Wednesday, July 24, 2019

TTABlog Test: Is VITAL FLORA for Pet Supplements Confusable With FLORAVITAL for Supplements?

The USPTO refused registration of the mark VITAL FLORA for "dietary supplements for pets for supporting intestinal flora for digestive health," finding the mark likely to cause confusion with the registered mark FLORAVITAL for "dietetic food supplements." Applicant argued that its goods are for humans, not pets, and furthermore, "flora" and "vital" are weak formatives that combine into a weak mark. How do you think this came out? In re Vital Planet, LLC, Serial No. 87455242 (July 22, 2019) [not precedential] (Opinion by Judge Robert H. Coggins).

The Goods: The Board found that the registrant's broadly worded "dietetic food supplements" encompassed applicant's supplements for pets. The examining attorney had presumed that registrant's goods were for human use, but there is no such limitation in the registration and the Board is not required to limit its registrability determination to the reasons set forth by the examining attorney during prosecution. The fact that registrant's specimens of use showed that its goods were for human use was irrelevant. The Board may not read into the registration limitations based on actual use.

Since the goods overlap, the Board must presume that the overlapping goods travel in the same trade channels to the same classes of consumers. These factors weigh heavily in favor of affirmance.

Strength of the Cited Mark: Based on dictionary definitions, the Board found the words "flora" and "vital" to suggestive of dietetic food supplements. However, there was no evidence to show that the combination is weak. Applicant submitted evidence of use and registration of various marks that include the words VITAL or FLORA for supplements, but no such evidence regarding the combined term VITALFLORA. In sum, applicant failed to show that VITALFLORA is a weak mark that is not entitled to a normal scope of protection.

Even assuming VITALFLORA is weak, the Board observed, "likelihood of confusion is to be avoided, as much between 'weak' marks as between 'strong' marks."

The Marks: The Board found that the marks sound and look similar to the extent that they contain the identical words. Applicant asserted that FLORA in its mark connotes bacteria or intestinal flora, whereas in the cited mark FLORA connotes a plant or a flower. The Board, however, rejected "the implication that the commercial impression conveyed by Registrant's mark differs, or is limited, due to Registrant's specimen of record." (see illustration below). The Board must consider the registered mark as registered, not as used.

Examining Attorney Collier L. Johnson II maintained that the transposition of the two constituent words does not change their commercial impression. The Board agreed.

We find the marks FLORAVITAL and VITAL FLORA to have a similar commercial impression, especially when used on in-part legally identical goods. As discussed above, FLORA means “the bacteria and other microorganisms that normally inhabit a bodily organ or part: intestinal flora,” while VITAL means “necessary to the continuation of life; life-sustaining: a vital organ; vital nutrients.”7 Although Applicant’s mark places the adjective VITAL before the noun FLORA, but Registrant’s mark places the noun before the adjective, there is nothing to suggest that the transposition of the terms gives a new or different meaning to either of the constituent terms or to the marks as a whole.

Finding that the marks convey the same or similar commercial impression, and coupling that with the similarity in appearance and sound, the Board concluded the the first du Pont factor weighs in favor of a finding of likely confusion.

Conditions of Purchase: Applicant maintained that pet owners exercise a high degree of care in making decisions regarding their pets' health. The Board pointed out, however, that even careful purchasers who are knowledgeable as to the goods are not necessarily knowledgeable in the field of trademarks, and they are not immune to source confusion when confusingly similar marks are used on the goods. The Board found that this factor weighed only slightly in applicant's favor.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I think there should be a presumption that "supplements" means supplements for humans, unless otherwise stated.

Text Copyright John L. Welch 2019.


At 6:34 AM, Blogger Gene Bolmarcich, Esq. said...

Absolutely, "supplements" is "supplements for humans". Are "sweaters" also "sweaters for pets"? When will the TTAB use common sense for the first time in history?

At 9:19 AM, Anonymous Anonymous said...

John, I disagree. You simply cannot build that limitation into the specification.

At 9:31 AM, Blogger Eddie said...

In sum, applicant failed to show that VITALFLORA is a weak mark that is not entitled to a normal scope of protection.
Weak? How about descriptive?

At 10:03 AM, Blogger Peter S. Sloane said...

This is where partial cancellations to limit the goods under Trademark Act § 18 could come in handy.

At 1:43 PM, Anonymous Anonymous said...

Regarding the presumption that "supplements" refers to "human" supplements, I would agree with that if human supplements and pet supplements were in different classes (maybe they should be). As an example, clothing is in Class 25, but clothing for pets is in Class 18. Thus, if someone files for clothing in Class 25, it is presumed they mean for humans, as the application was not filed in Class 18. It is an interesting issue for sure, and there does seem to be some inconsistency in how the USPTO handles this issue.


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