USPL Nutritionals, LLC

Trademark Trial and Appeal Board

Oct 27, 2016

No. 86643513 (T.T.A.B. Oct. 27, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: October 27, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re USPL Nutritionals, LLC
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Serial No. 86643513
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Danial Kirshner of Daniel S. Kirshner Attorney At Law LLC,
for USPL Nutritionals, LLC.
Danielle E. Johnson, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Zervas, Mermelstein and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
USPL Nutritionals, LLC (“Applicant”) seeks registration on the Principal Register
of the mark VITAGUM (in standard characters) for:
Chewing gum containing dietary supplements in
International Class 30.1

1 Application Serial No. 86643513 was filed on May 28, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of
confusion with the following two registered marks owned by Vitaball, Inc.:
VBI VITAMINGUM (standard character mark) in
Registration No. 3661928 for vitamin fortified chewing
gum for human consumption in International Class 5.2
VITAMINGUM (standard character mark) in Registration
No. 3795335 for vitamin fortified chewing gum for human
consumption in International Class 5.3
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board, and Applicant and the Trademark Examining Attorney filed
briefs. We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all probative facts in
evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012);
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. 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

2 Registration No. 3661928 issued July 28, 2009; §§ 8 and 15 combined declaration accepted
and acknowledged. “Vitamin Gum” is disclaimed.
3 Registration No. 3795335 issued May 25, 2010 on the Supplemental Register; § 8
declaration accepted.
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differences in the essential characteristics of the goods and differences in the
marks.”). Not all of the du Pont factors are relevant to every case, and only factors of
significance to the particular mark need be considered. In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
For purposes of our du Pont analysis, we focus on Registration No. 3795335
(VITAMINGUM) which we find to be the most relevant of the cited registrations.
Accordingly, if we find a likelihood of confusion as to this cited registration, we need
not find it as to Registration No. 3661928. On the other hand, if we do not reach that
conclusion, neither would we find it as to Registration No. 3661928. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of goods and channels of trade
We first consider the second du Pont factor focusing on the similarity or
dissimilarity of Applicant’s goods, “chewing gum containing dietary supplements,” in
relation to the goods in the cited Registration, “vitamin fortified chewing gum for
human consumption.”
Inasmuch as vitamins are a type of dietary supplement4, Applicant’s goods, i.e.,
chewing gum containing dietary supplements, encompass the goods set forth in the
cited Registration, i.e., vitamin fortified chewing gum.
Although Registrant’s goods recite that they are for “human consumption” while
Applicant’s goods are not so restricted, we must construe Applicant’s goods to include

4 Office Action dated 9/11/2015 p. 9, http://www.fda.gov/AboutFDA/Transparency/Basics/
ucm195635.htm 9/11/2015.
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fortified chewing gum for human consumption. In fact, the goods differ only to the
extent that Applicant’s goods are defined more broadly in that they include chewing
gum containing dietary supplements other than vitamins as well as such chewing
gum for non-human consumption — if such a product exists. Given the nature of
“chewing gum” which is only used by human beings, this is a distinction without a
difference. The goods are otherwise identical.
When the goods are identical and their identifications have no restrictions as to
nature, type, channels of trade, or classes of purchasers — as is the case here — the
identified goods are presumed to travel in the same channels of trade to the same
class of purchasers. In re Viterra, Inc., 101 USPQ2d 1908; Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (citing
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983) (“absent
restrictions in the application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of purchasers.”).
As Applicant has acknowledged, Applicant’s goods are related to the goods in cited
Registration No. 3795335; moreover, they are presumed to travel in the same trade
channels to the same customers, supporting a likelihood of confusion under the
second and third du Pont factors.
B. Similarity of Marks as to appearance/sound/meaning/commercial
impression
We now turn to the first du Pont factor focusing on the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, meaning and commercial
impression. In re Viterra Inc., 101 USPQ2d at 1908; du Pont, 177 USPQ at 567.
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Applicant argues that the elements “VITA-” and “VITAMIN-” contained in the
marks render the marks “markedly dis-similar” concluding that the marks present
“entirely different” commercial impressions. While Applicant’s VITAGUM mark
shares the same “Vita-” prefix and “Gum” suffix as Registrant’s VITAMINGUM
mark, Registrant’s mark contains the additional syllable -MIN- creating the word
VITAMIN.
The Trademark Examining Attorney maintains that the use of the full wording
“VITAMIN” in the registered mark does not obviate the likelihood of confusion. Marks
may be similar in appearance where similar terms or phrases or similar parts of
terms or phrases appear in the compared marks and create a similar overall
commercial impression. The Trademark Examining Attorney argues that when
applied to Applicant’s and Registrant’s goods, the connotation and commercial
impression of Applicant’s prefix “VITA-” is nearly identical to the connotation and
commercial impression of the full term “VITAMIN-” in Registrant’s mark.
The Trademark Examining Attorney submits an etymological dictionary
definition for “vitamin” showing that it is derived from “Latin vita ‘life,’”5 in support
of her argument that the marks’ similarities stem from Applicant’s and Registrant’s
use of the similarly worded terms “VITAGUM” and “VITAMINGUM.” The Examining
Attorney also submits screen captures from the VitaMist, VitaPerk, VitaForce and
Vitashine websites showing the term “Vita-” used as a prefix for goods containing

5 11/6/2015 Final Office Action, p. 10 from the Online Etymology Dictionary © 2001-2015
Douglas Harper, http://www.etymonline.com/index.php?term=vitamin.
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vitamins and supplements.6 Additionally, screen captures from the Vitabase, Vita-
Web, Vita Living, Vita-Stream and Vita Springs websites are submitted to show
“Vita-” used in connection with the names of online retailers selling vitamins and
supplements.7 In view of the foregoing, the Trademark Examining Attorney contends
that the marketplace commonly uses the term “Vita-” as a shorthand prefix for use
with vitamin-based goods and services, concluding that the commercial impressions
of the marks are similar because consumers are inclined to equate the meaning
behind Applicant’s “VITA-” with Registrant’s “VITAMIN-.”
As supported by the evidence of record, where similar terms or phrases, or similar
parts of terms or phrases, appear in the compared marks, they create a similar overall
commercial impression for identical or closely related goods. See Crocker Nat’l Bank
v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d
sub nom. Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and
COMMUNICASH strikingly similar in appearance, sound and in meaning and since
the marks are used in connection with identical banking services, source confusion is
likely); Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1919 (TTAB
2015) (“We find it likely that, with overlapping services, consumers will perceive

6 11/6/2015 Final Office Action, pp. 11-14, 15-16, 17-20, 21-25 (http://www.vitaminst.com,
http://www.vitaperk.com/pages/smart-your-coffee, https://www.vitaforce.com/, http://
vitashine-d3.com).
7 11/6/2015 Final Office Action, pp. 26, 27-29, 30-38, 39-40, 41-43 (http://www.vitabase.com
/company/about.aspx, https://www.vita-web.com/why-vita-web/, https://www.vitaliving
.com/, http://www.vita-stream.com/index.html, http:// www.vitasprings.com/).
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PMONEY as an abbreviation of POPMONEY.”). Applicant’s mere deletion of a few
letters from those found in Registrant’s mark does not sufficiently distinguish them
to avoid a likelihood of confusion. See, e.g., Ava Enters. v. Audio Boss USA, Inc., 77
USPQ2d 1783 (TTAB 2006) (finding AUDIO BSS USA and design similar in
appearance to BOSS AUDIO SYSTEMS (stylized)); In re Pellerin Milnor Corp., 221
USPQ 558 (TTAB 1983) (finding MILTRON and MILLTRONICS (stylized) to be
highly similar in appearance). Thus, despite the omission of the letters -MIN- from
the middle of Applicant’s mark, Applicant’s mark VITAGUM creates the same
commercial impression as Registrant’s VITAMINGUM mark.
Where the goods of an applicant and cited registrant are identical in part and
otherwise similar or closely related as they are in this case, the degree of similarity
between the marks required to support a finding of likelihood of confusion is not as
great as would be required with diverse goods. In re Viterra Inc., 101 USPQ2d at 1912
(citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992)); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d
1350, 1354 (Fed. Cir. 2004). Thus, Applicant’s mark VITAGUM is similar to
Registrant’s mark VITAMINGUM supporting a likelihood of confusion.
C. Strength or Weakness of the Cited Marks
Another factor in the likelihood of confusion analysis is the relative strength or
weakness of the cited marks. Applicant contends that the cited mark is very weak as
VITAMINGUM is highly descriptive wording as it relates to the goods, i.e., chewing
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gum containing vitamins. Additionally, Applicant notes that “the mark Vitamingum
is registered on the Supplemental Trademark Register.”8 Applicant concludes that
the highly descriptive wording of “Vitamin Gum” in the cited mark greatly minimizes
the likelihood of confusion.9
The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal
Board have recognized that marks deemed “weak” or merely descriptive are still
entitled to protection against the registration by a subsequent user of a similar mark
for closely related goods. See In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB
1982) (“even weak marks are entitled to protection against registration of similar
marks”). Notably, this protection extends to marks registered on the Supplemental
Register. See, e.g., In re Morinaga Nyugyo Kabushiki Kaisha, ___ USPQ2d ___, 2016
WL 5219811 at *5 (TTAB, Serial No. 86338392, September 8, 2016); In re Clorox Co.,
578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978); In re Hunke & Jochheim, 185 USPQ
188, 189 (TTAB 1975).
Therefore, even though Registrant’s mark VITAMINGUM is registered on the
Supplemental Register, a mark registered on the Supplemental Register is “a mark
registered in the Patent and Trademark Office,” and thus may be cited as a bar to
registration under § 2(d) of the Trademark Act. In re Morinaga Nyugyo Kabushiki
Kaisha, 2016 WL 5219811 at *5, citing In re Clorox Co., 198 USPQ at 340; see also
Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1042 (Fed. Cir. 1990)

8 Applicant’s Brief p. 7 (4 TTABVUE 8).
9 Applicant’s Brief p. 7 (4 TTABVUE 8).
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(confirming the Clorox rule that “likelihood of confusion can be found even if a term
is merely descriptive and does not identify source: Registration on the Supplemental
Register is sufficient, and a showing of trade identity rights in the form of secondary
meaning is unnecessary.”). “It is not material whether or not registration on the
Supplemental Register implies that there is a degree of descriptiveness to that mark.
. . . Such registration may be cited under section 2(d) in a determination of likelihood
of confusion, an inquiry separate from that of descriptiveness.” In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 49 (Fed. Cir. 1986). While a highly
suggestive mark — or even a descriptive mark registered on the Supplemental
Register — does not cut a broad swath in the marketplace, it will nonetheless
preclude registration of a similar mark for similar goods if confusion is found to be
likely.
D. Conclusion
When Applicant’s mark VITAGUM and Registrant’s mark VITAMINGUM are
compared in their entireties they are similar in appearance, sound, meaning and
commercial impression. Additionally, the marks are used in connection with goods
that are identical, and that are presumably sold through the same channels of trade
to the same classes of customers. Accordingly, we find that confusion is likely.
Decision: The refusal to register Applicant’s mark VITAGUM under § 2(d) is
affirmed.