Act of 2020. [pdf of Act here]. The new rules [pdf here] go into effect on December 18, 2021, except for the implementation of the shorter response period for office actions, which will go into effect on December 1, 2022. Petitions requesting institution of proceedings for reexamination or expungement will be accepted on or after December 27, 2021.

The Office states that, under the new provisions, individuals, businesses, and the USPTO itself will now have new tools to clear away unused registered trademarks from the federal trademark register, and the Office will have the ability to move applications through the registration process more efficiently. A summary of the new provisions may be found here at the USPTO website.

Read comments and post your comment here.

TTABlogger comment: Note that the new "nonuse" ground for cancellation will not affect the current ground of abandonment.

Text Copyright John L. Welch 2021.

TTABlog Test: Is "SAMSUNG WIZ" for Smartphones Confusable with "THE WIZ" for Consumer Electronics Retail Services?

P.C. Richard & Son opposed an application to register SAMSUNG WIZ for "smartphones; tablet computer[s]," alleging a likelihood of confusion with its registered marks THE WIZ and NOBODY BEATS THE WIZ for retail store services featuring consumer electronics. The Board wasted little time in finding the goods and services to be related, but what about the marks? Are they close enough? And how strong is THE WIZ anyway? How do you think this came out? P.C. Richard & Son Long Island Corp. v. Samsung Electronics Co., Ltd., Opposition No. 91222405 (November 9, 2021) [not precedential] (Opinion by Judge Karen Kuhlke)

Goods/Services: The Board has often recognized that confusion is likely from the use of the same or similar marks for goods and for services involving those goods. See, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307 128 USPQ2d 1047, 1052 (Fed. Cir. 2018). Opposer sells both smartphone accessories and tablet computers in its stores. Thus, the channels of trade and classes of consumers overlap.

Since the goods and services in the application and pleaded registration are unrestricted, the Board must assume that the goods and services are offered to ordinary purchasers who exercise no more than ordinary care in their purchasing decisions.

Strength of Opposer's Mark: Opposer claimed that its marks are famous, but its evidence fell short. It did not provide sales figures under each mark, and there was no evidence regarding commercial impressions, social media following, or third-party mentions.

Applicant Samsung argued that the term WIZ is conceptually weak, pointing to a dictionary definition (a wizard or a skilled person) and to third-party registrations and uses for marks that incorporate the word WIZ, for a variety of electronics goods and services. The Board found that the third-party registrations, although not diminishing the commercial strength of Opposer's THE WIZ mark, "do underscore the somewhat suggestive and laudatory nature of the word WIZ in connection with electronic goods as something that is very good, something possessing skill." The Board concluded that WIZ is "somewhat suggestive" for a variety of electronic goods.

Seventeen examples of third-party use of "WIZ" in connection with electronic goods and services tended to show the commercial weakness of "WIZ."

Overall, we find both some conceptual and commercial weakness for the word WIZ in the mark(s) THE WIZ (and NOBODY BEATS THE WIZ) in connection with retail store services in the field of consumer electronics and accessories. We accord the word WIZ in Opposer’s THE WIZ mark a somewhat restricted scope of protection

The Marks: The Board found that SAMSUNG is clearly the dominant portion of applicant’s mark, in view of its position at the beginning of the mark and the great commercial strength of the SAMSUNG mark, as revealed by the record evidence. Furthermore, WIZ is somewhat suggestive and weak in connection with the involved goods and services.

The Board concluded that applicant's mark engenders a different overall commercial impression than opposer's mark, sufficient to avoid likely confusion. "In connection with Applicant’s goods, WIZ is modified by SAMSUNG, it is an electronic SAMSUNG product that is a wiz, by comparison, THE WIZ for retail stores featuring electronic products connotes a person or store that is a wiz."

We are cognizant of Opposer’s argument that if Opposer were to sell the Samsung tablet computer on Opposer’s own retail website using its SAMSUNG WIZ trademark, Opposer’s customers would be confused. Considering the amount of WIZ marks used and registered in connection with electronic goods and services, we find that tends towards a mere theoretical possibility, given the dominant element in Applicant’s mark.

Conclusion: Balancing the relevant DuPont factors,the Board found "the differences between the marks sufficient to avoid likely confusion despite the relatedness of the goods and services, and trade channels, in particular given the differences in overall commercial impression." And so, it dismissed the opposition.

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TTABlogger comment: Well, somebody beat the Wiz!

Text Copyright John L. Welch 2021.

TTABlog Test: Are Dietary Supplements Related to Skincare Products Under Section 2(d)?

The USPTO refused registration of the proposed mark MANSBRAND for "dietary supplements; erectile dysfunction supplements; male enhancement supplements; herbal supplements; health supplements; health booster supplements; muscle building supplements; and nutraceuticals for use as a dietary supplement," finding confusion likely with the registered mark MANBRAND SKINCARE for "[n]on-medicated skincare products for men, namely, face wash, face lotion, eye cream, body wash, shampoo” [SKINCARE disclaimed]. The marks are too close for comfort, but what about the goods? How do you think this appeal came out? In re Local Holdings, Serial No. 88515551 (November 17, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

As to the marks, the Board rejected applicant's argument that "[t]he plural form of MAN (Mans or man’s) is important, creating the commercial impression of products that can be useful for manly men,” because "nothing about the plural or possessive form produces that impression." Instead, it found the two terms to be nearly identical [not surprisingly] and concluded that the marks convey a similar appearance, sound, connotation, and commercial impression.

As to the goods, Examining Attorney Alexandra El-Bayeh submitted various evidence demonstrating the relatedness of these goods, including third-party registrations identifying both supplements and skin care products, and third-party websites offering same. "The evidence shows that these products are promoted together as part of a wellness regime that includes skincare and dietary, health, or muscle-building supplements."

Applicant's attempts to read limitations into the channels of trade (registrant sells only on-line via monthly subscription) and the sophistication of relevant consumers (discerning customers seeking a solution to a male-oriented issue) did not stand up, the Board pointing out for the umpteenth time that the application and cited registration contain no such limitations. "The retail website evidence in the record reflects that these types of products can be inexpensive and are sold through general consumer retail websites. Thus, we find that they do not necessarily involve elevated care in purchasing."

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2021.