Health Ventures Partnersv.Jason E. Evans

Trademark Trial and Appeal Board

Sep 24, 2008

No. 92045171 (T.T.A.B. Sep. 24, 2008)

Oral Hearing: Mailed: September 24, 2008
August 19, 2008 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Health Ventures Partners

v.

Jason E. Evans
_____

Cancellation No. 92045171
_____

Manny D. Pokotilow and Salvatore Guerriero of Caesar,
Rivise, Bernstein, Cohen & Pokotilow, Ltd. for Health
Ventures Partners.

Jason E. Evans, pro se.
______

Before Hairston, Rogers and Taylor, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Health Ventures Partners (Petitioner) filed a petition
to cancel the registration issued to Jason E. Evans
(Respondent) for the mark NATURE’S CORE in standard
character form for “nutritional supplements, namely, vitamin
and mineral supplements, protein powders and herbal
supplements excluding nutritional supplements for use in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 92045171
2
connection with skin care, beauty care, hair care and
homeopathic treatment” in International Class 5.1
Petitioner alleges that since 1997 it has used the mark
NATURE’S CODE for vitamins and nutritional supplements; and
that respondent’s mark, when applied to respondent’s goods,
so resembles petitioner’s mark, as to be likely to cause
confusion. Petitioner pleaded ownership of Registration No.
2177582 (Issued on July 28, 1998; renewed) for the mark
NATURE’S CODE for “vitamins and nutritional supplements” in
International Class 5.
Respondent, in his answer, has denied the allegations
of the petition to cancel which are essential to
petitioner’s Section 2(d) claim.
Before outlining the evidence in this case, we must
discuss two preliminary matters. We note that respondent,
in his brief on the case, indicates that he was under the
impression that petitioner’s responses to respondent’s
interrogatories and requests for admissions were
automatically of record in this case. Respondent is
mistaken in this regard inasmuch as Trademark Rule

1 Registration No. 2859888; issued on July 6, 2004.

Opposition No. 92045171
3
2.120(j) provides that responses to interrogatories and
requests for admissions may be made of record by notice of
reliance during the testimony period of the offering party.
In other words, it was incumbent upon respondent to make
these materials of record by notice on reliance during his
testimony period. Having failed to do so, such materials
are not part of the record in this case. So as to be
perfectly clear, to the extent that respondent’s brief
includes statements of fact that are not based on evidence
properly of record, such statements have been given no
consideration by the Board in reaching our decision herein.
In addition, we note that respondent, for the first
time in his brief on the case, asserts that petitioner is
guilty of laches. Respondent’s assertion of laches is
untimely because laches is an affirmative defense which must
be made by way of an affirmative pleading in the answer or
by way of motion under Trademark Rule 2.133. See Trademark
Board Manual of Procedure (TBMP) §311.02 (2d ed. rev. 2004).
Moreover, to prevail on the affirmative defense of laches, a
respondent must establish that there was undue or
unreasonable delay by petitioner in asserting its rights,
and prejudice to respondent resulting from the delay.
Bridgestone/Firestone Research Inc. v. Automobile Club de
l’Quest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed.
Cir. 2001). Suffice it to say that, even if laches had been
Opposition No. 92045171
4
pleaded as an affirmative defense, respondent has not
demonstrated that petitioner’s claim is barred by laches.
The record consists of the pleadings; the registration
sought to be cancelled; and the testimony deposition (with
exhibits) of Richard E. Yoegel, director of merchandising
for QVC, the exclusive licensee of petitioner’s goods.
Petitioner submitted notices of reliance on a certified copy
of its pleaded registration showing that such registration
is subsisting and is owned by petitioner, and respondent’s
responses to petitioner’s Interrogatory No. 2 and Requests
for Admission Nos. 1, 26, 27 and 34.
Respondent did not take testimony or submit any other
evidence herein.
Briefs have been filed and an oral hearing was held.
Priority of use is not an issue in this proceeding
inasmuch as petitioner has proven that, as noted above, its
pleaded registration is subsisting and is owned by
petitioner. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Petitioner’s
ownership of this registration also serves to establish its
standing to bring this proceeding. 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).
Opposition No. 92045171
5
Our likelihood of confusion determination is based on
an analysis of all of the probative facts in evidence that
are relevant to the likelihood of confusion factors set
forth in In re E. I. duPont de Nemours and Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). The duPont factors deemed
relevant in this proceeding are discussed below.
We consider first the duPont factor of fame.
Petitioner contends that its mark is a strong mark and is
entitled to a broad scope of protection. So as to be clear
on this point, petitioner has not claimed that its mark is
“famous” as contemplated by case law.
The evidence supporting the strength of petitioner’s
mark includes petitioner’s continuous use of the NATURE’S
CODE mark for ten years; sales of more than 4.5 million
units of nutritional supplements with revenues totaling $188
million; 14,000 minutes of airtime featuring petitioner’s
products on the QVC home shopping television program which
represents $30 million in advertising, and advertising on
other television programs and in publications.
Although this evidence demonstrates that petitioner has
achieved a degree of success with its NATURE’S CODE brand,
the length of use of the mark, and the sales figures and
advertising are not so impressive that we are persuaded that
petitioner’s mark is entitled to more than the normal scope
of protection.
Opposition No. 92045171
6
We turn next to the duPont factors of the similarity or
dissimilarity of the parties’ goods, and the trade channels
and buyers to whom sales are made. It is well settled that
in determining the issue of likelihood of confusion, we must
consider the description of goods set forth in the
petitioner’s registration and the registration sought to be
cancelled, regardless of what the record may reveal as to
the particular nature of the goods at issue, their trade
channels, or the classes of purchasers to whom sales are
made. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973).
In this case, the “vitamins and nutritional
supplements” identified in petitioner’s registration
encompass the “nutritional supplements, namely, vitamin and
mineral supplements, protein powders and herbal supplements
excluding nutritional supplements for use in connection with
skin care, beauty care, hair care and homeopathic treatment”
identified in respondent’s registration. Thus, the goods of
the parties are legally identical.
Moreover, where as here, the goods are identical, we
must presume that the goods move in all channels of trade
that are normal for such goods and that they may be sold to
all the usual classes of purchasers for such goods. Miles
Opposition No. 92045171
7
Laboratories v. Naturally Vitamin Supplements, 1 USPQ2d 1445
(TTAB 1987).
Although the record shows that petitioner’s goods are
marketed primarily on the QVC home shopping television
channel and the Internet, this is not reflected in the
identification of goods in petitioner’s registration. We
must conclude, therefore, that respondent’s nutritional
supplements and petitioner’s vitamins and nutritional
supplements move in some of the same channels of trade
(e.g., health food stores and drug stores) and are sold to
same class of purchasers, namely, ordinary consumers.
With respect to the duPont factor of the conditions
under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful sophisticated purchasing, the record
shows that certain of petitioner’s vitamins and nutritional
supplements are relatively low-priced (e.g. a bottle of 100
Enteric-Coated Fish Oil Concentrate soft gels sells for
$19.57 and a bottle of 90 24-Hour Allergy Relief tablets
sells for $18.00). Also, we note that respondent admitted
that his nutritional supplements are low-priced products and
subject to impulse buying. (Response to Request for
Admission Nos. 26-27). The Court of Appeals for the Federal
Circuit has held that “[w]hen the products are relatively
low-priced and subject to impulse buying, the risk of
likelihood of confusion is increased because the purchasers
Opposition No. 92045171
8
of such products are held to a lesser standard of purchasing
care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1899 (Fed. Cir. 2000).
We next turn to the duPont factor focusing on the
similarity or dissimilarity of the marks. We must consider
the marks in their entireties in terms of appearance, sound,
meaning and commercial impression. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.2d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties 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. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, where, as in this case, the marks appear
on identical goods, the degree of 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 (Fed. Cir. 1992).
Respondent argues that the marks NATURE’S CORE and
NATURE’S CODE do not look or sound alike; that the two marks
have different meanings; and that the only feature common to
Opposition No. 92045171
9
the two marks is the word NATURE’S, which as applied to the
goods involved in this case, is highly suggestive.
We find that when respondent’s mark NATURE’S CORE and
petitioner’s mark NATURE’S CODE are considered in their
entireties, the overall similarities in the marks far
outweigh their differences. Each mark consists of the term
NATURE’S followed by a one-syllable term which differs by
only a single letter; CORE in the case of respondent’s mark
and CODE in the case of petitioner’s mark. The marks have
the same number of letters and syllables, and the words in
the marks are the same length. The result is that the marks
NATURE’S CORE and NATURE’S CODE are similar in appearance
and sound.
With respect to meaning, we recognize that the words
CORE and CODE added to the identical term NATURE’S gives
each mark a somewhat different connotation. Nonetheless, we
find that the similarities in sound and appearance outweigh
the differences in connotation.
Further, when the petitioner’s mark and respondent’s
mark are considered in their entireties, the marks engender
sufficiently similar overall commercial impressions that
when identical goods are offered thereunder, confusion would
be likely to result among consumers.
Respondent argues that the number of registered marks
that include the term NATURE for goods in class 5 is
Opposition No. 92045171
10
“extensive.” Respondent argues that this shared term is
suggestive and weak and that consumers will look to the
other elements to distinguish the involved marks.
Respondent, however, did not make of record any third-
party registrations for marks that include the term NATURE
for goods in class 5. Furthermore, the Board does not take
judicial notice of third-party registrations. Nonetheless,
we note that even if marks that include the term NATURE 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. This is
especially the case where the goods are identical.
Hollister Inc. v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).
Finally, respondent argues that the lack of evidence of
actual confusion indicates that there is no likelihood of
confusion. We note that respondent’s argument in this
regard is based upon petitioner’s response to a request for
admission which is not of record in this case. Even
assuming that the response had been made of record, we do
not believe that the lack of evidence of actual confusion is
a significant factor in this case in view of respondent’s
very limited sales and promotion of his nutritional
supplements. Cunningham v. Laser Golf Corp., supra at 1847.
[In order for the lack of actual confusion to be a
Opposition No. 92045171
11
meaningful factor, there must be evidence showing that there
has been an opportunity for incidents of actual confusion to
occur.]
In weighing the relevant likelihood of confusion
factors present in this case, we find that the goods at
issue are identical, that the goods move in the same
channels of trade and are sold to the same class of
consumers, that the goods are relatively low-priced, and
that the marks are similar. Accordingly, respondent’s mark
NATURE’S CORE, when used in connection with “nutritional
supplements, namely, vitamin and mineral supplements,
protein powders and herbal supplements excluding nutritional
supplements for use in connection with skin care, beauty
care, hair care and homeopathic treatment” so resembles
petitioner’s mark NATURE’S CODE for “vitamins and
nutritional supplements,” as to be likely to cause
confusion.
Decision: The petition to cancel is granted and the
registration will be cancelled in due course.