TTABlog Test: Are “ELITE TEST 360” and “360 TEST” Confusable for Nutritional Supplements?

The USPTO refused registration of the mark ELITE TEST 360 for “dietary and nutritional supplements for endurance sports,” finding it likely to cause confusion with the registered mark 360 TEST for nutritional supplements. The goods are identical, but what about the marks? How do you think this appeal came out? In re Delux Advertising, LLC, Serial No. 86513486 (May 18, 2016) [not precedential].

Because the goods are legally identical, they are presumed to travel in the same channels of trade to the same classes of consumers. These factors weighed heavily against applicant and also reduced the degree of similarity necessary to support a likelihood of confusion refusal.

As to the marks, the Board has many times found confusion likely between “reverse combination” marks: e.g., BANKAMERICA and AMERIBANC, RUST BUSTER and BUST RUST, SPRINT STEEL RADIAL and RADIAL SPRINT. The Board agreed with the Examining Attorney that:

[i]n this case, it is clear that the marks create similar commercial impressions because, as Applicant argues, “TEST is commonly understood as shorthand for ‘testosterone’ in nutritional supplements,” and “360 is a common term when marketing nutritional supplements as a way to connote wholeness or completeness, as in the 360 degrees of a circle."

The Board found that ELITE is laudatory and its addition was “not enough of a dissimilarity to prevent confusion.”

Even if the terms TEST and 360 are conceptually weaker than the term ELITE in Applicant’s mark, that would not prevent confusion given Applicant’s mere reversal of the terms in Registrant’s mark. In fact, consumers familiar with Registrant’s mark could believe that Applicant’s mark is a modified version of Registrant’s mark, or that Applicant’s supplements for endurance sports are an extension of Registrant’s brand of supplements into the endurance sports market. For example, the commercial impression of Applicant’s mark on consumers familiar with Registrant’s mark could be that of a select or superior nutritional supplement for “elite” athletes.

Although 360 and TEST are conceptually and commercially weak, there was no evidence that any supplements are sold under marks that include both terms. However, applicant’s use “of both terms together, in reverse order, with a weak prefix, makes confusion likely, even if use of only one of the these terms from Registrant’s mark would not lead to confusion.”

Applicant's contention that consumers would exercise a “high degree of care” was unsupported by any evidence. Moreover, there are no restrictions in the cited registration or the opposed application, and so the Board must assume that the involved goods encompasse inexpensive products sold to all types of consumers.

And so the Board affirmed the refusal to register.

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TTABlog comment: How did you do? How about this reverse combination?: HEAD BUTT versus BUTT HEAD? Got any other suggestions?

Text Copyright John L. Welch 2016.