Fulfill Food and Beverages, LLC

Trademark Trial and Appeal Board

Jul 13, 2018

No. 76719598 (T.T.A.B. Jul. 13, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: July 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fulfill Food and Beverages, LLC
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Serial No. 76719598

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Paul M. Denk, Esq.,
for Fulfill Food and Beverages, LLC.

John E. Michos, Trademark Examining Attorney, Law Office 118,
Michael W. Baird, Managing Attorney.
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Before Taylor, Ritchie, and Lynch,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Fulfill Food and Beverages, LLC (“Applicant”) seeks registration on the Principal
Register of the mark KARUNA THE ROOT OF GOOD HEALTH and design, as
shown below, for goods ultimately identified as “a fruit infused plant-based drink,
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namely, filtered water infused with a fruit flavoring and plant-based ingredients,” in
International Class 321:

The Examining Attorney refused registration of Applicant’s mark under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d), as to be likely to cause confusion, mistake, or to
deceive, based on a registration for the mark KARUNA, in standard characters, for
“nutritional supplements,” in International Class 5.2
After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration. When the request for reconsideration was denied, Applicant filed
this appeal, which is fully briefed. For the reasons discussed herein, we affirm the
refusal.

1 Serial No. 76719598, filed on August 5, 2016, pursuant to Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b) alleging a bona fide intent to use the mark in commerce. The
application contains the following description of the mark: The mark consists of the wording
"KARUNA" as part of a tree design with the wording "THE ROOT OF GOOD HEALTH". The
shading represents background and is not part of the mark.
2 Registration No. 2964252 issued June 28, 2005. Sections 8 and 15 affidavits accepted and
acknowledged. Renewed.
Serial No. 76719598
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I. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We consider the du Pont factors for which arguments or evidence were presented. The
other factors, we consider to be neutral.
A. The Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The mark in the cited registration is KARUNA, in standard character format.
Applicant’s mark also incorporates the term KARUNA, and features it prominently
as the largest literal term in its mark, . The Examining Attorney
submitted a definition of “karuna” as meaning “compassion that is a fundamental
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quality in the bodhisattva ideal of Mahayana Buddhism.”3 Applicant also submitted
an article that notes, similarly, “Karuna means ‘compassion’ in Buddhism.”4 We find
that this arbitrary term, KARUNA, is the dominant term in Applicant’s mark and
the sole term in the cited mark. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985). This shared term makes the marks look and sound similar,
and contributes to a similar meaning and commercial impression. In Applicant’s
mark, not only is KARUNA in larger font, but as the first part of a mark it is “most
likely to be impressed upon the mind of a purchaser and remembered.” Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Because
the cited mark is in standard characters, its protection extends to the same stylization
Applicant uses for KARUNA in its mark. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1909 (Fed. Cir. 2012) (holding that the specific font style of a mark
cannot serve as the basis to distinguish it from a mark in standard character form);
see also Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a). The additional wording in
Applicant’s mark, “THE ROOT OF GOOD HEALTH” is suggestive of a function of its
goods, which is to improve health, and is therefore less significant. We find that
consumers would perceive it as a slogan or motto modifying the dominant source-
indicating element of the mark, KARUNA. Applicant argues that “The Trees design
reminds consumers of a healthy environment and gives the impression that the

3 Attached to July 24, 2017 Denial of Request for Reconsideration, at 2-3.
4 Attached to October 17, 2017 Request for Reconsideration, at 8.
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product is a tree grown and fruit oriented drink.”5 We agree that the tree design also
reflects the concept of the plant-based ingredients and the health-related aspects of
Applicant’s goods, and we do not find that this changes the commercial impression of
Applicant’s mark. Furthermore, we generally give less weight to the style and design
elements of a mark than to the wording, because it is the wording that would be used
by purchasers to request the services. See Viterra Inc., 101 USPQ2d at 1911.
Overall, we find that the marks, considered in their entireties, are substantially
similar in sight and sound and substantially similar in commercial impression. Thus,
the first du Pont factor favors finding a likelihood of confusion.
B. Goods, Trade Channels and Purchasers
When considering the similarity or dissimilarity of the goods, we note that goods
need not be identical or even competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that the goods are related in some manner or that
some circumstances surrounding their marketing are such that they would be likely
to be seen by the same persons under circumstances which could give rise, because of
the marks used or intended to be used therewith, to a mistaken belief that they
originate from or are in some way associated with the same producer or that there is
an association between the producers of the parties’ goods or services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991).

5 4 TTABVUE 16.
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The cited registration is for “nutritional supplements.” Applicant seeks to register
goods ultimately identified as “a fruit infused plant-based drink, namely, filtered
water infused with a fruit flavoring and plant-based ingredients.” To show that these
goods serve the same function, the Examining Attorney submitted third-party
websites that advertise liquid fruit-flavored beverages that also include or that serve
as nutritional supplements. Some examples include Ensure Enlive, offered at Phc-
online.com; Country Life, offered at Countrylifevitamins.com; Genesis™ Drink,
offered at Symmetrydirectbuy.com; and NingXia Red, offered at Youngliving.com.6
The Examining Attorney further supported this conclusion by submitting copies
of third-party registrations with nutritional supplements, as identified in the cited
registration, on the one hand, and fruit-flavored beverages, as identified in the
application, on the other. Copies of use-based, third-party registrations may help
establish that the goods are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). These include
POM WONDERFUL (Registration No. 3687491); DESIGNED WITH YOUR BODY
IN MIND (Registration No. 4429265); DESIGNER WHEY (Registration No.
4519972); and NECTAR OF THE GODS (Registration No. 4827430).7
It is therefore clear that the “fruit infused plant-based drink, namely, filtered
water infused with a fruit flavoring and plant-based ingredients” identified by
Applicant can include or perform the same function as the “nutritional supplements”

6Attached to July 24, 2017 Denial of Request for Reconsideration, at 10-64.
7 Attached to June 1, 2017 Final Office Action, at 41-51.
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identified in the cited registration, and are related thereto. See In re Iolo Technologies
LLC, 95 USPQ2d 1498 (TTAB 2010) (finding likelihood of confusion where goods are
“complementary in function and purpose”); citing Octocom Systems, Inc. v. Houston
Computers Services 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.”) (citations omitted).
We do not find persuasive Applicant’s arguments based on the actual nature and
form of Registrant’s nutritional supplements, as we must focus on the goods as
identified in the cited registration, not on extrinsic marketplace evidence. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Systems, 16 USPQ2d at 1787. Because the nutritional
supplements in the cited registration are broadly identified, they are presumed to
encompass all types of nutritional supplements. In re Jump Designs LLC, 80 USPQ2d
1370, 1374 (TTAB 2006).
We thus find that the goods in the application and the cited registration are
related and are likely to travel through the same channels of trade to the same classes
of consumers, which are members of the general public who are seeking to accomplish
goals relating to fitness and health. The second and third du Pont factors favor
finding a likelihood of confusion.
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C. Conditions of Sale
Applicant urges us to consider the consumer sophistication and degree of
purchaser care likely to be exercised for the goods at issue in this proceeding, arguing
that consumers of these goods “will take their time” and “will take the advice of a
practitioner and review the listing of ingredients rather than the mark used.”8 There
is no evidence to support these claims. Both the application and the cited registration
contain no limitations and may be sold to general consumers. Even if we were to
assume that consumers exercise a certain degree of care in selecting nutritional
supplements, it is nevertheless well-established that even sophisticated consumers
are not immune from source confusion where both the goods and the marks are
similar. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
(Fed. Cir. 2000). Overall, we find this factor to be neutral. See Stone Lion Capital 110
USPQ2d at 1163 (affirming that TTAB properly considered all potential purchasers
for recited services, including both sophisticated and unsophisticated investors, since
precedent requires consumer care for likelihood-of-confusion decision be based “on
the least sophisticated potential purchasers”).
D. Other Factors
Applicant also urges us to consider the sixth through thirteenth du Pont factors.
Regarding the sixth du Pont factor, Applicant referenced in its Response to Office
Action, and again in its brief two third-party registrations. Although Applicant did

8 4 TTABVUE 22.
Serial No. 76719598
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not include copies of the registrations, the Examining Attorney did not object, and we
thus consider the information provided for what probative value it may have.
Nevertheless, Applicant has only provided the two registration numbers, with the
mark, and a general description of the goods. We do not know if the registrations are
live. Even if we accept the information on its face, Applicant notes that they are
owned by a single registrant, and that the goods are for cosmetics, which are different,
and of course cannot be substituted as an edible nutritional product. Meanwhile, the
existence of one or two registrations belonging to a single registrant is not enough to
narrow the scope of protection of the cited registration. Cf. Promark v. GFA Brands,
Inc., 114 USPQ2d 1232, 1244 (TTAB 2015) (“Such third-party registrations and uses
are competent to show that the common term has an accepted meaning in a given
field.”); cf Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030, 1033-36 (TTAB 2016) (weakness of term ROSE in opposer’s mark
PRIMROSE found based on at least 85 actual uses of ROSE-formative marks for
similar services, eight similar third-party registrations, expert testimony and other
evidence regarding the common nature of ROSE-formative marks in the industry,
and testimony by opposer that it did not vigorously enforce its mark).
Regarding the seventh and eighth du Pont factors, Applicant urges us to consider
that there has not been any actual confusion. The lack of evidence of “actual
confusion” carries little weight, especially in an ex parte context. Majestic Distilling,
65 USPQ2d at 1205. This is particularly so where, as here, applicant has an intent-
to-use application and there has not yet been an opportunity for confusion to occur.
Serial No. 76719598
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Regarding the ninth through thirteenth du Pont factors, Applicant merely
presents conclusory argument without evidence.9 We deem all of these du Pont factors
to be neutral.
E. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the marks are substantially similar in sight,
sound, connotation, and commercial impression, and that the goods, which serve a
similar function, are related and travel through overlapping channels of trade to
general consumers. Overall, we find that there is a likelihood of confusion between
Applicant’s applied-for mark and the mark in the cited registration.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

9 In accordance with our case law, it is unnecessary to argue every du Pont factor, where no
evidence is available.