Wednesday, October 09, 2019

TTABlog Test: Is "RAINFOREST NUTRITION" Confusable With "RAINFOREST ANIMALZ" for Nutritional Supplements?

The USPTO refused to register the mark RAINFOREST NUTRITION for dietary and nutritional supplements [NUTRITION disclaimed], finding a likelihood of confusion with the registered mark RAINFOREST ANIMALZ for "nutritional supplements." The goods overlap and presumably travel in the same trade channels to the same classes of consumers. But what about the marks? Applicant argued that RAINFOREST is a weak formative in light of numerous third-party uses and registrations. How do you think this came out? In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

The overlap in goods, trade channels, and classes of consumers weighed "heavily" in favor of a finding of likely confusion. Moreover, when the goods are in-part identical, a lesser degree of similarity between the marks is needed to support a likelihood of confusion finding.

As to the marks the Board observed that the dominant portion of applicant's mark, RAINFOREST, is identical to the first term of the cited mark, and so the marks look and sound more similar than dissimilar. However, the marks convey different meanings: applicant's mark suggests nutritional benefits derived from rainforests, whereas the registered mark suggests that its RAINFOREST-related supplements are animal-shaped.

The Board then turned to a consideration of the commercial and conceptual strength of the cited mark and of the term RAINFOREST. Applicant's evidence showed that third parties "widely use the marks' shared term RAINFOREST for nutritional supplements, including in food and beverage form, either as a trademark, or to describe the goods." Moreover, a number of retail stores offer supplements under "Rainforest" trade names.

Applicant also submitted use-based third-party registrations for RAINFOREST/RAIN FOREST marks for supplements or related food or beverage products. These registrations tend 'to show the sense in which [the term RAINFOREST] is used in ordinary parlance.'"

The Board agreed with applicant that the widespread use of RAINFOREST for supplements and certain other ingestible products should not be surprising because "plants, chemicals and other materials derived from rainforests have medicinal or other health benefits."

The Board found from this evidence that the term RAINFOREST is commercially weak in this field. Some of the evidence also showed use of the term in a descriptive manner, which establishes conceptual in addition to commercial weakness. The registration evidence corroborates the use evidence in showing that RAINFOREST is conceptually weak.

The Board balanced the similarities against the differences and ultimately found that the marks are not likely to be confused.

[C]onsumers are used to seeing the term RAINFOREST in connection with dietary and nutritional supplements, whether it is used as a trademark or descriptively/suggestively, and Applicant’s mark will thus be perceived as just one more of the many uses of RAINFOREST/RAIN FOREST for dietary or nutritional supplements or related goods. Given the established weakness of the shared term RAINFOREST, “the closer [Applicant’s] mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generation, 115 USPQ2d at 1674.

The Board therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlog comment: I count 13 third-party uses and five registrations. In Juice Generation there were 26 third-party uses or registrations of marks containing the phrase PEACE AND LOVE, and in Jack Wolfskin, there were 16 paw print designs. So the count in this case is at the lower end of the spectrum.

Text Copyright John L. Welch 2019.


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