Modern Media

Trademark Trial and Appeal Board

Feb 27, 2002

No. 75872263 (T.T.A.B. Feb. 27, 2002)

2/27/02

Paper No. 10
HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Modern Media
________

Serial No. 75/872,263
_______

Ellsworth R. Roston of Fulwider Patton Lee & Utecht, LLP
for Modern Media.

Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).

_______

Before Seeherman, Hairston and Wendel, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

Modern Media has filed an application to register the
mark FAT SWEEPER for “vitamins, herbal supplements,
nutritional supplements and dietary supplements.”1 A
disclaimer has been made of the word “FAT.”
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of

1 Serial No. 75/872,263, filed December 15, 1999, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/872,263
2
confusion with the mark SUPER SWEEPER which is registered
for a “nutritional supplement.”2
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors that are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used, or are intended to be used. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976); In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999).
Looking first to the respective goods, we note that
both registrant’s and applicant’s goods include nutritional
supplements. The remainder of applicant’s goods are
closely related supplements for dietary or nutritional
purposes. Accordingly, we find the goods in part identical
and otherwise closely related for purposes of our analysis.
Applicant has made no argument to the contrary.

2 Registration No. 2,150,283, issued April 14, 1998. A
disclaimer has been made of the word “SUPER.”
Ser No. 75/872,263
3
Furthermore, in the absence of any limitations in the
identification of the goods, we assume that the goods of
both registrant and applicant would travel in the same
channels of trade and be available to the same purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Turning to the respective marks, we are guided by the
general principle that the greater the similarity of the
goods, the lesser the degree of similarity of the marks
which is necessary to support a conclusion that there will
be a likelihood of confusion. See Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992). While the marks must be considered
in their entireties, there is nothing improper, under
appropriate circumstances, in giving more or less weight to
a particular portion of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Although descriptive or disclaimed matter cannot be ignored
in comparing the marks, it is also a fact that consumers
are more likely to rely on the non-descriptive portion of a
mark as an indication of source. See Hilson Research Inc.

3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/872,263
4
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).
We agree with the Examining Attorney that the dominant
feature of both applicant’s and registrant’s marks is the
term SWEEPER. The additional term in each mark is highly
descriptive or laudatory and has been acknowledged as such,
by disclaimer thereof. The source-indicating function of
these descriptive or laudatory terms is by their very
nature less than the term SWEEPER, which on the record
before us appears to be arbitrary for the goods with which
it is being used, or is intended to be used.
Although applicant argues that registrant is
wrongfully being given a “monopoly” on the term SWEEPER,
applicant has failed to introduce any evidence which might
show that SWEEPER has any suggestive significance when used
in connection with goods of this type or that the term has
been used by others in the field for similar goods. By
contrast, the Examining Attorney has made search results of
record showing that registrant’s mark is the only mark
including the term SWEEPER presently registered in Class 5.
Thus, on the record before us, we must deem the registered
mark to be strong and entitled to a broad scope of
protection. See Triumph Machinery Co. v. Kentmaster
Manufacturing Co., 1 USPQ2d 1826 (TTAB 1987). That
Ser No. 75/872,263
5
registrant has only used its mark since 1996 and obtained
its registration in 1998 is irrelevant to the issue of the
scope of protection to which registrant is entitled under
this registration.
While, as strongly argued by applicant, the additional
words FAT and SUPER obviously lead to differences in
appearance and sound in the marks as a whole and even lend
somewhat different connotations to the marks, the overall
commercial impressions created by the marks are very
similar. The emphasis must be on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1976). These
are both SWEEPER nutritional supplements. If attention is
drawn to the differences in the additional term (FAT versus
SUPER), we agree with the Examining Attorney that
purchasers might well believe that registrant’s SUPER
SWEEPER supplement is simply a higher potency or better
quality version of applicant’s FAT SWEEPER supplement.
While applicant also argues that, because the term FAT
or SUPER is the first word in each mark, it should be given
more emphasis or significance, we do not find this to be
true when the first terms are so highly
descriptive/laudatory. Any significance of these terms is
Ser No. 75/872,263
6
more as to the nature of the goods, rather than as to the
source thereof.
Finally, although applicant has undergone great
efforts to distinguish the cases cited by the Examining
Attorney, we would simply point out that likelihood of
confusion is determined on a case-specific basis, using the
duPont factors as our guide. See Han Beauty Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2 1557 (Fed. Cir.
2001). We must focus our analysis on the respective marks
and goods before us.
Applicant and the Examining Attorney have raised no
other factors for our consideration. Accordingly, on the
basis that the involved goods are either identical or
closely related and that the respective marks create
similar overall commercial impressions, we find confusion
likely.
Decision: The refusal to register under Section 2(d)
is affirmed.
Ser No. 75/872,263
7