TTAB Test: Are Nutritional Supplements Related to Skin and Hair Care Products Under Section 2(d)?
The USPTO refused registration of the mark THE SCIENCE OF MEDICEUTICALS for, inter alia, nutritional supplements, finding it likely to cause confusion with the registered mark MEDICEUTICALS for, inter alia, skin and hair care products. On appeal, Applicant argued that, although these products may be offered under certain house brands, "the vast majority of sources of shampoo and skin care products are not sources of specialized supplements." How do you think this came out? In re The Mediceutical Association, Inc., Serial No. 86779237 (March 28, 2018) [not precedential] (Opinion by Judge Anthony R. Masiello).
The Marks:The Board first found that the marks at issue create substantially similar commercial impressions. Applicant describes its goods as "science-based," and furthermore the term MEDICEUTICALS on its face "contains suggestions of the words 'medicine' and 'pharmaceuticals,' both of which terms are related to 'science.'" Similarly, Applicant's mark invites customers to think about the scientific aspects of Applicant's goods.
The Goods: The goods at issue are somewhat related because some skin and hair products are promoted as providing vitamins or minerals, or functioning as a nutritional supplement. In addition, Examining Attorney Laura M. Wright provided Internet evidence showing nutritional supplements and skin and hair care products offered by a single producer under the same mark: e.g., CVS, RITE AID, DR. BAUMANN, HERBALIFE NUTRITION.
Applicant argued that the offering of supplements and beauty products under mass-market house brands like CVS and RITE AID does not show relatedness such that consumers would mistakenly believe that these types of goods emanate from the same source. The Board agreed that house brands present less compelling evidence, but the record here included other examples than the two mass-market house brands. Moreover, ""[e]ven if not all producers of beauty products are also producers of supplements, that does not undercut the Examining Attorney's position, for as the evidence demonstrates, an appreciable number of businesses offer both types of products under the same mark."
The Board was persuaded that relevant consumers are likely to believe that the involved goods may come from a single source.
Trade Channels: Normal trade channels for the products at issue include drug stores, both brick-and-mortar and online. Also, the evidence showed that some makers of the products offer them at their own websites, and so customers are accustomed to seeing both types of products at the same online stores.
Conclusion: The Board found confusion likely and it affirmed the refusal.
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TTABlog comment: Do you agree with the decision?
Text Copyright John L. Welch 2018.
posted by John L. Welch @ 3/30/2018
7 comments
7 Comments:
Agreed
My two second reaction to the relatedness question is that I personally don't think they're related, but the TTAB will, and so I advise clients accordingly.
I think this case was decided incorrectly. Costco sells Kirkland dog food and Kirkland frames for prescription glasses. By this courts reasoning dog food and frames for prescription glasses are “somewhat related.” The decision is so bad I may use this as an example of how unpredictable the court can be when speaking with clients.
This decision is an example of how badly USPTO precedent and guidelines on relatedness need to be revamped for the modern economy and modern consumers.
Examiners have a "get out of jail free" card on these objections b/c the rote, mechanical rules on relatedness reflect the commercial/consumer environment that existed many decades ago.
Modern consumers are savvy and have instant resources to search/cure even the slightest potential confusion.
In theory, INTA would be all over this, but the USPTO's obsolete precedent and guidelines benefit big brands more often than they harm big brands.
The real question here is, does Trostle and Mucky Duck need to be revisited. See our prior discussion at: https://thettablog.blogspot.com/2012/12/purchaser-sophistication-yieds-ttab.html
Admittedly I didn’t read this opinion but the CVS and Rite Aid evidence here is terrible and should not have been used. It’s possible that these goods are related but evidence from those sources doesn’t show that the parties’ goods are related. Those entities use the same mark with such diverse goods that evidence from them isn’t probative.
As someone who examined more than a few applications, I always was amused by the rediculous arguments about why given goods/services were unrelated in the context of a likelihood of confusion refusal, most of which were an utter waste of time, then to see the instances in which letters of protest were filed for unrelated marks with unrelated uses.
I have work experience Nutriceutical/supplements channel.
Cross-over ID's are a big problem for trademarks and branding efforts. Add that the potential for consumer complaints re efficacy and you have the FTC chiming in also.
Drug store brand wasn't a strong comparative choice as there are others out there that you just cannot miss.
It's time for the update to relatedness guidelines at the Office. Consumers are very savvy now days (the confusion element is higher now than ever).
On the other hand, a strong search and risk opinion would not have led this applicant down this route (and now at loss of $ dollars investment in a product name that will need to be pulled off of the shelf, unless a settlement and co-existence can be forged with the other party).
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