Your Wellness Today

Trademark Trial and Appeal Board

Apr 23, 2014

No. 85778557 (T.T.A.B. Apr. 23, 2014)

Mailed: April 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Your Wellness Today
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Serial No. 85778557
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Monte Albers de Leon of ADL Enterprises LLC for Your Wellness Today.
Kristina Morris, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
_______

Before Bucher, Mermelstein and Lykos, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

On November 13, 2012, Your Wellness Today (“applicant”) filed an application to
register on the Principal Register the mark displayed below

This Opinion is Not a
Precedent of the TTAB
Serial No. 85778557
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for “providing a website featuring non-downloadable publications in the nature of
articles in the field of health” in International Class 41.1 Applicant has appealed the
Trademark Examining Attorney’s final refusal to register applicant’s 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 registered mark WOMEN’S WELLNESS
TODAY, in standard character format, for “publications, namely, newsletters in the
field of health and nutrition” in International Class 162 that when used on or in
connection with applicant’s identified services, it is likely to cause confusion or
mistake or to deceive.
For the reasons explained below, we affirm the refusal to register.
I. Evidentiary Issues
The examining attorney objects to references to third-party applications and
registrations referenced in applicant’s main brief that were not made of record
during ex parte prosecution. The objection is sustained; it is well settled that the
record must be complete prior to appeal. Trademark Rule 2.142(d). In order to make
third-party registrations or applications properly of record, the offering party should
submit a copy thereof obtained from U.S. Patent and Trademark Office (“USPTO”)

1 Application Serial No. 85778557, filed pursuant to Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), alleging November 1, 2012, as the date of first use anywhere and
January 1, 2013, as the date of first use in commerce. Applicant disclaimed the word
“Wellness” apart from the mark as shown. The description of the mark is as follows: “The
mark consists of ‘Wellness’ in green script written over ‘TODAY’ in grey all caps.” The
colors green and grey are claimed as features of the mark.
2 Registration No. 3497299, registered on September 2, 2008, on the Principal Register with
a disclaimer of WOMEN’S WELLNESS apart from the mark as shown.
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records prior to appeal. See Trademark Trial and Appeal Board Manual of
Procedure (“TBMP”) § 1208.02 (3d ed. rev. 2 June 2013).
In its reply brief, applicant made a request for remand and suspension of the
appeal to make said third-party applications and registrations of record. The
request is denied. As per Board practice,
A request under 37 CFR § 2.142(d) to suspend and remand for additional
evidence . . . must include a showing of good cause therefor (which may
take the form of a satisfactory explanation as to why the evidence was not
filed prior to appeal), and be accompanied by the additional evidence
sought to be introduced. The length of the delay in making the request
after the reason for the remand becomes known, or the point in the appeal
process at which the request for remand is made, will be considered in the
determination of whether good cause exists. Generally, the later in the
appeal proceeding that the request for remand is filed, the stronger the
reason that must be given for good cause to be found.

TBMP § 1207.02 (3d ed. rev. 2 June 2013) (internal citations omitted). Applicant
offers no reason at all why this evidence could not have been submitted while the
application was before the examining attorney or by way of a request for remand
earlier in this appeal. Certainly, seeking to introduce into the record third-party
applications and registrations at this late stage, without any justification provided
for the length of the delay, does not constitute good cause.3
Applicant’s objection to references the examining attorney makes in her brief to
registrant’s new name is overruled. Applicant maintains that its name change
constitutes “new evidence” which generally is excluded on appeal. A change in name

3 In addition to its newly-submitted applications and registrations, applicant also attached
to its reply brief pages printed from several websites. This evidence is also untimely, and
we have not considered it. In re Houston, 101 USPQ2d 1534, 1537 (TTAB 2012).
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or ownership does not constitute new evidence as contemplated within the meaning
of Trademark Rule 2.142(d) or within the purview of Board practice.
II. Likelihood of Confusion
We turn now to the substantive refusal on appeal. 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) (“du Pont”). 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, however, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). These factors and the other relevant du Pont factors are
discussed below.
A. The Goods and Services
First we compare the services identified in applicant’s application vis-à-vis the
goods identified in the cited registration, keeping in mind that the respective goods
and services need only be “related in some manner and/or if the circumstances
surrounding their marketing [be] such that they could give rise to the mistaken
belief that [the goods and/or services] emanate from the same source.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See
also On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
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(Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Applicant argues that the goods and services are distinguishable because
registrant is providing publications, namely a “periodical print newsletter to
approximately [9,500] subscribers” whereas applicant provides “a frequently
updated web site accessible to anyone.” Applicant’s Brief, pp. 6-7. Applicant argues
that “the two paradigms of delivery vastly differ in scope and audience.”
We disagree with applicant, finding that the goods and services are indeed
related. Both applicant and registrant are providing publications in the field of
health, albeit in different formats (applicant’s “non-downloadable publications
offered via a web site” and registrant’s print “newsletter”). Thus, on the basis of the
identification of goods and services alone, we can make a determination that the
involved goods and services are related.
The record further corroborates our finding, showing that publications on the
subject of health, in both print and online format, are commonly offered by the same
entities under the same mark. The examining attorney submitted evidence that the
print magazines offered under the marks “Health,” “Shape,” “Prevention” and
“RealHealth” each provide an online version of their magazine under the same
mark. See March 23, 2013 Final Office Action. In view of the foregoing, the second
du Pont factor favors a finding of likelihood of confusion.
Serial No. 85778557
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B. Trade Channels
Next we consider the third du Pont factor – the similarity or dissimilarity of
established, likely to continue trade channels. Applicant argues that a subscription-
only newsletter falls in a different trade channel than “a website featuring non-
downloadable publications” offered via the Internet, and that it is unlikely that
registrant’s newsletter will in the future be offered in an online website format.
We agree with applicant that at the present time, applicant’s website featuring
non-downloadable publications as compared to registrant’s print newsletters, by
virtue of their intrinsic nature, travel in distinct trade channels. Nonetheless, it is
likely that the same category of consumers are likely to encounter and purchase
both applicant’s and registrant’s publications, given that both subject matters are in
the field of health.
Further, we disagree with applicant’s assumption that registrant’s newsletter is
likely to remain in the ordinary trade channels for print publications. Indeed, as
noted above, the record evidence shows that companies offer publications on the
subject of health in both print and online form. In our digital age, we cannot assume
that registrant will remain content to offer its newsletter in print form and decline
the opportunity to expand its potential consumer base to include an online
publication (whether in downloadable or non-downloadable format) available via an
Internet website. Cf. Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d
1347 (TTAB 2014) (“the logical underpinnings of Conde Nast are equally, if not
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more relevant, in the digital age with the delivery of magazines now also available
via websites and mobile apps”). We therefore deem the third du Pont factor neutral.
C. Conditions of Purchase
We now turn our attention to the fourth du Pont factor, the conditions under
which buyers to whom sales are made i.e., "impulse” versus careful, sophisticated
purchasing. Applicant argues that this factor alone is dispositive because
registrant’s newsletters are only available by paid subscription whereas applicant’s
website services are available to anyone free of charge. In addition, applicant
contends that consumers of registrant’s newsletter are likely to conduct research
and exercise a high degree of care prior to purchasing the newsletter because it is
affiliated with one particular doctor and her medical practice. Applicant asserts
that these conditions of purchase are quite distinct from those of applicant’s services
where such consumers are not obligated to pay for the articles they read online from
multiple sources.
We agree with applicant that, in certain instances, a single du Pont factor may
be dispositive of the issue of likelihood of confusion. See e.g., Kellogg Co. v. Pack'em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). We do not,
however, find that to be the case here. At the outset we note that we must consider
the goods and services as identified in the involved application and registration and
not based on extrinsic evidence. While perhaps it is true that registrant’s
newsletters are actually only available via a paid subscription and promoted in
conjunction with one specific doctor and her medical practice, this is not reflected in
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the identification of goods. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
__ F.3d __, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). See also Octocom Sys., Inc. v.
Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Because the registrant’s newsletters as identified in the registration contain no
restrictions regarding purchasers or price, we cannot find that consumers of
registrant’s goods would make a careful, deliberate purchasing decision. In view
thereof, we find this factor to be neutral.
D. Comparison of the Marks
We now consider the du Pont likelihood of confusion factor regarding the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (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
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, 101
USPQ2d at 1721. That being said, our analysis cannot be predicated on dissection of
the involved marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). Rather, we are obliged to consider the marks in their entireties. Id.
See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
Serial No. 85778557
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confusion”). In fact, 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 a consideration of the marks in their entireties. In re
National Data Corp., 224 USPQ at 751.
Applicant contends that the registered mark, WOMEN’S WELLNESS TODAY,
is dissimilar because it denotes a focus on women. In addition, applicant argues
that because its applied-for mark WELLNESS TODAY appears in distinct
stylization, it is visually different in appearance from the “plain text” of registrant’s
mark. Applicant’s Brief, pp. 5-6. Applicant asserts that the examining attorney
improperly dissected the marks in overlooking the stylization of its mark.
Applicant’s and registrant’s marks are comprised, either in whole or in part, of
the literal element “Wellness Today” which we find to be the dominant portion of
each mark. We observe that registrant’s mark begins with the word “WOMEN’S.”
Nonetheless, we do not view this distinction as obviating the similarities in the
marks. To the contrary, we find that applicant overemphasizes the effect of the
addition of the term WOMEN’S in registrant’s mark since it is more likely that
prospective consumers will overlook this distinction and instead confuse the marks
as identifying the publications as originating from the same source. This is because
prospective consumers acquainted with applicant’s line of WELLNESS TODAY
publications are likely to view registrant’s mark WOMEN’S WELLNESS TODAY as
an extension of applicant’s publications into the field of women’s health.
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We further find that the phrase “Wellness Today” as applied to both applicant’s
and registrant’s goods and services has no other meaning other than signaling to
the consumer that the subject matter of both publications pertain to “wellness” or
“health.”4 As such, both applicant’s and registrant’s marks have a similar
connotation as applied to their respective publications offered in online and print
format, with the slight difference that registrant’s focus falls in the narrower
category of women’s health issues.
It also appears that applicant misapprehends the significance of the fact that the
registrant’s mark WOMEN’S WELLNESS TODAY is registered in standard
character format. A mark in standard characters may be displayed in any lettering
style; the rights reside in the wording or other literal element and not in any
particular display. Trademark Rule 2.52(a). As such, registrant’s mark must be
construed to encompass the words WOMEN’S WELLNESS TODAY in any type of
stylization, including a manner of display identical to that of applicant’s mark.
Thus, applicant cannot avoid a likelihood of confusion by depicting its mark in a
stylized format. See, e.g., Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ
937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type
style is not viable where one party asserts rights in no particular display”); In re
Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods.
Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).

4 “Wellness” is defined as “physical, mental, and emotional health, usually including a
healthy way of living such as good diet and exercise.” www.macmillandictionary.com
(March 15, 2013 Office Action).
Serial No. 85778557
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We therefore find that applicant’s and registrant’s marks are highly similar in
appearance, sound, connotation and commercial impression. This first du Pont
factor weighs in favor of finding a likelihood of confusion.
E. Scope of Protection
The sixth du Pont factor requires consideration of any evidence pertaining to the
number and nature of similar marks in use in the marketplace in connection with
similar goods. Applicant argues that the term “wellness” is weak pointing to a
single website showing use of the term “wellness.” Such evidence falls short of
establishing that the word “wellness” is commonly used in connection with
applicant’s and registrant’s online and print publications. We acknowledge that the
term “wellness” as applied to both applicant’s and registrant’s publications are
merely descriptive. However, neither mark at issue is for the word WELLNESS
alone. But even if it could be argued that opposer’s mark is weak as a whole, weak
marks are still entitled to protection against the registration by a subsequent user
of a similar mark for closely related goods or services. In re Colonial Stores, Inc.,
216 USPQ 793, 795 (TTAB 1982). Accordingly, we deem this sixth du Pont factor
neutral.
F. Contemporaneous Use without Actual Confusion
Lastly, we consider the eighth du Pont factor, the length of time during and
conditions under which there has been concurrent use without evidence of actual
confusion. Applicant argues that it is unaware of any instances of actual confusion.
“The fact that an applicant in an [ex parte] case is unaware of any instances of
Serial No. 85778557
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actual confusion is generally entitled to little probative weight in the likelihood of
confusion analysis, inasmuch as the Board in such cases generally has no way to
know whether the registrant likewise is unaware of any instances of actual
confusion … .” In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). See also In
re Majestic Distilling Company, Inc., 65 USPQ2d at 1205 (“A showing of actual
confusion would of course be highly probative, if not conclusive, of a high likelihood
of confusion. The opposite is not true, however. The lack of evidence of actual
confusion carries little weight”). In addition, “uncorroborated statements of no
known instances of actual confusion are of little evidentiary value.” Id. Accordingly,
this eighth du Pont factor is deemed neutral.
To the extent that there are any other relevant du Pont factors, we treat them as
neutral.
After considering all of the evidence of record and argument pertaining to the
du Pont likelihood of confusion factors, we find that because the marks are similar
in sound, appearance, connotation and commercial impression, and because the
involved goods and services are related and directed towards the same purchasers,
confusion is likely between applicant’s mark for its identified online publications
and the mark in the cited registration.
DECISION: The refusal to register under Section 2(d) is affirmed.