One Zero Pty Limited

Trademark Trial and Appeal Board

Oct 7, 2014

No. 79122787 (T.T.A.B. Oct. 7, 2014)

Mailed:
October 7, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re One Zero Pty Limited
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Serial No. 79122787
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Aaron J. Wong of Price Heneveld LLP, for One Zero Pty Limited.

Kevin A. Mittler, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
_______

Before Bergsman, Ritchie, and Adlin, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
One Zero Pty Limited (“Applicant”) filed an application to register the mark
PAIN AWAY PAIN RELIEF THERAPY and design as shown below, for
“pharmaceutical preparations for topical use being herbal creams and sprays for the
treatment of arthritis, pain, circulation and inflammation,” in International Class
5:1

1 Application Serial No. 79122787, based on a request for extension of protection of
International Registration No. 1141862, registered October 25, 2012, filed under Section
66(a) of the Trademark Act, 15 U.S.C. § 1141f(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79122787
2

“The colors red, white and blue are claimed as a feature of the mark, and the
mark contains the following description: The mark consists of a blue rectangle
containing the red stylized word PAIN above the blue stylized word AWAY, above
the letter Y is a blue design of Australia with red and white lines and white stars in
an approximation of part of the Augralian flag; underneath the rectangle is the
phrase PAIN RELIEF THERAPY with PAIN and THERAPY in red stylized text
and RELIEF in blue stylized text.”
The trademark examining attorney refused registration of the 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 mark PAIN AWAY, and design, as shown below,
for “oral analgesics,” in International Class 5,2 that when used in connection with

2 Registration No. 1881813, issued March 7, 1995. Sections 8 and 15 affidavits accepted and
acknowledged. Renewed twice.
Serial No. 79122787
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Applicant’s identified goods, it will be likely to cause confusion, mistake, or to
deceive:

Upon final refusal of registration, Applicant filed a timely appeal. Both
Applicant and the Examining Attorney filed briefs, and Applicant filed a reply brief.
After careful consideration of the arguments and evidence of record, we affirm the
refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a 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 goods or services.
See Federated Foods, Inc. v. Fort Howard 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”). We consider each of the factors as to which Applicant or the Examining
Attorney presented arguments or evidence.

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 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
Serial No. 79122787
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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, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The literal
portion of the mark in the cited registration is PAIN AWAY. The literal portion of
Applicant’s mark is PAIN AWAY PAIN RELIEF THERAPY all of which except
“PAIN AWAY” is descriptive and disclaimed. While we do not disregard Applicant’s
admonishments regarding the importance of every aspect of its mark, we revert to
our precedent in noting that it is the dominant portion of a mark that consumers
are most likely to recall. See In re Nat’l Data, 753 F.3d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (descriptive matter may be given “less weight” in an analysis of the
marks). We further note that both marks begin with this same, dominant term
PAIN AWAY. As dictated by our case law, “it is often the first part of a mark which
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);
see also Palm Bay Imports, 73 USPQ2d at 1692.
We acknowledge that both marks have design aspects. Nevertheless, it is
well-established that it is typically the words that consumers will use to call for or
refer to goods or services. In re Viterra Inc., 671 F3d 1358, 101 USPQ2d 1905, 1911
(Fed. Cir. 2012), citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir.
1983). The mark in the cited registration contains a diamond in the middle, and
Applicant’s mark contains colors as well as a rendition of the Australian flag.3 We

3 The Examining Attorney noted this aspect of the mark but did not issue a refusal under
Section 2(b) which prohibits any mark that “consists of or comprises the flag or coat of arms
Serial No. 79122787
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do not find that these design elements detract from the commercial impression of
both marks suggesting medications to take “pain away.” Finally, we note that to the
extent the marks differ, it is likely that consumers will understand Applicant’s
PAIN AWAY PAIN RELIEF THERAPY mark to be a product line in Registrant’s
PAIN AWAY product line of pain relief products.
Applicant argues that the shared term “PAIN AWAY” is weak. In this regard,
Applicant submitted with its September 3, 2013 Response to Office Action a list of
third-party registrations, noting that in International Class 5, 163 include the term
“pain,” and 13 include both “pain” and “away.” A list does not properly constitute
evidence. In order to make a third-party registration of record, a copy of the
registration, either a copy of the paper USPTO record, or a copy taken from the
electronic records of the Office should be submitted. In re Volvo Cars of North
America Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998); and In re Duofold Inc., 184
USPQ 638, 640 (TTAB 1974). Nevertheless, the Examining Attorney, while
objecting in his brief, did not timely object during prosecution, noting, with the
September 16, 2013 Final Office Action only that the number of registrations
containing both “pain” and “away” was insufficient. We agree. Thirteen
registrations including the shared terms “pain” and “away” is hardly sufficient to
evidence a narrow scope of protection, particularly as we note that several are not
registered, but are listed as “pending,” and two are listed as belonging to Applicant,

or other insignia of the United States, or of any State or municipality, or of any foreign
nation, or any simulation thereof.” Since we affirm the Section 2(d) refusal to register, there
is no need for us to remand for consideration of this issue.

Serial No. 79122787
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and one to Registrant. Of the ones listed as registered and that include the
composite term together, only DOG PAIN AWAY, for “dietary supplements for
pets,” PAINAWAY, for “topical analgesics,” and SPRAY THE PAIN AWAY, for
“analgesic spray for external use” are owned by third parties, and the former does
not include particularly similar goods as those at issue in this proceeding.
To the extent the third-party registrations have any probative value, they
may be used to show the meaning of the mark (i.e., the product makes pain go
away). However, third-party registrations are not evidence that the marks are in
use on a commercial scale or that the public has become familiar with them. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations reposing in the U.S.
Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw any inferences
about which, if any of the marks subject of the third party
[sic] registrations are still in use. Because of this doubt,
third party [sic] registration evidence proves nothing
about the impact of the third-party marks on purchasers
in terms of dilution of the mark in question or
conditioning of the purchasers as to their weakness in
distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286. See also Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to
strength of a mark, however, registration evidence may not be given any weight”).
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Finally, we note that even the owner of a weak mark is entitled to protection
from likelihood of confusion by competing marks. See Giant Food Inc. v. Roosres and
Mastacco, Inc., 218 USPQ 521 (TTAB 1982). In view of the foregoing, we find strong
similarities in commercial impression with additional similarities in sight and
sound, and the first du Pont factor weighs strongly in favor of finding a likelihood of
confusion.

The Goods and Channels of Trade

Turning next to the goods and channels of trade, we note that the goods or
services need not be identical or even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that goods or services 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 each parties’
goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The identification of goods in the cited registration is “oral analgesics,” while
the identification of goods in the application includes “pharmaceutical preparations
for topical use being herbal creams and sprays for the treatment of arthritis, pain,
circulation and inflammation.” The Examining Attorney submitted a dictionary
definition of “analgestic” as “a remedy that relieves or allays pain.“4

4 Dictionary.com; Random House (2013).
Serial No. 79122787
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The Examining Attorney also submitted a number of third-party
registrations that include the “oral analgesics” identified in the cited registration as
well as “topical analgesics” which subsumes the various topical pain relievers
identified in the application. Some examples include Registration No. 2061739
(QUALITYCARE); Registration No. 2507598 (HEALTHCARE AMERICA);
Registration No. 2732863 (MENTOLATUM MENTHOLATUM MENTHOLATUM
M); Registration No. 4324628 (DIRECT SAFETY); Registration No. 3701435 (HNP
PHARMACEUTICALS); and Registration No. 2905201 (ZILACTIN). Although
Applicant argues that the registrations are not relevant because they include too
many other goods to be convincing evidence, we do not find that to be accurate.
Rather, these third-party registrations serve to suggest that the goods are of a type
which may emanate from a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993).
The Examining Attorney further submitted web evidence showing companies
offering for sale both oral and topical analgesics of the type identified by the
Registrant on the one hand and by Applicant on the other. These include the
following:
Serial No. 79122787
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Attached to September 16, 2013 Final Office Action, p.4
Serial No. 79122787
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Attached to September 16, 2013 Final Office Action, p. 6.
Serial No. 79122787
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Attached to September 16, 2013 Final Office Action, p. 10
Serial No. 79122787
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Attached to September 16, 2013 Final Office Action, p. 17
As to channels of trade and classes of consumers, neither the identification of
goods in the application nor the identification of goods in the cited registration
contains any limitations. Accordingly, we must assume that Applicant’s and
Registrant’s services may travel via all normal channels of trade and be marketed
to typical consumers, which would include overlapping members of the general
public that seek various types of oral and topical pain relief products. See Squirtco
v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). Accordingly,
the second and third du Pont factors also weigh in favor of finding a likelihood of
confusion.

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Conclusion
Considering all of the evidence of record as it pertains to the du Pont factors,
we conclude that the marks, when considered in their entireties, are highly similar
in sound and appearance and, when considered in their entireties, give the same
commercial impression; the goods are related; and they are likely to be sold through
the same channels of trade to the same classes of purchasers. Accordingly, we find a
likelihood of confusion between Applicant’s mark and the mark shown in the cited
registration.
Decision: The Section 2(d) refusal to register is affirmed.