Precedential No. 40: TTAB Reverses 2(d) Refusal: Differing Trade Channels and Customers Trump Third-Party Registrations

The Board reversed a Section 2(d) refusal to register the mark MINDPOWER for botanical extracts for use in the manufacture of various products, including nutraceuticals, finding it not likely to cause confusion with the registered mark MIND POWER RX for "dietary and nutritional supplements." Third-party registration evidence demonstrated that many entities have adopted a single mark for the involved goods, but Applicant successfully argued that the trade channels and classes of customers for the goods do not overlap. In re HerbalScience Group, LLC, 96 USPQ2d 1321 (TTAB 2010) [precedential].


Procedural Issue: The Board first considered the propriety of Applicant's submission of new evidence with its appeal brief. Of course, that is a no-no under Rule 2.142(d), which stated that the record should be complete prior to the filing of an appeal. Applicant argued that it was entitled to submit evidence because the Examining Attorney had submitted evidence as part of her Office action denying a request for reconsideration.

Section 1204 of the TBMP states that the Examining Attorney may submit new evidence directed to the issue for which reconsideration is sought, and "the applicant may not submit additional evidence, even in response to evidence submitted by the examining attorney." [Tip from the TTABlog: Sometimes it's better to appeal immediately rather than seek reconsideration, lest one give the Examining Attorney a chance to shore up a poorly-supported refusal].

Applicant suggested that the Examining Attorney could address the new evidence in her responsive brief, or that the TTAB could remand the case to the Examining Attorney for further consideration. The Board said no, because that would be contrary to normal practice. A request for remand should be filed in a separate paper, and must be supported by a showing of good cause [TBMP Section 1207.02]. Applicant complied with neither requirement. And so the new evidence was not considered.

Substantive Issue: Applicant did not dispute that the involved goods may emanate from a single source under a single mark, but it contended that the differences in the trade channels and classes of customers made confusion unlikely.

What applicant does dispute is the effect of the du Pont factor of the channels of trade and classes of purchasers. Essentially applicant argues that there can be no confusion because the purchasers of dietary and nutritional supplements would never encounter applicant’s goods; that its goods are sold to manufacturers of medicinal, pharmaceutical, herbal and food products, while the registrant’s goods would be sold in such venues as drug stores and health food stores.

Because there are no limitations as to trade channels in the involved application and registration, the goods must be presumed to travel in the normal channels of trade for those goods. But there was nothing in the record to show "that a normal channel of trade for dietary and nutritional supplements is that they are sold to the companies that would purchase applicant's identified goods," i.e., manufacturers of nutraceuticals, pharmaceuticals, etc.

Moreover, Applicant's identification of goods "is sufficient to show that its goods would be sold to manufacturers of pharmaceuticals, nutraceuticals and the like. The buyers of such goods, who would be using these ingredients for the products that they make and sell, must be assumed to be knowledgeable and careful purchasers."

Although we agree with the examining attorney (and applicant) that the registrant’s products can be purchased by ordinary consumers on impulse, because such purchasers would have no knowledge of the applicant’s goods and mark, they would not choose the registrant’s product because they had confused the source of the product with applicant.

And so the Board reversed the refusal.

TTABlog comment: We also know that even sophisticated buyers are not necessarily sophisticated when it comes to trademarks, and that such buyers may be confused when nearly identical marks are involved. The Board chose not to pull that card out of its deck.

Text Copyright John L. Welch 2010.