Thursday, March 13, 2014

Test Your TTAB Judge-Ability: Are PLATINUM SERIES and PLATINUM PAK Confusable for Supplements?

Examining Attorney Dominick J. Salemi refused registration of the mark PLATINUM SERIES for "dietary supplements" [SERIES disclaimed], finding the mark likely to cause confusion with eleven marks containing the word PLATINUM, registered by a single entity, for nutritional supplements. Ultimate Nutrition appealed, arguing that PLATINUM is a weak formative in light of numerous third-party webpages and dozens of registrations for PLATINUM-containing marks for similar goods and services, and further asserting that purchasers of orally-ingested products exercise care in their purchasing decisions. How do you think this came out? In re Ultimate Nutrition, Inc., Serial No. 85707822 (February 25, 2014) [not precedential].

The Examining Attorney referred to the eleven cited marks as a "family," but the Board pointed out that the "family of marks" doctrine is inapplicable in an ex parte context (since examining attorneys lack the resources to establish a family of marks). See In re Hitachi High-Technologies Corp., 109 USPQ2d 1769 (TTAB 2014). Therefore the Board chose to focus its analysis on what it saw to be the most relevant of the cited registrations, the one for PLATINUM PAK for nutritional supplements [PACK disclaimed].

As to the goods, the Board found them to be very similar because both provide vitamins, minerals, and other nutrients to food. Applicant did not argue that the goods are dissimilar.

There were no limitations on channels of trade or classes of customers in the involved application or cited registration, and so, given the relatedness of the goods, the Board presumed that they travel in the same, normal channels to the same consumers.

As to the third-party website uses of PLATINUM-containing marks, the Board found the evidence to be of limited value because it could not determine how many relevant customers have encountered these uses. The third-party registrations are not evidence of use of the marks shown therein, and furthermore they did not identify goods that were as closely related to those in the cited registration or challenged application. In short, the Board found insufficient support for the position that PLATINUM is a weak formative.

Turning to the marks, the Board noted that SERIES and PACK are disclaimed, and that both terms appear to be at best suggestive of the goods. The significance of the word PLATINUM is reinforced by its location as the first word in the marks. Moreover, although SERIES and PACK differ in appearance and sound, both suggest the way in which the goods are offered: in a series of pack of doses. The marks are thus more similar than dissimilar in appearance and convey a similar connotation: a series or pack of high quality supplements. The Board consequently found this du Pont factor to favor a finding of likely confusion.

Finally, the Board pooh-poohed applicant's sophistication argument, observing that even sophisticated consumers may not realize that applicant's goods do not emanate from the same source as registrant's goods. Even careful purchasers are not likely to distinguish these marks.

Balancing the relevant du Pont factors, and giving the prior registrant the benefit of any doubt, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.


At 2:28 PM, Anonymous Anonymous said...

The Board routinely ignores third-party registrations on the basis that there is no evidence that they are in use. So what is a good and inexpensive way to present evidence to the Board that third-party registered marks are in use in the marketplace?

At 3:44 PM, Anonymous Anonymous said...

The law is that dilution weakens marks. The PTO wishes this was not the case, which a messy one to examine, so it ducks the issue by not admitting evidence of dilution. The next time I want third party registrations to be considered, I plan to submit, instead of the certificates, the sworn declarations of the registrants that the marks were in use. Let the PTO explain why what it accepts as proof of use for registration is not proof of use for dilution.

At 5:48 PM, Anonymous Anonymous said...

What is interesting is that the Board will often accept registrations submitted by examiners in ex-parte but will not consider them submitted by a party in inter-parte.


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