Diet Fitness Corp..

Trademark Trial and Appeal Board

Nov 26, 2001

No. 75669021 (T.T.A.B. Nov. 26, 2001)

11/26/01

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Diet Fitness Corporation
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Serial No. 75/669,021
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Laura J. Zeman for Diet Fitness Corporation.

Jennifer Stiver Chicoski, Trademark Examining Attorney,
Law Office 115 (Thomas B. Vlcek, Managing Attorney).
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Before Hanak, Hohein and Holtzman, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge.

Diet Fitness Corporation (applicant) seeks to
register ARIZONA MAGIC in typed drawing form for “vitamin
and mineral supplements.” The intent-to-use application
was filed on March 26, 1999. In the first Office Action,
the Examining Attorney required that applicant disclaim
the “exclusive right to use ARIZONA because it is
geographically descriptive of applicant’s goods.” In
response, applicant complied with this disclaimer
requirement.
Citing Section 2(d) of the Trademark Act, the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Examining Attorney has refused registration on the basis
that applicant’s mark ARIZONA MAGIC, as applied to
vitamin and mineral supplements, is likely to cause
confusion with four
Ser. No. 75/669,021

marks previously registered to the same entity. The
first
three marks are word and design marks registered for
garlic caplets. Registration Nos. 1,844,050; 1,844,051
and 1,863,449. These three marks are reproduced below.
In each of these three registrations, registrant
disclaimed the exclusive right to use ARIZONA NATURAL.

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Ser. No. 75/669,021

The fourth cited mark is ARIZONA NATURAL in typed
drawing form for “dietary supplements, namely, vitamin,
mineral and herbal supplements.” Registration No.
2,126,873. In this registration, registrant disclaimed
the exclusive right to use the word NATURAL.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the marks and the similarities of the
goods or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Obviously, of the four registered marks, applicant’s
mark ARIZONA MAGIC is most similar to the fourth
registered mark, namely, ARIZONA NATURAL. In addition,
applicant’s goods (vitamin and mineral supplements) are
encompassed by the goods for the ARIZONA NATURAL
registration (dietary supplements, namely, vitamin,
mineral and herbal supplements). Hence, we will confine
our likelihood of confusion analysis to a comparison of
applicant’s mark ARIZONA MAGIC and registrant’s mark
ARIZONA NATURAL.
To state the obvious, the only element common to
both marks is the term ARIZONA. However, the Examining
Attorney has stated that the term ARIZONA “is
geographically
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Ser. No. 75/669,021

descriptive” as applied to vitamin and mineral
supplements and therefore cannot be exclusively
appropriated by any one entity. (Office Action No. 1 page
4). However, in her brief at page 5 the Examining
Attorney takes a somewhat different approach by arguing
that “registrant has taken steps in securing exclusive
rights to the term ARIZONA.” The Examining Attorney
bases her argument on the fact that the registration for
ARIZONA NATURAL was obtained pursuant to the provisions
of Section 2(f) of the Trademark Act, and the fact that
this registration contains a disclaimer of simply the
term NATURAL.
What the Examining Attorney fails to fully
appreciate is that in securing a registration of ARIZONA
NATURAL pursuant to Section 2(f), registrant demonstrated
that the term ARIZONA NATURAL in its entirety had become
distinctive of applicant’s dietary supplements. The
registration of ARIZONA NATURAL in no way established
that registrant has exclusive rights to the term ARIZONA
per se for dietary supplements.
In comparing marks, we are obligated to compare the
marks in their entireties, including any matter which is
descriptive or geographically descriptive. American Home
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Ser. No. 75/669,021

Products v. B.F. Ascher, 473 F.2d 903, 176 USPQ 532, 533
(CCPA 1973). However, having said the foregoing, in
comparing two marks, it is quite natural to give less
weight to the common geographically descriptive portion
of these marks which, in this case, is ARIZONA. When we
compare the remaining portion of applicant’s mark (MAGIC)
with the remaining portion of the registered mark
(NATURAL), we find that these two words are very
different in terms of visual appearance, pronunciation
and meaning.
In sum, we find that considered in their entireties,
the marks ARIZONA MAGIC and ARIZONA NATURAL are
dissimilar enough such that their use on identical goods
(vitamin and mineral supplements) is not likely to result
in confusion. In making this determination, we accept
applicant’s argument that even ordinary consumers
exercise a higher level of care when selecting products
which have a direct bearing on their health, such as
vitamin and mineral supplements. Indeed, at page 8 of
her brief the Examining Attorney also accepts this
proposition. However, the Examining Attorney then goes
on to make the rather unusual statement that “care and
caution with regard to what one ingests is not an issue
when considering whether or not purchasers could
mistakenly
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believe that the goods emanate from a common source.” We
simply do not understand the reasoning of the Examining
Attorney. When consumers exercise a higher level of care
and caution in selecting any type of product, including
vitamin and mineral supplements, these consumers are more
likely to notice differences in the trademarks appearing
on these products. Thus, a consumer concerned with his
or her health and exercising care and caution in
selecting vitamin and mineral supplements would be quite
likely to notice the differences in the marks ARIZONA
MAGIC and ARIZONA NATURAL.
Decision: The refusal to register is reversed.

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