Friday, February 17, 2006

TTAB Sustains "TUMS" Section 2(d) Opposition to "MR. TUMEE"

Here's a recipe for success in a Section 2(d) opposition: start with a very strong or famous mark, mix in identical goods, add one or two similarities extracted from the involved marks, and there you have it. [Sound familiar? See the Starbucks case blogged yesterday.] That concoction caused some heartburn for Applicant Moba, Inc. in its attempt to register the mark MR. TUMEE for vitamins and nutritional supplements. The Board found the mark likely to cause confusion with the mark TUMS, registered for antacids and calcium supplements. SmithKline Beecham Corp. v. Moba, Inc., Opposition No. 91155236 (February 8, 2006) [not citable].

The Board noted that Applicant Moba's nutritional supplements include calcium supplements, and thus to that extent the parties' goods are identical. Moreover, both parties sell other vitamin products, and therefore "applicant's vitamin and other nutritional products would also be related to opposer's calcium supplements." Given the lack of any limitation in Moba's and Tums' identification of goods, the Board assumed that they travel in identical channels of trade to an overlapping group of potential purchasers. [In fact, although Moba's products are actually marketed primarily for children while Tums' products are marketed primarily for adults, children and adults "can use" both products.]

Turning to the marks, the Board incisively observed that they contain the same three letters (TUM), but are otherwise different "because applicant adds the title 'Mr.' and the diminutive '-ee.'" However,

"They look somewhat similar since they feature 'TUM' as a prominent part of both marks. Their meanings would have a similar suggestive meaning referring to the stomach. Their commercial impressions would have some similarity especially since purchasers would likely believe that opposer's TUMS and TUMS FOR THE TUMMY calcium supplements and antacids are now available for children. *** Taken together, we conclude that opposer's marks TUMS and TUMS FOR THE TUMMY and applicant's mark MR. TUMEE are slightly more similar than they are different."

The Board resolved "the fame factor" in favor of Opposer, based on unrebutted testimony that awareness studies show 80% unaided awareness of the TUMS mark, on testimony that TUMS is "in more households" than any other over-the-counter product other than Tylenol, and on proof of sales of more than $200 million and advertising expenditures in the $40-50 million range in 2002.

The Board "readily" admitted that the likelihood of confusion is "a close question." Although there are differences in the marks, they have "enough similarities to conclude that the marks are not dissimilar." Moreover,

"The goods are in part identical, opposer is considering expanding the breath [sic] of its TUMS product line, opposer's mark has achieved significant public recognition and renown, purchasers may be impulse purchasers, and the goods are sold at least in overlapping channels of trade and to the identical purchasers."

Resolving all doubts in favor of the prior registrant, as it must, the Board sustained the opposition.

Text Copyright John L. Welch 2006.


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