Thursday, April 20, 2017

TTAB Affirms Section 2(d) Refusal Despite Addition of House Mark "ISATORI" to "BIOGROW" for Supplements

The Board affirmed a Section 2(d) refusal of iSatori Bio-Gro for "dietary and nutritional supplements" in view of the registered marks BIOGROW, BIOGROWN, and BIOGROWTH, owned by the same entity, for "nutritional supplements.' The goods are in part identical, but applicant argued that the term "iSatori" distinguished the marks, just as in yesterday's case, the word CROSBY distinguished CROSBY QUIC-TAG from QUICK TAG. Nope, said the Board. In re iSatori, Inc., Serial No. 86397344 (April 18, 2017) [not precedential] (Opinion by Judge Adlin).

As to the identical goods, the Board must presume that they travel in the same, normal channels of trade to the same classes of consumers. Not only do these factors weigh heavily in favor of a finding of likely confusion, but they reduce the degree of similarity between the marks necessary to support a Section 2(d) refusal.

The Board found the marks to be highly similar in appearance, sound, connotation, and commercial impression. In fact, applicant's mark may be seen as another variation of registrant's marks.

The Board found that the added word "iSatori" may exacerbate confusion, based in part on the appearance of applicant's specimen of use (above), in which BIO-GRO is displayed in larger letters than iSatori.

The Board noted that in a number of analogous cases, the addition of a house mark to a registered mark has been found to be "in essence, an 'aggravation rather than a justification.'"Although BIOGROW is somewhat suggestive of nutritional supplements, "it is nowhere near as suggestive as the marks in which the addition of a house mark was found to be sufficiently distinguishing to avoid a likelihood of confusion." For example, in Knight Textile, the mark ESSENTIALS was found to be highly suggestive for clothing in light of 23 third-party registrations for marks that included the word ESSENTIALS. Here the evidence in not on a part with that evidence; dictionary  definitions of BIO and GROW and 12 third-party registrations for marks including the term BIO  for nutritional supplements [but not GROW].

In short, ESSENTIALS, and English word commonly used by numerous  parties for clothing, is significantly more suggestive than BIOGROW and forms thereof, which is not a word and which has not been revealed to be used by anyone other than Applicant and Registrant for nutritional supplements.

Finally, the Board accepted applicant's argument that the goods would be purchased with a heightened degree of care, but that factor was "easily outweighed" by the other du Pont factors that favored the Section 2(d) refusal.

Finding confusion likely, the Board affirmed.

Read comments and post your comment here.

TTABlog comment: Lots of case citations in this one. Note Board's pooh-poohing the import of federal court decisions in infringement cases (footnote 6).

Text Copyright John L. Welch 2017.


At 7:33 AM, Blogger Gene Bolmarcich, Esq. said...

Why is it that the Board is allowed to look to extrinsic evidence of use, but an applicant is unable to do so? I realize that the extrinsic evidence was in applicant's specimen, but if the facts were different (the house mark was huge and BIO-GROW was tiny), any argument by the applicant that pointed to the specimen would have been dismissed (both because it would be considered extrinsic evidence and also because the applied-for mark is in standard characters). Shouldn't the fact that the mark is in standard characters have allowed the Board to state that the mark COULD BE used as it was in the specimen, without having to even mention the specimen?

At 7:39 AM, Blogger Gene Bolmarcich, Esq. said...

Also, on page 7, the Board is gratuitously granting the owner of the cited registrations a family of marks! Huh?? A very odd decision.

At 10:56 AM, Anonymous Paul Reidl said...

A head-scratcher.


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