Jay Cutler Elite, LLC

Trademark Trial and Appeal Board

Dec 18, 2014

No. 85835427 (T.T.A.B. Dec. 18, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Jay Cutler Elite, LLC
_____

Serial No. 85835427
_____

John Carey of Carey Rodriguez O’Keefe Milian Gonya, LLP
for Jay Cutler Elite, LLC.
Simon Teng, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
_____

Before Kuhlke, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Jay Cutler Elite, LLC (“Applicant”) seeks registration on the Principal Register
of the mark LEGEND JC (in stylized form shown below) for “dietary and nutritional
supplements,” in International Class 5.1

1 Application Serial No. 85835427 was filed on January 29, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 85835427
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark THE LEGEND
STACK, in standard character form, for “dietary and nutritional supplements,” in
International Class 5, as to be likely to cause confusion.2 Registrant disclaimed the
exclusive right to use “Stack.”
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant attached evidence to its brief. The Trademark Examining Attorney lodged
an objection to the evidence attached to Applicant’s brief on the ground that the
evidence was untimely. Applicant did not address the objection in its reply brief.
Trademark Rule 2.142(d) reads as follows:
The record in the application should be complete prior to
the filing of an appeal. The Trademark Trial and Appeal
Board will ordinarily not consider additional evidence
filed with the Board by the appellant or the examiner
after the appeal is filed. After an appeal is filed, if the
appellant or the examiner desires to introduce additional
evidence, the appellant or the examiner may request the
Board to suspend the appeal and to remand the
application for further examination.
The objection is sustained and we do not consider the evidence attached to
Applicant’s brief unless it was submitted during the prosecution of the application.

2 Registration No. 4291256, issued February 19, 2013.
Serial No. 85835427
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II. Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
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). See also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See 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 and differences in the marks”).
A. The similarity or dissimilarity and nature of the goods, the established,
likely-to continue channels of trade and classes of consumers.

The goods are identical. Because the goods described in the application and the
cited registration are identical, we must presume that the channels of trade and
classes of purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion).
Serial No. 85835427
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B. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “finding of similarity as to any one factor (sight,
sound or meaning) alone ‘may be sufficient to support a holding that the marks are
confusingly similar.’” In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)
(citations omitted). See also In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1987). In comparing the marks, we are mindful that where, as here, the goods are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Further, “[t]he 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.” Coach Servs. Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
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Serial No. 85835427
- 6 -

The mark in the cited registration is THE LEGEND STACK.4 Because the word
“the” has no trademark significance,5 upon encountering Registrant’s mark,
consumers must first notice the identical word “Legend.” Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992) (upon encountering the marks, consumers will first notice the identical lead
word). While “Stack” is an important part of Registrant’s mark, “Legend” is a
prominent feature as essentially the first word. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT
because “veuve” is the first word in the mark and the first word to appear on the
label); Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB

4 The Trademark Examining Attorney argues that the word “Legend” is the dominant part
of the registered mark because the word “Stack” has been disclaimed citing as support In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (DELTA
is the dominant portion of the mark THE DELTA CAFE because the word “cafe” is generic).
In this case, however, it is not clear to us why the word “Stack” has been disclaimed.
Because Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), provides that an applicant
may voluntarily disclaim a component of the mark, a disclaimer does not necessarily mean
the disclaimed matter is merely descriptive. See TMEP § 1213.10 (October 2014). The
Trademark Examining Attorney did not provide any evidence to show that the word “Stack”
is merely descriptive when used in connection with dietary and nutritional supplements
(e.g., the prosecution history of the cited registration requiring Registrant to disclaim the
word “Stack” on the ground that it is merely descriptive). In re Sela Products LLC, 107
USPQ2d 1580, 1583 (TTAB 2013) (file of cited registration not automatically of record). In
addition, a review of dictionary listings did not produce a definitive result. Accordingly, the
Trademark Examining Attorney’s argument that the word “Legend” is the dominant part of
the registered mark is not supported by the record.
5 See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (WAVE and THE WAVE
are virtually identical because “[t]he addition of the word ‘The’ at the beginning of the
registered mark does not have any trademark significance.”); In re Narwood Productions,
Inc., 223 USPQ 1034, 1035 n.2 (TTAB 1984) (noting “the insignificance of the word ‘the’” in
comparison of THE MUSIC MAKERS and MUSICMAKERS).
Serial No. 85835427
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1988) (“[I]t is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”).
The marks are obviously similar in appearance and sound because they share
the word “Legend.” The word “Legend” is defined, inter alia, as “someone who very
many people know about and admire.”6 Applicant engenders the same commercial
impression in its advertising.
IF YOU WANT TO BE A LEGEND YOU HAVE TO
TRAIN LIKE ONE …
* * *
WHY LEGEND™
It takes a legacy of hard work and “do what I do, not what
I say” to become a LEGEND. A legend is not built, it is
earned. This is exactly what you need and exactly what
we are giving you … experience it the way it was meant.
Several years of formulating went into making
LEGEND™ an extreme wrecking ball of an experience!
Greater SIZE – STRENGTH – SPEED & ENDURANCE
has been reported by regular HARDCORE users. Every
single training session, every single thought process is
now dialed into every single scoop.7
Likewise, Registrant uses its mark THE LEGEND STACK to engender the
commercial impression of a well-known or legendary person.
THE LEGEND STACK™
Building massive amounts of muscle is a complex process
that can take time to master. There are no miracle pills or
powders that will get you to the promised land overnight,
however, I am the master of muscle and I’d like to think I
could help you get there just a little bit quicker. … Its

6 MacMillan Dictionary (macmillandicionary.com) attached to the May 26, 2014 Office
action.
7 Applicant’s website (cutlernutrition.com) attached to the May 26, 2014 Office action.
Serial No. 85835427
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time that you train like a legend. Now there is nothing
holding you back.8
Consumers familiar with Registrant’s THE LEGEND STACK dietary and
nutritional supplements encountering the LEGEND JC mark for identical products
are likely to mistakenly believe brand dietary and nutritional
supplements are part of THE LEGEND STACK product line.
We find that the similarities of the marks outweigh the dissimilarities and the
marks are similar in appearance, sound, connotation and commercial impression.
C. The conditions under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing.

Applicant argues that the relevant customer is a “quasi-expert[] in such dietary
supplements” who is “a professional or amateur bodybuilder or fitness enthusiast.”9
These individual consumers will spend hours if not days
selecting just the “right” dietary supplement before
making a selection. Thus, the consumers for these
products have a higher level of sophistication in
conjunction with a higher level of scrutiny.10
There are three problems with Applicant’s argument. First, we have only
Applicant’s counsel’s statements as to the degree of care that customers will
exercise and how Applicant’s and Registrant’s customers view the role of the marks
in making their purchasing decisions. We have no foundational information about
counsel's investigation of, or understanding of the marketing and use of dietary and
nutritional supplements that would put him in a position to make statements

8 Registrant’s website (the legendstack.net) attached to the May 26, 2014 Office action.
9 Applicant’s Brief, p. 9.
10 Applicant’s Brief, pp. 9 – 10.
Serial No. 85835427
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regarding the thought process of customers, which in this case is central to
Applicant’s contention that consumers exercise such a high degree of care that the
likelihood of confusion will be minimized. See In re U.S. Tsubaki, Inc., 109 USPQ2d
2002, 2006 (TTAB 2014). Cf. In re DeBaun, 687 F.2d 459, 214 USPQ 933, 934 & n.4
(CCPA 1982) (“we need not evaluate the weight to be given to the attorney's
declaration with respect to statements more appropriately made by appellant”); In
re Simulations Publications, Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975)
(where appellant argued that the magazines at issue deal with unrelated subject
matter, the court held that “[s]tatements in a brief cannot take the place of
evidence.”); In re Scarbrough, 500 F.2d 560, 182 USPQ 298, 302 (CCPA 1974)
(where patent claims were rejected for the insufficiency of disclosure under Section
112, the response of appellant was argument in lieu of evidence leading the court to
hold that “argument of counsel cannot take the place of evidence lacking in the
record.”).
Second, the description of goods are not restricted or limited to professional or
amateur bodybuilders or fitness enthusiasts. We cannot resort to extrinsic evidence
to restrict the classes of consumers for dietary and nutritional supplements. See In
re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that
relevant goods are expensive wines sold to discriminating purchasers must be
disregarded given the absence of any such restrictions in the application or
registration).
Serial No. 85835427
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Finally, the Trademark Examining Attorney submitted evidence showing that
some dietary and nutritional supplements are inexpensive on the theory that low-
priced products are subject to impulse purchases and, therefore, purchasers will be
held to a lesser standard of care.11 For example, the GNC website (gnc.com)
advertises the sale of 50 L-Glutamine 500 tablets for $5.84, 100 L-Lysine tablets for
$7.64, and 90 L-Arginine capsules for $9.89; The Vitamin Shoppe
(vitaminshoppe.com) advertises the sale of 100 oat bran tablets for $4.99, 30 Co Q10
tablets for $5.75, and 50 zinc lozenges for $5.76.12
On the other hand, low prices do not necessarily imply a low degree of care in the
selection of dietary and nutritional supplements where prospective consumers
would be expected to exercise a reasonable degree of care regarding the products
that they ingest to improve health. See Inter IKEA Sys. v. Akea, LLC, 110 USPQ2d
1734, 1744 (TTAB 2014). See also Stouffer Corp. v. Health Valley Natural Foods,
Inc., 1 USPQ2d 1900 (TTAB 1986), where the Board found that consumers
exercised a reasonable degree of care even though the dinner entrees were relatively
inexpensive.
Considering the particular nature of the goods herein, we
do not believe that purchasing decisions are apt to be
made impulsively or carelessly, as would be the case of a
child purchasing candy or a toy. Thus, even in the hustle
and bustle atmosphere of a supermarket, diet-conscious
purchasers of these prepared entrees are a special class of
purchasers who may be expected, at least, to examine the
front of the packages in order to determine what kind of
entree is contained therein and its caloric content. On

11 May 26, 2014 Office action.
12 May 26, 2014 Office action.
Serial No. 85835427
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both of these parties’ packages, as well as on most of the
competitive brands, this information is prominently
displayed in close association with the trademarks.
Therefore, a lesser standard of care is not justified.
Id. at 1902. See also Weight Watchers International v. I. Rokeach & Sons, Inc., 211
USPQ 700, 706 (TTAB 1981), aff'd on other ground, 576 F.Supp. 841, 216 USPQ
1090 (SDNY 1982) (“it seems to us that weight-conscious supermarket purchasers
are quite apt to be more deliberate. Whether members of the program or not, such
purchasers are inclined to examine labels carefully.”).
We find that the relevant consumers for dietary and nutritional products will
exercise at least a moderate degree of consumer care when purchasing dietary and
nutritional supplements and, therefore, this du Pont factor weighs slightly against
finding that there is a likelihood of confusion; but not sufficiently to outweigh the
other factors.
D. Balancing the factors.
Because the marks are similar, the goods are identical, and we must presume
that the goods move in the same channels of trade and are sold to the same classes
of consumers, we find that the Trademark Examining Attorney has carried the
Office’s burden that Applicant’s mark for “dietary and nutritional
supplements” so resembles the registered mark THE LEGEND STACK for “dietary
and nutritional supplements” as to be likely to cause confusion.
Decision: The refusal to register Applicant’s mark is affirmed.