Halliday

Trademark Trial and Appeal Board

Feb 27, 2007

No. 76604784 (T.T.A.B. Feb. 27, 2007)

Mailed:
February 27, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Halliday
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Serial No. 76604784
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Marcus P. Dolce of Price, Heneveld, Cooper, DeWitt & Litton
for Michael R. Halliday.

Marilyn D. Izzi, Trademark Examining Attorney, Law Office
112 (Angela Bishop Wilson, Managing Attorney).1
_______

Before Zervas, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 29, 2004, Michael R. Halliday (applicant)
filed an intent-to-use application to register the mark IN
in standard-character form on the Principal Register for
goods identified as “energy drinks; sports drinks” in
International Class 32.

1 A different examining attorney was responsible for this
application prior to the filing of the appeal briefs.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76604784
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The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with the mark shown below in Reg.
No. 2927350 for “snack bars made of grains and containing
soy protein, vitamins and minerals, fruits and nuts” in
International Class 5, and “wholesale, distributorship,
mail order, on-line and retail store services featuring
dietary and nutritional supplements, snack bars, food for
human consumption, personal gifts, beverages, personal and
home hygiene products, books, video and audio cassettes on
nutrition, health and wellbeing” in International Class 35.

The cited registration issued on February 22, 2005. The
registration specifies a date of first use anywhere and a
date of first use in commerce on June 1, 2000 for both
classes.
Applicant argued against the refusal; the Examining
Attorney made the refusal final; and applicant appealed.
Applicant and the Examining Attorney have filed briefs.
We affirm.
Ser No. 76604784
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Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” The opinion in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1977) sets forth the factors we may consider
in determining likelihood of confusion. Here, as is often
the case, the crucial factors are the similarity of the
marks and the similarity of the goods and services of the
applicant and registrant. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
Ser No. 76604784
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the more distinctive elements in the marks. As the Court
of Appeals for the Federal Circuit observed, “…in
articulating reasons for reaching a conclusion on the issue
of confusion, 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant argues that the marks differ in all respects
-– appearance, sound, connotation and commercial
impression. In particular, applicant argues that the
design elements, particularly the vertical line between the
I and N in the registered mark, differentiates the marks in
all respects. Applicant also points out, through use of
the specimen in the registration file, that the letters in
the registered mark correspond to the first letters in the
registrant’s company name, Intelligent Nutrients, Inc.
Applicant argues that the appearance of the company name
with the mark in the specimen affects the meaning or
connotation of the registered mark. Applicant states, “The
marks are so dissimilar in appearance, sound, and meaning
or connotation that, in combination with the differences in
Ser No. 76604784
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the goods discussed below, there is no likelihood of
confusion.” Applicant’s brief at 4.
The Examining Attorney disagrees and states, “The
literal portion of both marks are nearly identical in
appearance, sound and meaning. The addition of the design
element does not obviate the similarity between the marks
in this case.” Examining Attorney’s brief at unnumbered
pages 6 and 7 (citations omitted).
We agree with the Examining Attorney. We find the
design elements, the vertical line and the background
square, insufficient to distinguish the marks.
In comparing the marks, it is improper to engage in a
side-by-side comparison; rather, the emphasis is on the
recollection of the average purchaser who retains a general
rather than a specific impression of trademarks. Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). Furthermore, literal elements are more important
than design features in the perception of marks. In re
Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997).
In this case, we conclude that the letters “IN” are
the dominant elements in both marks, and that, in both
instances, the letters would be perceived as forming the
word “IN.” We reject applicant’s broad, unsupported
Ser No. 76604784
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contention that potential purchasers would perceive the
registered mark as two separate letters and would not see
or pronounce it as the word “IN.” We concur with the
Examining Attorney’s conclusion that potential purchasers
are not likely to perceive the vertical line in a way which
would alter the perception of the literal portion of the
mark as the word “IN.”
We likewise reject applicant’s specific argument that
potential purchasers will see the registered mark as two
letters because registrant’s name, Intelligent Nutrients,
Inc., appears on the specific specimen registrant filed.
Vornado, Inc. v. Breuer Electric Mfg. Co., 390 F.2d 724,
156 USPQ 340, 342 (CCPA 1968)(“. . . the display of a mark
in a particular style is of no material significance since
the display may be changed at any time as may be dictated
by the fancy of the applicant or the owner of the mark.”).
The rights conferred by the registration reside in the mark
as it appears in the registration without regard to other
subject matter which the registrant may elect to use or not
use in a particular display. Therefore, we have not
considered the specimen in reaching our determination in
this case.
Accordingly, we conclude that the marks are similar.
Ser No. 76604784
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The Goods and Services
The goods and services of applicant and registrant
need not be identical to find a likelihood of confusion
under Trademark Act Section 2(d). The goods and services
need only be related in such a way that the circumstances
surrounding their marketing would result in relevant
consumers mistakenly believing that the goods and services
originate from the same source. On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
Furthermore, in comparing the goods and services and
the channels of trade for the goods and services, we must
consider the goods and services as identified in the
application and registration. CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Also, the proper inquiry is not whether the goods and
services could be confused, but rather whether the source
of the goods and services could be confused. Safety-Kleen
Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476,
480 (CCPA 1975); In re Rexel, Inc., 223 USPQ 830, 831 (TTAB
1984).
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Applicant has identified his goods as, “energy drinks;
sports drinks”; the goods and services in the cited
registration are identified as, “snack bars made of grains
and containing soy protein, vitamins and minerals, fruits
and nuts” and “wholesale, distributorship, mail order, on-
line and retail store services featuring dietary and
nutritional supplements, snack bars, food for human
consumption, personal gifts, beverages, personal and home
hygiene products, books, video and audio cassettes on
nutrition, health and wellbeing.”
Applicant argues that his goods are distinct from the
goods and services identified in the cited registration.
He states, “Applicant’s goods are for energy, for assisting
in playing sports and/or for general beverage consumption
similar to soft drinks. Notably sports drinks and energy
drinks are currently marketed along with sodas and other
soft drinks. Contrarily, Registrant’s goods are for long
term nutritional benefits and are typically marketed as
health products.”
On the other hand, the Examining Attorney argues that
the goods and services of applicant and registrant are
related and that they are marketed through the same trade
channels. To support her position, the Examining Attorney
submitted copies of several third-party registrations which
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included both types of goods. For example, those
registrations include the following:
Reg. No. 2971198 for the mark MAXIMUSCLE for goods
including “Medicated nutritional dietary and food
supplements and vitamins in the form of powders,
tablets and capsules, all for body building and sports
nutrition; medicated energy and protein preparations
in the nature of dietary supplements and nutritional
supplements in the form of energy and nutritional
drinks; nutritional meal replacement bars for the
sports market; dietary supplements and nutritional
supplements in the form of weight gain bar for the
sports market; nutritional and energy drinks in the
nature of vitamin and nutritionally fortified water
for sports people and athletes” in International Class
5, “Protein based, nutrient dense snack bars for the
sports market; energy and sports drinks, namely, milk-
based drinks for sports people and athletes” in
International Class 29, “Energy bars in the nature of
candy bars, cereal bars, cereal food bars, granola
snack bars, chocolate based and covered food bars for
the sports market; energy and sports drinks, namely
protein shakes for sports people and athletes” in
International Class 30, and “Energy and sports drinks,
namely herbal drinks in the nature of herbal food
beverages and herbal tea for food purposes, mineral
waters and soft drinks for sports people and athletes”
in International Class 32;

Reg. No. 2770205 for the mark FIRED UP for goods
including “dietary supplements and nutritional
beverages” in International Class 5 and “sports drinks
and preparations for the same” in Interrnational Class
32;

Reg. No. 2903795 for the mark SPORT SAFE for goods
including “dietary drink mix for use as a meal
replacement; dietary food supplements; dietary
supplements; vitamin supplements; mineral supplements;
dietary supplements containing ginseng; and dietary
supplements containing chondroitin; and meal
replacement and dietary supplement drink mixes” in
International Class 5 and “sports drinks and powders
and syrups for making the same; sports drinks
containing ginseng and powders and syrups for making
Ser No. 76604784
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the same; sports drinks containing chondroitin and
powders and syrups for making the same; non-alcoholic
beverages for the replacement of fluids and
electrolytes; protein shakes and energy drinks;
powders and syrups used in the preparation of protein
drinks; and powders and syrups used in the preparation
of energy-electrolyte drinks” in International Class
32;

Reg. No. 2702617 for the mark XHUMAN for goods,
including “Nutritional and dietary supplements” in
International Class 5 and “Mineral waters and aerated
waters and other beverages, namely, flavored waters;
soft drinks; fruit drinks; and fruit juices; powders
and syrups for making soft drinks, fruit drinks, fruit
juices; and sports drinks; and alcoholic beverages,
namely, beer” in International Class 32; and

Reg. No. 2974183 for the mark N MOTION for goods
including “Protein based, nutrient-dense snack bars”
in International Class 29 and “Non-alcoholic beverages
for use by athletes and those engaged in active or
stressful sports and activities, such beverages being,
namely, bottled waters, mineral waters, aerated
waters, carbonated waters, flavored waters, fruit
drinks and fruit juices, flavored sports drinks,
energy drinks, isotonic drinks, hypertonic drinks, and
hypotonic drinks” in International Class 32.

These registrations, and the others submitted by the
examining attorney, are not evidence that the registered
marks are in use, but they are of some probative value and
do indicate that the types of goods and services of
applicant and registrant may emanate from the same source.
In re TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB 2002); In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
Ser No. 76604784
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The third-party registrations contradict applicant’s
unsupported assertion that sports drinks and energy drinks
are totally distinct from nutritional or health foods or
drinks. The evidence indicates that sports and energy
drinks may include nutritional or health drinks. The
evidence indicates further that sports drinks and energy
drinks may be sold under the same marks as nutritional
products, including nutritional supplements and nutritional
bars.
Accordingly we conclude that applicant’s goods and the
goods and services identified in the cited registration are
closely related and that the goods and services of
applicant and registrant could travel through the same
trade channels and reach the same potential purchasers.
Conclusion
Finally, we conclude that there is a likelihood of
confusion between applicant’s mark and the mark in the
cited registration because the marks are similar and the
goods and services of applicant and registrant are closely
related.
Decision: The refusal to register under Trademark Act
Section 2(d) is affirmed.