L. Perrigo Company

Trademark Trial and Appeal Board

Jan 8, 2002

No. 75588268 (T.T.A.B. Jan. 8, 2002)

1/8/02 Paper No. 11
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re L. Perrigo Company
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Serial No. 75/588,268
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H. W. Reick of Price, Heneveld, Cooper, DeWitt & Litton for
L. Perrigo Company.

Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Chapman and Rogers, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
L. Perrigo Company has filed an application to
register on the Principal Register the mark shown below

for “dietary supplements.” The application was filed on
November 13, 1998, based on applicant’s claimed date of
first use and first use in commerce of July 6, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/588268
2
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark shown below

for “nutritional supplement”1 as to be likely to cause
confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Food, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); and In

1 Registration No. 2,033,890, issued January 28, 1997 on the
Principal Register to Eye Communications, Inc.
Ser. No. 75/588268
3
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
Applicant’s goods, “dietary supplements,” and the
cited registrant’s goods, “nutritional supplement,” are
legally identical. Also, as identified, these goods would
certainly travel through the same channels of trade to the
same class of purchasers. See In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994). Applicant did not argue to the
contrary.
Regarding the marks, we begin with the premise that
“when marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” See Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
It is well settled that marks must be considered in
their entireties. However, our primary reviewing court has
held that in articulating reasons for reaching a conclusion
on the question of likelihood of confusion, there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
or portion of a mark. That is, one feature of a mark may
have more significance than another. See Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
Ser. No. 75/588268
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1798 (Fed. Cir. 1987); and In re National Data Corporation,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Moreover, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
comparisons. The proper test in determining likelihood of
confusion is not a side-by-side comparison of the marks,
but rather must be based on the similarity of the general
overall commercial impressions engendered by the involved
marks. See Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
In this case, we acknowledge that there are some
differences in the appearances of the marks. However, the
dominant source-indicating feature of each mark is the term
FORTIFY in applicant’s mark and the term FORTIFEYE in
registrant’s mark. The black background rectangle and the
stylized lettering in registrant’s mark, and the food
pyramid design (which is highly suggestive for the
identified goods), the stylized lettering and the four
black background lines in applicant’s mark do not
distinguish the marks. That is, the non-word portions of
the marks do not offer sufficient differences such that the
marks as a whole would create separate and different
commercial impressions; and the stylistic differences are
thus not sufficient to overcome the likelihood of
Ser. No. 75/588268
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confusion. See In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In regard to sound, the marks are the same.
Particularly when recommended by word of mouth (by health
professionals or friends) or advertised on the radio, there
is no distinction in sound.
Further, the terms “fortify” and “fortifeye” carry the
same general connotation. Applicant contends that the term
“fortify” is generic. However, the verb “fortify” has not
been shown to be generic for the involved goods. The term
“fortify” in applicant’s mark is certainly highly
suggestive, as evidenced by applicant’s specimens of record
which include the statement: “Vitamin Fortification For
Every Body,” and is likely to be taken as indicating the
goods are fortified with vitamins and minerals.
Registrant’s mark may connote a specialized reference to
fortification especially helpful for the eyes.
Nonetheless, the terms carry a similar connotation for both
applicant’s mark and the cited mark, specifically that the
goods are “fortified” and/or that consumers can fortify
themselves by taking the dietary or nutritional supplement.
Overall we find the marks are similar.
Although the common element fortify/fortifeye is
highly suggestive of the goods, we have no evidence of
Ser. No. 75/588268
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third-party use of this term. Thus, we cannot find that
consumers would distinguish between these marks by design
element or misspelling or the like.
Finally, any doubt on the question of likelihood of
confusion must be resolved against the newcomer as the
newcomer has the opportunity to avoid confusion, and is
obligated to do so. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson
Research Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, at 1440 (TTAB 1993).
Decision: The refusal to register under Section 2(d)
is affirmed.