Bluebonnet Nutrition Corp.

Trademark Trial and Appeal Board

Sep 26, 2007

No. 78587872 (T.T.A.B. Sep. 26, 2007)

Mailed: September 26, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bluebonnet Nutrition Corp.
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Serial No. 78587872
_______

John S. Egbert of Egbert Law Offices for Bluebonnet
Nutrition Corp.

Karen Bracey, Trademark Examining Attorney, Law Office 116
(Michael Baird, Managing Attorney).
_______

Before Hairston, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Bluebonnet Nutrition Corp. has filed an application to
register on the Principal Register the mark GREEN UTOPIA
(in standard character form) for “nutritional supplements”
in International Class 5.1
Registration has been finally refused under Section

1 Serial No. 78587872, filed on March 15, 2005, which is based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78587872
2
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the mark UTOPIA, which is
registered for a “dietary supplement,”2 as to be likely to
cause confusion.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Considering first the similarity of the goods,
applicant does not dispute that its identified “nutritional
supplements” are legally identical to the “dietary

2 Registration No. 2926406, issued February 15, 2005.
Ser No. 78587872
3
supplement” in the cited registration. This du Pont factor
therefore favors a likelihood of confusion. Further,
because nutritional supplements and a dietary supplement
are legally identical, the channels of trade and purchasers
are legally identical. Thus, the du Pont factors of
similarity of trade channels and purchasers also favor a
likelihood of confusion.
Considering next the marks, the examining attorney
contends that applicant’s mark GREEN UTOPIA is similar to
registrant’s mark UTOPIA due to the shared term UTOPIA.
The examining attorney argues that the additional term
GREEN is not sufficient to distinguish the marks because it
will be viewed by purchasers as simply indicating that
applicant’s particular nutritional supplements contain
nutrients from green vegetables. In support of her
position, the examining attorney submitted a definition of
the word “green” meaning “[m]ade with green or leafy
vegetables.”3
Applicant, on the other hand, contends that the
addition of the word GREEN to the word UTOPIA is sufficient
to distinguish applicant’s mark from registrant’s mark when
the marks are viewed side-by-side; and that marks

3 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
Ser No. 78587872
4
consisting of or containing the word UTOPIA are weak marks
which are therefore entitled to only a limited scope of
protection.
With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is 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 1975). Finally, “[w]hen marks would appear
on virtually identical goods or services, the degree of
Ser No. 78587872
5
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Applying these principles in this case, we find that
applicant’s mark is similar to registrant’s mark in sound,
appearance, connotation and commercial impression.
The marks involved here share the common word UTOPIA, with
applicant simply adding the word GREEN thereto. This
difference in the marks does not serve to distinguish the
marks. Due to the shared term UTOPIA, there are consequent
similarities in sound, appearance and connotation in
applicant’s and registrant’s marks. With respect to
connotation, in particular, applicant argues that its GREEN
UTOPIA mark invokes a “special meaning” of “green
vegetables creating harmony in the body,” while
registrant’s UTOPIA mark suggests “perfect harmony.
(Applicant’s brief at 4). We recognize that the addition
of the term GREEN in applicant’s mark gives this mark an
extra connotation that is not present in the registrant’s
mark. However, we find that this point of difference is
not sufficient to distinguish the marks. Rather, when
applicant’s mark and registrant’s mark are considered in
their entireties, the marks engender sufficiently similar
Ser No. 78587872
6
commercial impressions that if the identical goods involved
in this case are offered thereunder, confusion as to source
would be likely to occur among consumers. Consumers
familiar with registrant’s UTOPIA dietary supplement are
likely to view GREEN UTOPIA as identifying a new line of
nutritional supplements made with dried/dehydrated green
vegetables originating from registrant. We find this
especially to be the case with the current focus on the
health benefits of green vegetables. Thus, the du Pont
factor of the similarity of the marks favors a likelihood
of confusion.
Applicant contends that marks consisting of or
containing the word UTOPIA are weak marks which are
therefore entitled to a limited scope of protection.
Specifically, applicant maintains that the term UTOPIA is
so frequently used in marks that even slight differences
between the marks may be deemed sufficient to avoid a
finding that confusion is likely. While applicant states
that a search of the USPTO TESS database retrieved
approximately 200 UTOPIA registrations and applications,
applicant failed to make any of these registrations or
applications of record. Thus, we are unable to give
meaningful consideration to applicant’s argument. In
particular, there is no evidence that UTOPIA marks have
Ser No. 78587872
7
been so commonly adopted for their asserted suggestive
significance in the field of dietary/nutritional
supplements that purchasers would be expected to look to
other portions of such marks as the distinguishing elements
thereof. In any event, even if marks which consist of or
contain the word UTOPIA are considered to be weak, due to
an assertedly high degree of suggestiveness conveyed by
such term, even weak marks are entitled to protection where
confusion is likely. Here, notwithstanding any alleged
weakness in the term UTOPIA, for the reasons discussed,
applicant’s mark is still similar in sound, appearance,
connotation and commercial impression to registrant’s mark.
Finally, applicant argues that confusion is unlikely
because consumers exercise greater care when purchasing
health products such as dietary/nutritional supplements.
The fact that consumers are conscious of health and
nutritional matters, however, does not necessarily mean
that they are immune from source confusion, particularly
where as here, identical goods would be offered under
similar marks. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
In view of the foregoing, we conclude that purchasers
and prospective customers, familiar with the registered
mark UTOPIA for a dietary supplement, would be likely to
believe, upon encountering the similar mark GREEN UTOPIA
Ser No. 78587872
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for applicant’s nutritional supplements, that such
identical goods emanate from or are associated with or
sponsored by the same source.
Decision: The refusal to register under Section 2(d)
is affirmed.