TTABlog Test: Are Gummy Vitamins Related to Personal Care Products Under Section 2(d)?
The USPTO refused to register the mark KUDO for "Gummy vitamins; Nutritional supplements in the form of gummies," finding confusion likely with the nearly identical mark KUDOS registered for "Hair shampoo, hair conditioner, soap for hands, face and body, skin/body moisturizer, skin/body lotion, shaving preparations, body/hand cream, skin cleansing cream, and bath gels/oil." Are the goods related? Do they travel through the same trade channels? How do you think this appeal came out? In re Salvation Nutraceuticals Inc., Serial No. 97015288 (March 8, 2024) [not precedential] (Opinion by Judge Mark Lebow).
Examining Attorney Yat Sye Lee submitted internet evidence that some eighteen different companies offer the goods of both applicant and registrant under the same mark (including SEPHORA, BATH & BODY WORKS, and PACIFICA), along with twenty use-based third-party registrations covering these goods. The Board therefore found the goods to be related.
Applicant Salvation contended that “[c]ompanies typically separate their topical goods from their consumable goods,” which “prevents consumers from believing that the consumable goods somehow contain similar ingredients or characteristics as the topical products, which can contain toxins or other undesirable ingredients to consume and allows the companies to market the products with different message." [sic].: According to applicant:
[The USPTO actually has a long and consistent practice of not finding dietary and nutritional supplements to be related or similar to skin care products. But recently, many marks are being rejected by presenting extrinsic evidence that improperly extends the rights of registrants in an ex parte proceeding based on being so-called substantially related. And the pendulum has swung too far.
However, evidentiary support for that assertion was lacking.
Salvation also complained that it “was not allowed to present extrinsic evidence of actual use by the registrant to show that the goods are not substantially related,' specifically, that Registrant is a manufacturer of guest amenities for hotels, which do not provide supplements and vitamins for their guests." The Board was not impressed, pointing out once again that:
“[the] likelihood of confusion determination must be made on the basis of the goods or services as identified in the application and the registration, rather than on the basis of what the evidence might show the applicant’s or registrant’s actual goods or services to be.” In re Trackmobile, 15 USPQ2d 1152, 1153 (1990)),
With regarding to the overlap in trade channels, the examining attorney relied on the same evidence discussed above regarding the relatedness of the goods, including the webpage evidence from retailers Avon, Honest, Pacifica, Tula, Ulta, Vegamour, Hello Bello, Love Beauty & Planet, Sephora, Blue Mercury, Bath & Body Works, Blu Atlas, Consult Beaute, Gimme, Love Wellness, New Nordic, Oase, and ZAS Naturals. "This evidence supports a finding that these goods are offered in at least one common channel of trade, that is, the websites operated by the third-party specialty retailers, often on the same page."
And so, the Board affirmed the refusal to register.
Read comments and post your comment here.
TTABlogger comment: Does this one bother you? Would you rub a gummy vitamin on your skin?
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 3/19/2024
10 comments
10 Comments:
The TTAB finds supplements/vitamins to be related to topical creams and similar products. Been there, done that. It has become another one of their unwritten per se rules, like finding beer, wine, and liquor all related.
Yes, I realize that. But not many decisions coming out of the TTAB last week, so I was a bit desperate.
It's possible to find anything on the Internet these days. Pizza an deodorant? Yeah, we sell those! These tests are. Poor substitute for what consumers find to be actually confusing as to source.
[Examining Attorney Yat Sye Lee submitted internet evidence that some eighteen different companies offer the goods of both applicant and registrant under the same mark (including SEPHORA, BATH & BODY WORKS, and PACIFICA), along with twenty use-based third-party registrations covering these goods. The Board therefore found the goods to be related.]
This was maybe persuasive in 1824, before department stores were really a thing, but certainly not in 2024, where Amazon and Walmart, et al. are known to exist. Pick any two classes, and you will find a number of parties selling good in both classes.
The vast majority of the brands the Examiner is referring to appear to be house brands, which should be given less weight in determining whether the goods are offered by the same entity or whether they travel in the same channels of trade.
I don't love the increasing reliance on Internet evidence by the PTO these days. There was a time they wouldn't allow online evidence as evidence of use. Now the pendulum has swung the other way.
It bothers me alot! But I would have made completely different arguments! Most notably, on top of the "we sell everything" argument for websites and department stores, I would have done a deep dive into the regulations regarding dietary supplements etc.
I would not rub a gummy anything on my skin, but the test is not whether I would confuse one product for the other but whether I would think that both products came from the same or affiliated sources. However, KUDOS is a singular noun (from Greek) meaning "praise", pronounced "ku-doss" not "ku-doze"; there is no such thing as a KUDO, which makes that term a fanciful mark and less likely to be associated with KUDOS. Looks like there was a dearth of analysis on this one.
@John, I am not saying it wasn't blog-worthy. (I am the first "anonymous" commenter.) I am just bitter toward the TTAB on the particular issue of finding these goods to be related. I lost on this one same issue a year ago, as you actually reported in your TTABlog post of March 21, 2023.
In my case I did all the In re Thor research and provided literally hundreds of examples of real-world and registration examples showing that the relevant goods are commonly marketed under the same or similar marks by differing sources. The TTAB picked apart a small percentage of the evidence I submitted, and completely ignored the dozens of ones that were dead-on (which still drastically outnumbered the evidence produced by the EA). In hindsight, I almost wish I had appealed on a pro bono basis for the client to try to take a stand.
Like others commenting above, I am troubled by the TTAB placing so much weight on house brands and random internet evidence to prove essentially any pairs of goods/services to be related. In reality, the true question is whether or not the EA decides to make the rejection in the first place. Once the rejection has been made and three websites are located showing the goods marketed under the same mark, then it's nearly game over as far as the EA and the TTAB are concerned. It is troubling how things currently stand. Hopefully the right appeal will come along to bring some real life sanity back to the analysis.
It occurs to me that when the Board says the consumers are accustomed to seeing the same mark being used for X goods and also for Y goods, it ignores that fact the customers also see that these goods have the same trade dress and marketing style, which is important in the conclusion that they come from the same source. So, does that third-party evidence necessarily support the fining that the goods are related? I'm still thinking about this.
Maybe the Board should visit a Target store. I cannot imagine how many completely unrelated products have the same or very similar names. I wonder how absurd the board would get here. If the registered product name identified a bicycle, footwear, shaving cream or talcum power do we get the same result?
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