TTAB Reverses 2(d) Refusals of "SUN CHLORELLA" for Noodles Due to Crowded Field

The Board reversed Section 2(d) refusals of the mark SUN CHLORELLA, in standard character and design form, for "Udon noodles made in whole or significant part of chlorella" [CHLORELLA disclaimed], finding confusion unlikely with the registered mark SUN NOODLE for, inter alia, noodles [NOODLE disclaimed]. Sixteen third-party, use-based registrations for mark containing the word SUN for noodles, and 18 more for arguably related goods, convinced the Board that the cited mark merits only a narrow scope of protection. In re Sun Chlorella Corp., Serial Nos. 97350448 and 97350457 (October 29, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo).

Applicant’s "Udon noodles made in whole or significant part of chlorella" are encompassed by the "noodles" of the cited registration. Because the goods are thus overlapping and legally identical (in part), the Board must presume that those goods travel in the same trade channels to the same classes of consumers. "Accordingly, the DuPont factors relating to the similarity or dissimilarity of the goods and the similarity or dissimilarity of their trade channels "`heavily favor a finding of likelihood of confusion." [Why "heavily"? - ed.]

With respect to the strength of the cited mark, Applicant submitted 34 live third-party registrations for SUN-formative marks, all identifying various food items, the most probative being sixteen that identify various types of noodles among their goods. [E.g., SUN LUCK, SUN RIGHT, and SUN BLUSH]. The Board observed that “extensive evidence of third-party use and registrations is 'powerful on its face,' even where the specific extent and impact of the usage has not been established." Jack Wolfskin, 116 USPQ2d at 1136 (citing Juice Generation, 115 USPQ2d at 1674) (emphasis by the Board).

Under these circumstances, based on the evidence of record, we accord marks consisting, in whole or in part, of the words “SUN” and its foreign equivalents in connection with noodles a narrow scope of protection. Such marks travel in a crowded field.

As to the marks, the Board noted that "chlorella" is defined as "any of a genus (Chlorella) of unicellular green algae," "any of a genus of single-celled green algae that have been grown as a possible source of food" or "a genus of unicellular green algae potentially a source of high-grade protein and B-complex vitamins." 

Website evidence discussing Applicant’s goods stated that: “Chlorella Udon Noodles by Sun Chlorella contain the freshwater algae billed as one of the newest superfoods that’s rich in minerals and vitamins like D and B12."

Applicant’s marks and the cited mark contain the identical first word “SUN,” followed by the terms NOODLE, describing a broad category of products and CHLORELLA,  describing a more specific type of product encompassed by the term NOODLE. The marks thus are similar in appearance and sound. [Seems like a nons sequitur to me - ed.]

The Board acknowledged the differences between the marks, but it nonetheless found that, viewing the marks as a whole, consumers "could mistakenly believe the marks are variations of each other, pointing to a common source," because the marks "are similar in appearance, sound and meaning and, overall, create similar commercial impressions."

Despite finding the marks more similar than dissimilar and the channels of trade and classes of consumers overlapping, the Board concluded that confusion is unlikely:

[E]vidence of extensive registration by third parties of “SUN” formative marks for goods identical or related to those identified in the cited registration demonstrates that the cited mark is conceptually weak to such an extent that it is entitled to a very narrow scope of protection. We thus find that the cited registration cannot prevent registration of Applicant’s involved applications.

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TTABlogger comment: In discussing Applicant's irrelevant prior registrations (different goods), the Board describes the prior registrations as incontestable. However, we know there is no such thing as an "incontestable" registration. The right to use a mark may be made incontestable under Section 15, not its registration.

Text Copyright John L. Welch 2024.