Amaranth Prime, LLCDownload PDFTrademark Trial and Appeal BoardApr 23, 202188537442 (T.T.A.B. Apr. 23, 2021) Copy Citation Mailed: April 23, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Amaranth Prime, LLC ———— Serial No. 88537442 ———— Colin P. Abrahams of the Law Office of Colin P. Abrahams, for Amaranth Prime, LLC. Paula Ha, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. ———— Before Wolfson, Pologeorgis, and Lebow, Administrative Trademark Judges. Opinion by Pologeorgis, Administrative Trademark Judge: Amaranth Prime, LLC (“Applicantâ€) seeks registration on the Principal Register of the standard character mark JUST BLOOM for “Dietary and nutritional supplements; Food supplements; Protein dietary supplements; Dietary food supplements†in International Class 5.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of 1 Application Serial No. 88537442, filed on July 25, 2019, based on an allegation of use in commerce under Section 1(a) of the Trademark Act, 15. U.S.C. 1051(a), claiming September 13, 2018 as both the date of first use and the date of first use in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 88537442 2 likelihood of confusion with the standard character mark JUST BLOOM! registered on the Principal Register for services including “providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing†in International Class 44.2 When the refusal was made final, Applicant appealed and requested reconsideration. When the request for reconsideration was denied, this appeal resumed. Both Applicant and the Examining Attorney filed briefs. For the reasons explained below, we affirm the refusal.3 I. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPontâ€); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned 2 Registration No. 5733226, issued on April 23, 2019. The registration identifies other services, namely, “Floral design services; Flower arranging; Plant care services; Garden design, installation and maintenance of interior botanical displays, streetscape container plantings and rooftop gardens for others†and “Providing on-line information, news and commentary in the field of health and wellness relating to connecting human beings with nature; Providing on-line information, news and commentary in the field of health and wellness relating to yoga, dance, and meditation; Rental of flower arrangements; Rental of potted plants.†These services, however, do not form the basis of the Examining Attorney’s Section 2(d) refusal and, thus, are not relevant to this appeal. 3 The TTABVUE and Trademark Status & Document Retrieval (“TSDRâ€) citations refer to the docket and electronic file database for the involved application. All citations to the TSDR database are to the downloadable .pdf version of the documents. Serial No. 88537442 3 to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination.â€). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.â€); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods [or services].’â€) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. Similarity of the Marks We first consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.†In re Inn at St. John’s, LLC, 126 Serial No. 88537442 4 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019)). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.†In re i.am.symbolic, LLC, 123 USPQ2d at 1748 (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted)). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.â€). However, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided Serial No. 88537442 5 the ultimate conclusion rests on consideration of the marks in their entireties.†In re Nat’l Data, 224 USPQ at 751. Applicant’s mark JUST BLOOM is wholly incorporated in Registrant’s mark JUST BLOOM!. The marks only differ by the addition of an exclamation point at the end of Registrant’s mark. Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (finding ML and MARK LEES and design, both for personal care products, confusingly similar); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1247-48 (TTAB 2010) (finding MAX and a column design confusingly similar to registered mark MAX); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (finding VANTAGE TITAN confusingly similar to registered mark TITAN); In re South Bend Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983) (finding LIL’ LADY BUG for toy doll carriages and LITTLE LADY for doll clothing confusingly similar). Despite the inclusion of an exclamation point at the end of the cited mark, Applicant’s mark and Registrant’s mark are identical in sound and virtually identical in appearance. Moreover, in general, punctuation is not sufficient to alter the connotation and overall commercial impression of marks and, as such, is not sufficient to distinguish marks. See In re St. Helena Hospital, 774 F.3d 747, 113 SUPQ2d 1082, 1085 (Fed. Cir. 2014) (TAKETEN and TAKE 10! engender similar commercial impressions despite addition of exclamation point); Bond v. Taylor, 119 USPQ2d 1049 (TTAB 2016) (BLACK MEN ROCK confusingly similar to BLACK Serial No. 88537442 6 GIRLS ROCK!); cf. Mag Instrument Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1712 (TTAB 2010) (hyphen does not distinguish MAG-NUM from MAGNUM), aff’d mem., ___ Fed. App’x ___, 2011 WL 5400095 (Fed. Cir. 2011); In re Promo Ink, 78 USPQ2d 1301, 1305 (TTAB 2006) (finding proposed mark merely descriptive Board stated punctuation mark in PARTY AT A DISCOUNT! does not significantly change the commercial impression of the mark); In re Burlington Indus., Inc., 196 USPQ 718, 719 (TTAB 1979) (“[A]n exclamation point does not serve to identify the source of the goods.â€). In terms of appearance, sound, connotation, and commercial impression, we find the marks, when considered in their entireties, are virtually identical.4 In view thereof, the similarity of the marks strongly favors a finding of a likelihood of confusion. B. Relatedness of Applicant’s Goods and Registrant’s Services We next compare Applicant’s goods and Registrant’s services at issue, namely, “providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing,†under the second DuPont factor. In making our determination regarding the relatedness of the goods and services, we must look to the goods as identified in Applicant’s application and the services listed in the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. 4 Applicant acknowledges that its mark is very similar to that in the cited registration, differing only by the presence of an exclamation point appearing after the wording JUST BLOOM in the cited mark. See Applicant’s Appeal Brief, p. 3, 7 TTABVUE 4. Serial No. 88537442 7 v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.â€)); see also In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). It is sufficient that the respective goods and services are related in some manner, or that the conditions and activities surrounding the marketing of the goods and services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Coach Servs., 101 USPQ2d at 1722 (internal citation omitted); Hilson Research, Inc. v. Soc’y for Human Res. Mgmt., 27 USPQ2d 1423, 1432 (TTAB 1993). The issue here, of course, is not whether consumers would confuse Applicant’s goods with Registrant’s services, but rather whether there is a likelihood of confusion as to the source of these goods and services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). Moreover, registration must be refused if Applicant’s mark for any of its identified goods is likely to cause confusion with the Registrant’s mark for any of its identified services. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Serial No. 88537442 8 Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application). Applicant’s goods are “Dietary and nutritional supplements; Food supplements; Protein dietary supplements; Dietary food supplements.†Registrant’s services are “Providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing.†In support of her argument that Applicant’s goods and Registrant’s services are related, the Examining Attorney submitted Internet evidence demonstrating that a single entity commonly provides Applicant’s goods and Registrant’s online information services in the fields of health and wellness under the same mark.5 A representative sample is set forth below: ï‚· NATURE MADE - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical and mental wellbeing, such as when is the best time to take vitamins; ï‚· NOW - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical 5 September 18, 2019 Office Action, TSDR pp. 8-13; March 23, 2020 Final Office Action, TSDR pp. 6-26; and October 9, 2020 Denial of Request for Reconsideration, TSDR pp. 6-10. Serial No. 88537442 9 and mental wellbeing, such as information about managing glucose and the Mediterranean diet; ï‚· THE VITAMIN SHOPPE - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical and mental wellbeing, such as information about powerlifting, sports nutrition, and the importance of protein in connection with aging; ï‚· DAVINCI - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical and mental wellbeing, such as information about brain health and adrenal fatigue, diet meal planning, taking supplements, and the benefits of sleep; ï‚· HERBALIFE - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical and mental wellbeing, such as information about fitness, healthy skin, and nutrition; ï‚· JARROW - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical Serial No. 88537442 10 and mental wellbeing, such as information about supplements and their effect on positive mood, metabolism, and brain function; ï‚· SWANSON - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical and mental wellbeing, such as information about health tips for changing seasons, nutrition; and ï‚· USANA - showing the mark used for dietary, nutritional and/or food supplements and a website providing information, news, and/or commentary in the field of health and wellness relating to physical and mental wellbeing, such as information about health advice for busy lifestyles. This evidence supports a finding that Applicant’s goods and Registrant’s online information services in the fields of health and wellness are goods and services that commonly emanate from a single source. See, e.g., In re C.H. Hanson Co., 116 USPQ2d 1351, 1355-56 (TTAB 2015) (relatedness found where Internet evidence demonstrated goods commonly emanated from the same source under a single mark); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysisâ€). The Examining Attorney also submitted thirty-three use-based registrations covering Applicant’s goods and Registrant’s online health and wellness information Serial No. 88537442 11 services.6 Third-party registrations are not evidence that the registered marks are in use or that the public is familiar with them, but they have some probative value to the extent they serve to suggest that the goods and services listed in the registrations are of a kind that may emanate from a single source. See, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001)); In re Aquamar, 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The Examining Attorney also submitted Internet evidence from MatchaBlog, Wellness Creative Co., SMP Supplement Manufacturing Partner, and Witty Kitty that demonstrates that health supplement providers are commonly encouraged by marketing professionals to provide web content, such as information about health and wellness, as a way to help market their supplements.7 Applicant argues that the Examining Attorney improperly concluded its goods and Registrant’s online information services in the fields of health and wellness are related. The crux of Applicant’s argument is that in considering Registrant’s identification of “providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing,†the other services identified in the cited registration should somehow restrict the plain language 6 September 18, 2019 Office Action, TSDR pp. 14-28; March 23, 2020 Final Office Action, TSDR pp. 27-71; and October 9, 2020 Denial of Request for Reconsideration, TSDR pp. 38- 76. 7 October 9, 2020 Denial of Request for Reconsideration, TSDR pp. 11-37. Serial No. 88537442 12 reading of the identification.8 Specifically, Applicant argues that this identification should be restricted to topics relating to floral design, floral arrangement, plant care, garden design, nature, flowers, plants and the like.9 Applicant’s argument is unavailing. The wording “providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing†recited in the cited registration is not affected by the other categories of services within the class. Because a semicolon separates the several clauses in Registrant’s recitation, its “providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing†is a discrete category of services that stands alone and independently as a basis for a likelihood of confusion analysis, and is not connected to nor dependent on the services set out on the other sides of any of the semicolons in the recitation. See In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1166-67 (TTAB 2013) (finding the registrant’s “restaurant and bar services†were not to be read “in pari materia with, or to be limited by, the other wording in the identification of’ services….â€) (citing In re Thor Tech Inc., 90 USPQ2d 1634 (TTAB 2009). Applicant also argues that Registrant’s online information services do not specifically refer to or identify online information services concerning dietary supplements per se.10 This argument is similarly unpersuasive. Registrant’s 8 Applicant’s Appeal Brief, pp. 5-7; 7 TTABVUE 6-8. 9 Id. 10 Id. Serial No. 88537442 13 “providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing†is broadly worded and presumably encompasses all services of the type described, including information about health and wellness relating to physical and mental wellbeing as may be derived from consumption of food and dietary supplements. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). As previously noted, registration must be refused if Applicant’s mark for any of its identified goods is likely to cause confusion with the Registrant’s mark for any of its identified services. Based on the record before us, we find that Applicant’s dietary supplement goods are related to Registrant’s provision of online information, commentary, and news in the fields of health and wellness, in that consumers may mistakenly believe that they emanate from the same source under the same mark. Accordingly, the second DuPont factor also favors a finding of a likelihood of confusion. C. Similarity of Trade Channels and Classes of Purchasers Next we consider established, likely-to-continue channels of trade, the third DuPont factor. Applicant argues that its goods and Registrant’s services differ in regard to channels of trade, manner of advertising, and classes of prospective purchasers. Specifically, Applicant maintains that its dietary supplements would be sold in food stores, sports stores, or other outlets involved in the sale of homeopathic, dietary, nutritional and related products, whereas Registrant’s services are provided Serial No. 88537442 14 online.11 With regard to classes of purchasers, Applicant argues that purchasers of its goods, namely, dietary and food supplements, “would be people who are interested in modulating diet and dietary intake, sports people supplementing essentials such as vitamins and amino acids, and others who may for various reasons feel it beneficial to generally raise their diet supplement intake.â€12 In contrast, Applicant speculates, Registrant’s services would be “directed toward individuals or entities acquiring or making floral designs and arrangements such as event organizers, and people who may be surfing the web to obtain information relating to connecting with nature, meditation, dance or yoga.â€13 We are not persuaded by Applicant’s arguments. As noted above, the likelihood of confusion analysis is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d at 1307, 128 USPQ2d at 1052 (citing In re i.am.symbolic, llc, 123 USPQ2d at 1749). Here, neither the application nor the cited registration contains any restrictions (other than Registrant’s information services being provided online) on channels of trade, manner of advertising, or classes of prospective purchasers. Therefore, it must be assumed that Applicant’s goods are sold and marketed everywhere that is normal for such items, including online where Registrant is providing its information services. See Coach Servs., 101 USPQ2d at 11 Id. at p. 7; 7 TTABVUE 8. 12 Id. at p. 8; 7 TTABVUE 9. 13 Id. at p. 9; 7 TTABVUE 10. Serial No. 88537442 15 1723 (absent limitation, “goods are presumed to travel in all normal channels ... for the relevant goods.â€); Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys “R†Us, Inc. v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). Here, the evidence of record demonstrates that Applicant’s goods and Registrant’s services are both sold or provided online, by the same entities, to the same classes of purchasers. Thus, at a minimum, Applicant’s goods and Registrant’s online information services in the field of health and wellness travel in overlapping trade channels and are offered to the same or overlapping consumers, i.e., customers interested in health and wellness. Accordingly, the third DuPont factor also weighs in favor of finding a likelihood of confusion. II. Conclusion We have considered all of the arguments and evidence of record and have found that: (1) the marks are virtually identical in sound, appearance, connotation and commercial impression; (2) Applicant’s identified goods and Registrant’s online information services in the field of health and wellness are related; and (3) the parties’ respective goods and services move in overlapping trade channels and would be offered to the same or overlapping classes of purchasers. In view thereof, we conclude that Applicant’s JUST BLOOM mark, as used in connection with the goods identified in its involved application, so resembles the cited standard character mark JUST BLOOM! for Registrant’s services identified as “providing on-line information, news and commentary in the field of health and wellness relating to physical and mental wellbeing†as to be likely to cause confusion or mistake, or to deceive under Section Serial No. 88537442 16 2(d) of the Trademark Act. Decision: The refusal to register Applicant’s JUST BLOOM mark under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation