Thursday, July 28, 2011

COLON CLEANSE for Laxative Confusingly Similar to COLON CLEANSE MOVE IT for Dietary Supplements, Says TTAB

As unpleasant as it may be, we must periodically blog a case like this. When we're done, you'll feel a whole lot better. The Board sustained a Section 2(d) opposition to registration of the mark COLON CLEANSE MOVE IT for "dietary food supplements" [COLON CLEANSE disclaimed], finding it likely to cause confusion with the registered mark COLON CLEANSE for "bulk forming fiber laxative." Health Plus, Inc. v. Tran Enterprises, LLC, Opposition No. 91190785 (July 12, 2011) [not precedential].

Opposer Health Plus relied on four registrations, for COLON CLEANSE, SUPER COLON CLEANSE, SUPER COLON CLEANSE DAY, and SUPER COLON CLEANSE NIGHT, claiming a family of COLON CLEANSE marks. However, once again, the proofs fell short. Although Opposer "tends to market goods under its [marks] together," it produced only three advertisements in which the marks appear together.

Health Plus also contended that its mark is famous for 2(d) purposes, but again its proofs fell short. It used its COLON CLEANSE mark since 1988, sold more than $54 million in goods between 2002 and 2009, and advertises in major media. However, these figures are "very low, compared to annual advertising figures for other marks" found famous by the Board. [E.g., $4 billion annually by the MPAA for its RATED R mark]. The Board concluded that the mark COLON CLEANSE has "at least some degree of recognition and strength in the nutritional supplement market and ... is therefore entitled to a broader scope of protection."

Turning to the marks, the Board noted that Applicant's disclaimer of COLON CLEANSE has no impact on the du Pont analysis, observing that the public is unaware of what portions of a mark may have been disclaimed at the USPTO.

The Board found that "taken as a whole," the marks COLON CLEANSE MOVE IT and COLON CLEANSE are "far more similar than dissimilar in appearance and sound." Moreover, they both convey a sense of "digestive regularity." The words MOVE IT reinforce the wording COLON CLEANSE "as well as the result that the goods identified under the marks are intended to achieve."

As to the goods, the record showed that Opposer's products are dietary supplements, and that Applicant's goods promote "bowel movement." In short, Opposer's laxative is a type of dietary supplement. Thus Applicant's goods encompass those of the COLON CLEANSE registration.

Because the goods overlap, the Board must presume that they travel in the same channels (of trade) to the same classes of consumers.

Finally, Health Plus charged that Applicant Tran adopted its mark in bad faith, since it knew of the COLON CLEANSE mark. The Board pointed out, however, that mere knowledge is not the same as bad faith.

The Board concluded that confusion is likely, and it sustained the opposition. However, it dismissed Opposer's dilution claim, noting that because Health Plus failed to prove fame under Section 2(d), it perforce did not meet the higher standard for fame under Section 43(c).

Text Copyright John L. Welch 2011.


At 8:49 AM, Anonymous Anonymous said...

Hmmm...a colon cleanser called Colon Cleanse isn't too descriptive to be protectable?

At 9:19 AM, Blogger John L. Welch said...

Opposer's registrations were more than five years old, so not subject to challenge on descriptiveness ground.

At 9:41 AM, Anonymous Morris Turek said...


Although the registrations were more than 5 years old and not subject to challenge on the ground of descriptiveness, shouldn't the COLON CLEANSE mark only be entitled to the narrowest scope of protection? I mean, it's pretty clear that the mark has a descriptive meaning, regardless of whether the PTO failed in its duty to not permit registration of descriptive marks on the Principal Register.

At 11:07 AM, Blogger John L. Welch said...

But even weak marks are entitled to protection, especially when the other mark is so close.

At 2:46 PM, Anonymous Anonymous said...

TREERADAR is generic and COLON CLEANSE is not?

At 4:18 PM, Anonymous Dan Booth said...

For some reason, this decision got me in the mood to read Georgia-Pacific v. Kimberley-Clark ...

At 10:05 AM, Anonymous Anonymous said...

@Anonymous -- I don't believe that the question of the capability of the registered mark COLON CLEANSE was before the Board.


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