Health Plus, Inc.v.Tran Enterprises, LLC

Trademark Trial and Appeal Board

Jul 12, 2011

No. 91190785 (T.T.A.B. Jul. 12, 2011)

Mailed: July 12, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Health Plus, Inc.
v.
Tran Enterprises, LLC
_____

Opposition No. 91190785
to application Serial No. 77710866
_____

C. Dennis Loomis and Karen Law of Baker and Hostetler, LLP
for Health Plus, Inc.

Lan Q. Ngo of Ngo Law PLLC for Tran Enterprises, LLC.
______

Before Seeherman, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On April 9, 2009 applicant, Tran Enterprises, LLC,
filed an application to register on the Principal Register
the standard character mark COLON CLEANSE MOVE IT, based
upon its assertion of a bona fide intent to use the mark in
commerce for “dietary food supplements,” in International
Class 5.1

1 Application Serial No. 77710866. Applicant has disclaimed
“COLON CLEANSE.”

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91190785
2
Registration has been opposed by Health Plus, Inc.
(“opposer”). As grounds for opposition, opposer asserts
that it is the owner of the following family of famous COLON
CLEANSE marks, previously used and registered on the
Principal Register:
COLON CLEANSE (typed drawing)2
for “bulk forming fiber laxative” in International Class 5;3
SUPER COLON CLEANSE DAY (typed drawing) for “vitamins,
nutritional supplements and herbal supplements for use as
beauty aids” in International Class 5;4
SUPER COLON CLEANSE (typed drawing)
for “vitamins, nutritional supplements and herbal
supplements for use as beauty aids” in International Class
5;5 and
SUPER COLON CLEANSE NIGHT (typed drawing) for
“vitamins, nutritional supplements and herbal supplements
for use as beauty aids” in International Class 5.6

2 Marks displayed in typed drawing form currently are referred to
as being displayed in “standard characters.”
3 Registration No. 1600268 issued on June 12, 1990. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Second
renewal.
4 Registration No. 2337303 issued on April 4, 2000 with a
disclaimer of SUPER and DAY. Section 8 affidavit accepted;
Section 15 affidavit acknowledged. First renewal.
5 Registration No. 2337304 issued on April 4, 2000 with a
disclaimer of SUPER. Section 8 affidavit accepted; Section 15
affidavit acknowledged. First renewal.
6 Registration No. 2339827 issued on April 11, 2000 with a
disclaimer of SUPER and NIGHT. Section 8 affidavit accepted;
Section 15 affidavit acknowledged. First renewal.
Opposition No. 91190785
3
Opposer alleges that it has made use of its COLON
CLEANSE marks in connection with the above listed goods
since prior to any date of first use upon which applicant
may rely; and that applicant’s mark, when used in connection
with applicant’s goods, so resembles opposer’s family of
COLON CLEANSE marks for its recited goods as to be likely to
cause confusion, to cause mistake, and to deceive. Opposer
further alleges that its COLON CLEANSE marks are famous and
became famous long prior to applicant’s acquisition of any
rights in its involved mark; and that use by applicant of
its involved mark is likely to cause dilution of the
distinctive quality of opposer’s famous COLON CLEANSE marks.
Applicant, in its informal answer, generally denies the
salient allegations contained in the notice of opposition
and presents arguments which are construed as amplifications
of such denials.
The Record
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case consists of the pleadings and the
file of the involved application. In addition, during its
assigned testimony period opposer submitted the testimony
depositions, with exhibits, of its chief operating officer
and vice president, Mr. Sunil Kohli; its legal counsel, Ms.
Shelly Kohli; and the chief executive officer of third-party
health food and nutritional supplement companies BNG
Opposition No. 91190785
4
Enterprises and Fusion Formulations LLC, Mr. Bradley
Grossman. In addition, opposer submitted a notice of
reliance upon two printed articles.
During its assigned testimony period, applicant
submitted the testimony deposition, with exhibits, of its
president, Mr. Bau Tran.7
Only opposer filed a brief.
Opposer’s Standing and Priority of Use
Because opposer has properly made its four pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registrations are of record, Section 2(d) priority is not an
issue in this case as to the marks and goods covered in
those registrations. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

7 Opposer’s evidentiary objections to an exhibit introduced by
applicant during the cross-examination of Mr. Kohli and the
direct examination of Mr. Tran are noted. However, the exhibit
sought to be excluded is not outcome determinative. Given this
fact, we see no compelling reason to discuss the objections in a
detailed fashion. Suffice it to say, we have considered all of
the testimony and exhibits submitted by the parties. In doing
so, we have kept in mind the objections raised by opposer, and we
have accorded whatever probative value the subject testimony and
exhibits merit.

Opposition No. 91190785
5
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Family of Marks
Opposer has pleaded and argues that it owns a family of
COLON CLEANSE marks for the goods recited in its pleaded
registrations. However, the requisite showing of a family
of marks has not been made. The fact that opposer has used
and registered several marks incorporating the wording COLON
CLEANSE is not in itself sufficient to establish the
existence of a family of marks. See J & J Snack Foods Corp.
v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed.
Cir. 1991). As stated by the Court: “There must be a
recognition among the purchasing public that the common
characteristic is indicative of a common origin of the
goods.” J & J Snack Foods, supra at 1891. Accordingly,
opposer must demonstrate that the marks asserted to comprise
Opposition No. 91190785
6
the family, or a number of them, have been used and
advertised in promotional material or in everyday sales
activities in such a manner as to create common exposure and
thereafter recognition of common ownership based upon a
feature common to each mark. See Truescents LLC v. Ride
Skin Care LLC, 81 USPQ2d 1334 (TTAB 2006) citing American
Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457, 461
(TTAB 1978).
In this case, however, opposer has not submitted
sufficient evidence that it has promoted its COLON CLEANSE
marks together to the public. In that regard, opposer’s
evidence consists of copies of labels attached to its goods
and what appear to be proofs for printed advertisements
therefor,8 as well as very limited testimony in support
thereof.9 While this evidence supports a finding that
opposer tends to market goods under its COLON CLEANSE and
SUPER COLON CLEANSE marks together, opposer has only
introduced copies of three proofs for advertisements in
which its pleaded SUPER COLON CLEANSE DAY and SUPER COLON
CLEANSE NIGHT marks appear together or with its other marks.
Further, opposer has only provided cursory testimony,
lacking details regarding the manner and extent to which its
pleaded marks are marketed together to create common

8 Sunil Kohli Testimony, p. 15-16, Exhibits 5-31.
9 Id., and Bradley Testimony, p. 11.
Opposition No. 91190785
7
exposure thereto among consumers and recognition of common
ownership based upon the COLON CLEANSE feature. See
Truescents, supra. In short, there simply is insufficient
evidence of public exposure to opposer’s marks in such a
manner that demonstrates recognition of common ownership
thereof.
Therefore, we will determine the issue of likelihood
of confusion based on the individual marks that are the
subject of opposer’s pleaded registrations. In our
analysis, we will concentrate our discussion of the issue of
likelihood of confusion on the registration of opposer’s for
the mark most similar to that of applicant, namely,
Registration No. 1600268 for the mark COLON CLEANSE in typed
form for “bulk forming fiber laxative” in International
Class 5.
Fame of Opposer’s COLON CLEANSE Mark
We turn next to the fifth du Pont factor, which
requires us to consider evidence of the fame of opposer’s
COLON CLEANSE mark and to give great weight to such evidence
if it exists. See Bose Corp. v. QSC Audio Products Inc.,
293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc.
v. Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); and
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992).
Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
Opposition No. 91190785
8
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456, and “[f]amous marks
thus enjoy a wide latitude of legal protection.”
Id. This is true as famous marks are more
likely to be remembered and associated in the
public mind than a weaker mark, and are thus
more attractive as targets for would-be
copyists. Id. Indeed, “[a] strong mark … casts
a long shadow which competitors must avoid.”
Kenner Parker Toys, 963 F.2d at 353, 22 USPQ2d
at 1456. A famous mark is one “with extensive
public recognition and renown.” Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d at
1305.
Upon careful review of the record in this case, we are
not persuaded that opposer’s COLON CLEANSE mark is famous.
It is the duty of a plaintiff asserting that its mark is
famous to clearly prove it.
In support of the claim that its COLON CLEANSE mark is
famous, opposer has testified and introduced evidence of the
following: it has used COLON CLEANSE continuously since at
least 1988 in connection with the goods recited in its
pleaded registrations;10 between 2002 and September 2009,
opposer sold over $54 million worth of goods under the COLON
CLEANSE mark;11 opposer advertises in such general
circulation magazines as Readers Digest, Oprah, Redbook, and
Health, and on such nationally broadcast television shows as
Wheel of Fortune, Jeopardy, Oprah, and Entertainment

10 Sunil Kohli Testimony, p. 9-15.
11 Sunil Kohli Testimony, Exhibit 35.
Opposition No. 91190785
9
Tonight;12 opposer further has promoted its COLON CLEANSE
mark at between 12 and 20 trade shows annually since 1986;13
opposer has spent over $1 million on trade advertising alone
between 2002 and 2009;14 in 2010, opposer spent
approximately $57,000 on advertisements with its
distributors and $500,000 on advertisements in trade
magazines for retailers such as Whole Foods, Vitamin
Retailer and Natural Products Marketplace as well as the
consumer magazines Taste for Life and Natural Solutions;15
in 2008, these advertisements and opposer’s Internet
advertisements resulted in over one billion consumer
impressions;16 opposer’s COLON CLEANSE products have been
discussed by third parties in articles appearing in Remedies
for Life, Chain Drugstore Marketplace and Vitamin
Retailer;17 and representatives of health food stores such
as General Nutrition Center recommend opposer’s COLON
CLEANSE products.18
This testimony and evidence demonstrates that opposer
has expended a great deal of effort in marketing its goods
under its COLON CLEANSE mark, has enjoyed considerable

12 Sunil Kohli Testimony, p. 29-30, Exhibit 35.
13 Id.
14 Sunil Kohli Testimony, Exhibit 32.
15 Sunil Kohli Testimony, p. 35-38, Exhibits 33, 34.
16 Sunil Kohli Testimony, p. 29-30, Exhibit 34.
17 Sunil Kohli Testimony, p. 18, Exhibit 11; Notice of Reliance
Exhibits A, B.
18 Bradley Testimony, p. 14-16.

Opposition No. 91190785
10
success for its efforts, and has received media recognition
at least in trade and niche publications in its field.
However, such evidence falls short of demonstrating the
extent to which such efforts and recognition translate into
widespread recognition of the COLON CLEANSE mark among the
general public. In addition, opposer’s annual sales and
advertising figures are very low, compared to annual
advertising figures for other marks we have found to be
famous. See, for example, Motion Picture Association of
America, Inc. v. Respect Sportswear Inc., 83 USPQ2d 1555
(TTAB 2007)(opposer’s member annually spent 4 billion
dollars on advertisements and promotion).
Accordingly, we find on this record that the evidence
is insufficient to establish that opposer’s COLON CLEANSE
mark is famous for purposes of our likelihood of confusion
determination. Nevertheless, we find that the evidence is
sufficient to show that opposer’s COLON CLEANSE mark has
achieved at least some degree of recognition and strength in
the nutritional supplement market and that the mark is
therefore entitled to a broader scope of protection than
might be accorded a mark with less recognition.19

19 While we have discussed the evidence of fame relating to
opposer’s COLON CLEANSE mark, we also point out that the evidence
regarding opposer’s other marks is insufficient to show that they
are famous.
Opposition No. 91190785
11
Applicant’s Mark and Opposer’s COLON CLEANSE Mark
We turn then to the first du Pont factor, i.e., whether
applicant’s mark and opposer’s COLON CLEANSE mark are
similar or dissimilar when viewed in their entireties in
terms of appearance, sound, connotation and overall
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot, supra. The test, under the first du Pont factor,
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.
In this case, applicant’s COLON CLEANSE MOVE IT mark
wholly incorporates opposer’s COLON CLEANSE mark.20
Likelihood of confusion is often found where the entirety of
one mark is incorporated within another. In re Denisi, 225

20 We note that applicant voluntarily disclaimed the wording
“COLON CLEANSE” in its mark. As the wording of the disclaimer
indicates (i.e., “no claim is made to the exclusive right to use
… apart from the mark as shown” – emphasis added), the disclaimer
of matter in a mark does not have the effect of removing the
matter from the mark. Bordon, Inc. v. W.R. Grace & Co., 180 USPQ
157 (TTAB 1973). Thus, a disclaimer is of no legal significance
in determining likelihood of confusion, rather, the disclaimed
matter must be considered. See Kellogg Co. v. Pack “Em
Enterprises Inc., 14 USPQ 2d 1545 (TTAB 1990); and Glamorene
Products Corporation v. Boyle-Midway, Inc., et. al., 188 USPQ 145
(DCSDNY 1975). Moreover, the public viewing the mark is unaware
of what, if any, portions of a mark may be disclaimed in a
federal registration. See In re National Data Corp., 224 USPQ
749 (Fed. Cir. 1985).

Opposition No. 91190785
12
USPQ 624, 626 (TTAB 1985); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB
1982); and In re South Bend Toy Manufacturing Company, Inc.,
218 USPQ 479, 480 (TTAB 1983).
Moreover, the significance of COLON CLEANSE in
applicant’s mark COLON CLEANSE MOVE IT is reinforced by its
location as the first portion of the mark. Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“it is often the first part of a mark which is most
likely to be impressed in the mind of a purchaser and
remembered”). See also Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers
must first notice the identical lead word). Further,
consumers are often known to use shortened forms of names,
and it is foreseeable that applicant’s goods will be
referred to as COLON CLEANSE. Cf. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) [Rich,
J., concurring: “the users of language have a universal
habit of shortening full names – from haste or laziness or
just economy of words”].
As a result, we find that, taken as a whole,
applicant’s COLON CLEANSE MOVE IT mark and opposer’s COLON
CLEANSE mark are far more similar than dissimilar in
appearance and sound. In addition, the marks convey a sense
Opposition No. 91190785
13
of digestive regularity, both with regard to the common
wording COLON CLEANSE as well as the wording MOVE IT in
applicant’s mark that reinforces the wording COLON CLEANSE
as well as the result that the goods identified under the
marks are intended to achieve. Accordingly, the marks are
similar in connotation and convey highly similar overall
commercial impressions.
In view thereof, this du Pont factor favors opposer.
The Goods
The goods identified in opposer’s Registration No.
1600268 for the mark COLON CLEANSE are identified as a “bulk
forming fiber laxative” in International Class 5.
Applicant’s goods under its mark are identified as “dietary
food supplements,” in International Class 5. We note that
the labels and advertisement proofs for opposer’s goods
identify them as a “dietary supplement.”21 In addition,
applicant has introduced testimony indicating that the
“dietary food supplements” bearing its COLON CLEANSE MOVE IT
mark are intended to promote “bowel movement.”22
In other words, the record in this case supports a
finding that opposer’s narrowly identified “bulk forming
fiber laxative” is a type of dietary supplement, and that
applicant’s more broadly identified “dietary food

21 Sunil Kohli Testimony, p. 15-16, Exhibits 5-31.
22 Tran Testimony, p. 10-13.

Opposition No. 91190785
14
supplements” are in fact intended to be used as a laxative.
We find, therefore, that applicant’s goods under its mark
encompass opposer’s goods under its COLON CLEANSE mark.
In view of the legally identical nature of opposer’s
goods and applicant’s goods, this du Pont factor also favors
opposer.
Channels of Trade
Because we have found that applicant’s identification
of goods encompasses opposer’s goods, and because there are
no recited restrictions as to their channels of trade or
classes of purchasers, we must assume that the goods are or
will be available in all the normal channels of trade to all
the usual consumers of such goods, and that the channels of
trade and the purchasers for the parties’ goods overlap.
See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d
1910 (TTAB 2000). See also Octocom Systems, Inc. v. Houston
Computers Services Inc., supra (“The authority is legion
that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods
set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of
purchasers to which the sales of goods are directed.”) See
also Paula Payne Products v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
Opposition No. 91190785
15
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”)
We find that, as a result of the foregoing, this du
Pont factor also favors opposer.
Applicant’s Intent
Next, opposer points out that applicant has admitted
that its selection of the COLON CLEANSE MOVE IT mark, and
the filing of its involved application, was made with actual
knowledge of opposer, its COLON CLEANSE marks and
businesses. To the extent that opposer is arguing that
applicant adopted its mark in bad faith, there is
insufficient evidence to show or from we which we can infer
this. Mere knowledge of the existence of opposer’s mark
does not, in and of itself, constitute bad faith. See
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d
1563, 10 USPQ 1307 (Fed. Cir 1989) ; Ava Enterprises, Inc.
v. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006). The
record in this case simply does not show that applicant
intentionally sought to trade on opposer’s good will.
Summary
We have carefully considered all of the evidence
pertaining to priority of use and the relevant du Pont
factors, as well as all of the arguments with respect
Opposition No. 91190785
16
thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that opposer has established its standing
to bring this proceeding; its priority of use; and that
consumers familiar with opposer’s goods under its COLON
CLEANSE mark would be likely to believe, upon encountering
applicant’s involved COLON CLEANSE MOVE IT mark for its
recited goods, that the parties’ goods originate with or are
associated with or sponsored by the same entity. In making
our determination, we have balanced the relevant du Pont
factors. In particular, the factors of the similarity
between the marks and the similarity of the goods weigh
strongly in opposer’s favor.
Dilution
Given our determination above that opposer has failed
to prove the fame of its marks for purposes of its
likelihood of confusion claim, opposer cannot show that its
mark is famous for dilution purposes and thus cannot meet
its burden of proving dilution. See Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005); and Coach Services Inc. v.
Triumph Learning LLC, 96 USPQ2d 1600, 1610 (TTAB 2010)(“Fame
for likelihood of confusion and dilution is not the same.
Fame for dilution requires a more stringent showing.”)
Opposition No. 91190785
17
DECISION: The opposition is sustained on the ground of
priority and likelihood of confusion.