13th DuPont Factor Saves Four "GAIA" Marks For Supplements From Section 2(d) Refusal

"Here comes the thirteenth DuPont Factor." The Board reversed Section 2(d) refusals of the marks GAIA, GAIA KIDS, GAIA HERBS (Stylized), and GAIA HERBS (standard characters), all for supplements "in the form of gummies," finding no likelihood of confusion with the registered mark GAIA GREEN for supplements. Relying on the Strategic Partners decision, the Board found that applicant's prior registrations for substantially similar marks covering goods nearly identical to those of the applications at issue, which registrations co-existed for more than five years with the cited registration, turned the tables on the USPTO. In re Gaia Herbs, Inc., Serial Nos. 90052133, 90052135, 90052144, and 90052150 (September 26, 2022) [not precedential] (Opinion by Judge George C. Pologeorgis).

The DuPont  factors fell like dominoes in favor of the refusal. The involved goods are legally identical or closely related. They presumably travel in the same trade channels. And the marks are similar in sound, appearance, connotation, and overall commercial impression. 

Applicant made several feeble arguments regarding actual marketplace differences, but of course those were irrelevant. It also tried to argue priority, but of course that was irrelevant in this ex parte context. 

Turning to the thirteenth DuPont factor, applicant struck gold. The thirteenth factor allows for consideration of "any other established fact probative of the effect on use." It "accommodates the need for flexibility in assessing each unique set of facts."

During prosecution, the applicant and the examining attorney argued over the applicability of Strategic Partners. Applicant claimed ownership of five registrations of GAIA and GAIA-formative marks for various supplement products, all "over five years old" and thus "impervious to" a Section 2(d) attack. [Note: the Board rightly did not use the misnomer "incontestable" - ed.].

Strategic Partners involve the reversal of a Section 2(d) refusal in “the unique situation presented by the coexistence of applicant’s existing registration [for the mark ANYWEARS in standard form] with the cited registration [ANYWEAR BY JOSIE NATORI] for over five years, when applicant’s applied-for mark [ANYWEARS in stylized form] is substantially similar to its existing registered mark, both for identical goods [footwear]"

In applying Strategic Partners, the Board considers: "(1) whether the applicant’s prior registered mark is the same as applicant’s mark or is otherwise not meaningfully different; (2) whether the identification of goods or services in the application and the applicant’s prior registration are identical or identical in relevant part; and (3) the length of time the applicant’s prior registration has coexisted with the registration being considered as the basis for the Section 2(d) refusal."

A key factor was the age of the prior registration: more than five years, and so immune to cancellation under Section 2(d). Moreover, they co-existed with the cited registration for more than five years. The Board also found that the prior registrations covered substantially similar marks for and sufficiently similar goods.

[W]e conclude that under the particular circumstances of this case, where: (1) Applicant owns prior registrations for a substantially similar marks covering goods nearly identical to those in the involved applications; and (2) the examining attorney who examined the cited registration did not refuse registration of that mark based on a likelihood of confusion with the mark in Applicant's prior registration, we give the fact that no likelihood of confusion was found due weight in our analysis as support that confusion is unlikely.

The Board concluded that the thirteenth DuPont factor "heavily favors a finding that confusion is not likely." Indeed, it "tips the scale and outweighs" the other factors. And so, the Board reversed the refusals.

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TTABlogger comment: In inter partes cases, the prior registration defense (Morehouse) is a toothless tiger, but in the ex parte context, Strategic Partners seems to have some teeth.

Text Copyright John L. Welch 2022.