Friday, October 21, 2011

Summary Judgment: TTAB Dismisses "MUSCLE MILK" 2(d) Opposition to "NUTRI LECHE"

Agreeing with Applicant that the differences between the marks are "so great as to avoid likelihood of confusion," the Board entered summary judgment in favor of Applicant, finding the applied-for mark NUTRI LECHE for milk-based beverages containing added nutrients, not confusingly similar to MUSCLE MILK and MIGHTY MILK for nutritional supplements, fortified beverages, and related goods. Cytosport, Inc. v. Comercializadora de Lácteos y Derivados, S.A. de C.V., Opposition No. 91194995 (September 26, 2011)[not precedential].

Applicant provided an English translation of "leche" as "milk," and disclaimed LECHE. It maintained that the dominant portion of its mark is NUTRI, which has no meaning, although it may suggest that the product is "nutritious" or contains "nutrients." Opposer contended that it needed additional discovery under FRCP 56(f), but the Board noted that Applicant had conceded all the du Pont factors except for the dissimilarity in the marks, and further that Opposer had been able to address that issue substantively in its brief.

Turning to the substance, the Board likened this case to Kellogg v. Pack'em Enterprises, where the single factor of the dissimilarity of the marks [FROOT LOOPS v. FROOTEE ICE] outweighed the other relevant factors and was dispositive of the 2(d) claim.

The Board pointed out that, although LECHE means "milk" in English, Applicant seeks to register NUTRI LECHE, not NUTRI MILK. "Applicant's mark creates a markedly different visual appearance as compared to opposer's pleaded MILK marks." Moreover, they do not sound alike and do not share the same meaning.

[T]he first term in applicant’s mark, i.e., NUTRI, is not a recognized word but may suggest that applicant’s goods are nutritious or contain nutrients. In comparison, the first terms in opposer’s pleaded marks are MUSCLE and MIGHTY which do not convey anything about nutrients or nutrition.In view thereof, we find that when wording with completely different connotations is added before LECHE and MILK, i.e., NUTRI on the one hand and MUSCLE and MIGHTY on the other, the ensuing combination of the terms create marks with completely different connotations.

Finally, the commercial impressions of the marks are "utterly dissimilar" because of the differences in connotation, appearance, and sound.

And so the Board dismissed the opposition.

TTABlog note: Cytosport is an active TTAB litigant, having commenced about 17 proceedings since January 2010. Do you consider it to be a trademark bully? Or is it merely an appropriately aggressive trademark owner?

Text Copyright John L. Welch 2011.


At 10:13 AM, Anonymous Alex said...

I am not familiar with Cytosport and its litigation history but I would say it is being a bully here. BTW, does Cytosport have a relationship with MLB,or do they just have a license from the Cubs to use their name and logo on the bottle. I believe this blog and others have reported that MLB has a TM bully reputation. And Kellogg, the plaintiff in the case cited by the Board, also has a reputation for being a bully, I believe. So interesting links here. That comparison between Kellogg and Cytosport and the fact that the Board decided this case on summary judgment seem like strong indicators that the Board also must also have thought Cytosport is a bully. The Board rarely throws out a 2(d) case on summary judgment.

But I often wonder why it couldn't if there is a substantial difference between the mark(s) and the goods/services. After all, a 2(d) case at the TTAB starts off like a 2(d) examination analysis by the examiner - 1) compare the marks; 2) compare the goods. And a number of the TTAB judges started their career as trademark examiners and could have examined applications for 5-10 years or more.

At 2:25 PM, Anonymous Anonymous said...

Major Bully. There was no case here at all. Too bad Applicant can't get fees or sanctions in TTAB.


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