Friday, October 26, 2018

TTAB Grants Section 2(d) Petition for Cancellation Despite 20 Years of Concurrent Use Without Confusion

The Board granted a petition for cancellation of a registration for the mark CARDIO TONE, finding the mark likely to cause confusion with the registered mark CARDITONE, both for nutritional supplements. Although the record evidence showed more than 20 years of concurrent use of the marks without any reported incidents of confusion, the Board found that factor to be outweighed by the similarity of the marks, the partial identity of the goods, and the presumed identity of channels of trade and classes of consumers. Ayush Herbs, Inc. v. MDR Fitness Corp., Cancellation No. 92061544 (October 24, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

Priority: Since both parties own registrations, priority of use was in issue. See Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998).  Respondent's testimony indicated first use in 1997, but petitioner's testimony and evidence proved use by at least 1995.

Likelihood of confusion Because the involved goods are in part identical, the Board must presume that those identical goods travel in the same channels of trade to the same classes of consumers. The facts that petitioner's products are Ayervedic and respondent's are not, and that the products are not sold by the same retailers were irrelevant, since there were no such limitations in the identifications of goods.

Respondent submitted 70 third-party registration for marks containing the term CARDIO for supplements, but only one containing the term CARDI. The Board concluded that "Cardio" is merely descriptive of supplements. But the evidence regarding "Cardi" was "not nearly as persuasive as that in either Jack Wolfskin or Juice Generation. In any event, none of the 71 registered marks submitted by respondent was as close to petitioner's mark as is CARDIO TONE since none contained the word "Tone."

The Board found the marks at issue to be similar in sound and appearance, and that each connote "something to do with heart health." Although each mark may be suggestive, "they convey the same basic idea - heart fitness - and, thus, engender similar commercial impressions"

Turning to the issue of lack of actual confusion, the Board observed that "[t]he absence of any reported instances of actual confusion is meaningful only if the record indicates appreciable and continuous use by Respondent of its mark for a significant period of time in the same markets as those served by Petitioner under its mark. *** In other words ... there must have been a reasonable opportunity for confusion to have occurred.

Respondent pointed out that petitioner's product is Ayurvedic while respondent's is not, and therefore "there is no opportunity for consumers to choose between CARDITONE and CARDIO TONE products." Moreover, respondent always displays the CARDIO TONE mark in close conjunction with its house marks MDR and "Medical Design Research." And respondent does not sell its products in brick-and-mortar stores. Petitioner's testimony indicated that it was not aware of any store or health care practitioner, or any on-line retailer, who sold the products of both parties.

The Board found that this lack of actual confusion weighed against finding a likelihood of confusion. It explained in a footnote the seeming contradiction between the presumption that the channels of trade overlap and its consideration of the actual channels of trade in connection with the issue of lack of actual confusion:

Because the description of goods are in part identical, we must presume that the channels of trade are the same for that Du Pont factor. *** However, in determining whether there has been a reasonable opportunity for confusion to have occurred, we must consider the evidence regarding how the goods actually have been sold. Therefore, we assess the evidence regarding the channels of trade and classes of consumers; otherwise, we would be make a finding of fact regarding the lack of any reported instances of confusion based on a presumption rather than reality.

Conclusion: Concluding that the lack of actual confusion is "not so clear cut as to outweigh the other du Pont factors, the Board found that respondent's mark is likely to cause confusion vis-a-vis petitioner's mark, and so it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: Lesson: the sooner you register, the better.

Text Copyright John L. Welch 2018.


At 10:15 AM, Anonymous Anonymous said...

I would appeal the TTAB's decision. The TTAB is not in reality.

At 12:20 PM, Anonymous Bill Finkelstein said...

How about the lesson that the TTAB's legal framework continues to reside in an Ivory Tower divorced from reality? It refers to the real world when it suits its purposes, e.g., to describe the channels of trade, and then ignores them when it doesn't. It makes our job as legal counselors exceedingly difficult. If I had a nickel for every time I opine that you can probably use free from a court challenge/injunction but you won't be able to get a registration, at which point the client looks at you like you're crazy, I'd be rich.

At 8:13 AM, Anonymous Michael Hall said...

Bill, I think your comment is a bit unfair because the presumptions that apply (e.g., the goods move in all normal channels of trade for those goods, etc.) are grounded in CCPA/CAFC case law. And as for actual confusion, its absence can tend to show there's no likelihood of confusion, but only if that absence is meaningful, and how else can one determine that except by looking at the real-world channels of trade?


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