Naturally Scientific, Inc.

Trademark Trial and Appeal Board

Aug 4, 2003

No. 76130604 (T.T.A.B. Aug. 4, 2003)

Paper No. 15
TEH
Mailed: August 4, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Naturally Scientific, Inc.
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Serial No. 76/130,604
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Evelyn M. Sommer for Naturally Scientific, Inc.
Brian D. Brown, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Bucher, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Applicant, Naturally Scientific, Inc., has appealed from the
final refusal of the Trademark Examining Attorney to register the
mark ENERGY MENDER for a "nutritional and dietary supplement."1
The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
1 Application Serial No. 76/130,604, filed September 20, 2000, alleging
dates of first use and first use in commerce on November 1, 1998. The
word "ENERGY" has been disclaimed.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/130,604
2
applicant's mark, when applied to applicant's goods, so resembles
the mark MOOD MENDER for "health and performance foods, namely,
ready-to-eat food bars, chewing gum and tea-based beverages"2 as to
be likely to cause confusion.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention to
the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976) and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Turning first to the goods, the Examining Attorney argues that
the respective goods are related and that they are sold in the same
trade channels to the same purchasers. The Examining Attorney has
made of record third-party registrations showing that the same
marks are registered for both nutritional supplements and at least
one of registrant's goods.
Applicant maintains, however, that confusion is not likely
because the respective goods are of "different types" and are
2 Registration No. 2,494,588, issued October 2, 2001.
Ser No. 76/130,604
3
marketed in "different manners" (brief, p.5). Applicant denies
that the goods are sold in the same channels of trade to the same
purchasers and contrasts its own goods, claiming they are sold in
liquid form and administered with a dropper or teaspoon, with the
food bars, chewing gum and tea-based beverages offered by
registrant. According to applicant, the respective products would
be displayed in separate aisles or on separate shelves and the
purchasers of its products would be "reasonably informed" and less
likely to be confused than the ordinary purchaser. (Brief, p.7).
To begin with, the question is not whether purchasers can
differentiate the goods themselves, but rather whether purchasers
are likely to confuse the source of the goods. See Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
Thus, it is not necessary that the goods be identical or even
competitive to support a finding of likelihood of confusion. It is
sufficient if the respective goods are related in some manner
and/or that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with, the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Applicant's nutritional and dietary supplements, on the one
hand, and registrant's health and performance food bars and tea-
Ser No. 76/130,604
4
based beverages, on the other, are closely related products. While
the characteristics of the products may differ, they all
nonetheless constitute dietary products having the same intended
purpose, to restore or improve a person's sense of physical or
emotional well-being. The third-party registrations made of record
by the Examining Attorney show, in each instance, a mark which is
registered for both nutritional supplements and either health food
bars or teas. These registrations, while not evidence of use of
the marks therein, tend to show that purchasers would expect the
types of products offered by applicant and registrant, if sold
under similar marks, to emanate from the same source. See, e.g., In
re Albert Trostel & Sons Co., supra at 1785-1786; and In re Mucky
Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).
Although applicant has attempted to distinguish the form of
its product and the manner in which it is marketed, in the absence
of any restrictions in the application, applicant's nutritional
supplements would not be limited to sale in liquid form and
moreover, must be deemed to be marketed to the same purchasers and
in the same trade channels as those of registrant. See, e.g., In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). We have no
evidence that applicant’s and registrant’s products typically would
be displayed in different aisles of a store nor do we find that to
be an important consideration since these products may not even be
purchased at the same time.
Ser No. 76/130,604
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There is no evidence to support applicant’s claim that its
products are purchased by a "reasonably informed" public. In fact,
to the contrary, it is reasonable to assume that both applicant’s
nutritional supplements and registrant’s health and performance
foods would be purchased by customers of all types including
members of the general public. While some of these consumers may
care about the products they are purchasing or exercise a certain
degree of care in selecting these products, they are not
necessarily "informed" purchasers or likely to exercise a high
degree of care in terms of examining the trademarks. As relatively
inexpensive products (and applicant has not argued otherwise) they
are more likely to be purchased casually and on impulse, thereby
increasing the risk of confusion. Kimberly-Clark Corp. v. H.
Douglas Enter., Ltd., 774 F.2d 1144, 1146, 227 USPQ 541, 542 (Fed.
Cir. 1985).
Thus, we turn our attention to the marks, keeping in mind that
when marks would appear on closely related goods, the degree of
similarity between the marks necessary to support a finding of
likelihood of confusion declines. Century 21 Real Estate v.
Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant argues that when viewed in their entireties,
including consideration of the disclaimed word ENERGY, the marks
are different in sound, appearance and commercial impression
primarily in view of the differences in meaning of ENERGY and MOOD.
Ser No. 76/130,604
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Applicant argues that the word MENDER, the only similar portion of
the marks, has little significance in view of its suggestive
meaning in relation to the goods, and that "[i]t would be expected
that the word ... would be widely adopted in the trade..." (brief,
p.4). Relying on dictionary definitions of "energy" and "mood,"
applicant contrasts the meaning of ENERGY MENDER which, according
to applicant, suggests nutritional supplements for imparting vim,
vigor and vitality, with MOOD MENDER which "is used in the context
of improving a somber, melancholy state of mind." (Brief, p.6).
Applicant is correct that the marks must be considered in
their entireties and that the commercial impressions are conveyed
by the marks as a whole, including the disclaimed word in
applicant's mark. At the same time, "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 the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985).
When we compare ENERGY MENDER and MOOD MENDER in their
entireties, we find that the two marks create similar overall
commercial impressions and would convey similar meanings to those
who would purchase the products. The shared word MENDER, a term
which is only somewhat suggestive of the identified goods, is
visually and aurally a significant part of both marks. There is no
Ser No. 76/130,604
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evidence that MENDER is highly suggestive of the identified goods
or that the term is commonly used by others on these or related
goods. Applicant has introduced no evidence of third-party
registrations or uses of MENDER in connection with similar goods
or any other evidence that would suggest that the term is weak or
entitled to anything less than a broad scope of protection.3 In
fact, MENDER would seem to be a somewhat unusual word to use for
these types of products. Consumers would not typically think in
terms of, for example, "mending" their mood. Thus, the word is
more likely to be remembered by purchasers when seeing the marks on
the goods at different times or in different places.
While the words ENERGY and MOOD have different meanings, they
are clearly related concepts, particularly in relation to the
identified goods. Their relationship becomes even more obvious
when each of those words is combined with the distinctive term
MENDER. When viewed as a whole in the context of the goods, both
marks suggest products with similar or at least complementary
benefits, i.e., elevating mood and energy levels to restore an
overall healthful state.
3 The Examining Attorney submitted a printout of the results of an
electronic search of Office records and a list of third-party
registrations and applications for marks containing "mender" as evidence
of the strength of the word. To begin with, a list is insufficient to
make third-party applications and registrations of record. Moreover,
since the list fails to include any goods or services, it does nothing to
support the Examining Attorney's contention. Finally, the significance of
the search results and the relationship, if any, of those results to the
Ser No. 76/130,604
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In view of the substantially similar meanings and commercial
impressions conveyed by these marks, we believe that the
differences in sound and appearance are not sufficient to avoid
confusion. This is particularly true when we consider, as
indicated earlier in this decision, that the purchasers of dietary
supplements and health and performance food bars and teas are
ordinary members of the general public who, for the most part, are
not necessarily "informed" and who, especially considering the
inexpensive nature of these goods, would not be expected to
exercise a high degree of care and thus would be more prone to
confusion.
Finally, to the extent that there is any doubt on the issue of
likelihood of confusion, it is settled that such doubt must be
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register is affirmed.
list of applications and registrations is unclear and unexplained and
therefore of no probative value.