TTAB Sustains 2(d) Opposition: ACTRX for Supplements Confusable with ACT for Anti-Cavity Mouthwash

The Board sustained a Section 2(d) opposition to registration of the mark ACTRX, in standard character and stylized form, for "dietary and nutritional supplements; nutritional supplement for eliminating toxins from the body; nutritional supplements," finding the mark likely to cause confusion with the registered mark ACT for anti-cavity mouth rinse. Opposer's dilution-by-blurring claim was dismissed: its proof of fame in the Section 2(d) context fell short, and so it perforce could not meet the higher standard for proof of fame under Section 43(c). Chattem, Inc. v. Kirk Seubert and James Spencer, Opposition No. 91200421 (November 29, 2013) [not precedential].

Evidentiary Issues: Opposer maintained that applicants' notice of reliance was untimely because it was filed one hour after the deadline. In their notice of reliance, applicants requested a on-hour extension of time for the filing, explaining that their attorney "lives in a rural town in Nevada and had technological issues that required a 150-mile round trip into Las Vegas for equipment and delayed the filing until after 9:00 pm Pacific Time, resulting in the filing of the document after midnight in Washington, DC."

The Board, in light of the de minimis delay, made the rare ruling that applicants had shown "excusable neglect," and it deemed the notice of reliance to be timely filed.

One of the documents attached to applicants' notice of reliance was excluded: an Internet webpage that did not include the URL and the date it was printed, and therefore was not self-authenticating under Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB 2010).

Likelihood of Confusion: Applicants neither took testimony nor filed a brief. Opposer asserted that its ACT mark is famous, relying principally on annual sales of about $75 million and annual advertising expenditures of about $10 million for the period 2007-2012. Its testimony indicated that ACT oral care products "are among the leading brands in the industry; in retail sales, it ranks at either three or four in the category, with LISTERINE being number one, CREST number two, and ACT and SCOPE battling it out for numbers three and four."

The Board pointed out, however, that raw numbers alone are not necessarily sufficient to prove fame, since numbers may be misleading. Opposer did not provide evidence of its actual market share, and its evidence regarding promotional efforts was "quite limited."

Because fame, when established, plays a dominant role in the Board's duPont analysis, the party claiming fame must "clearly prove it." Opposer failed to carry that burden, but the Board did find that the evidence, coupled with the the fact that ACT is an arbitrary term for mouthwashes and dental rinses, demonstrated that ACT is a strong mark.

As for the marks, the Board not surprisingly found them to be similar in appearance, pronunciation, connotation, and commercial impression. It gave greater weight to the element "ACT" because the letters "RX" in applicants' mark, rather than serving as a source indicator, suggest that its goods "are of a greater strength or efficacy, similar to that of a prescription product."

As for the goods, opposer submitted evidence that supplements may be used for oral health (e.g., Pro Flora Oral Health by BioGenesis is described as a "unique, chewable probiotic formula specifically formulated to support the oral and nasal cavities." The Board concluded that the involved goods are complementary, since both may be used for oral health. In addition, the evidence demonstrated that companies that make and sell prescription drugs may also make and sell mouth rinses.

The involved goods will be sold through the same channels of trade, although applicant's goods will require a prescription. Nevertheless, the goods are aimed at the general public, and a consumer might even buy both products on a single trip to a single retail outlet. Furthermore, applicants goods may not always be sold only by prescription, and there is no such limitation in its identification of goods. Indeed, applicants' non-prescription oral health care supplements could be sold next to opposer’s mouth rinse.

Although applicants' goods would presumably be purchased with care, even careful consumers are not likely to recognize that ACTRX for supplements identifies a different source from ACT for mouth rinse. They are likely to perceive "ACT" as the source-identifying portion of applicants' mark, and will assume that ACT brand mouthwash comes from the same source; this is particularly true in light of the fact that opposer sells other products under ACT-formative marks (e.g., ACT TOTAL CARE, ACT ANTICAVITY KIDS, ACT RESTORING).

Balancing the relevant duPont, the Board found confusion likely, and it sustained the opposition.

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TTABlog note:An opposer should always endeavor to prove its mark to be as strong as possible. In short, don't scrimp on the evidence.

Text Copyright John L. Welch 2013.