Horphag Research Ltd.v.Douglas G. Mann

Trademark Trial and Appeal Board

Jan 13, 2000

No. 91106125 (T.T.A.B. Jan. 13, 2000)

Paper No. 14
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 1/13/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Horphag Research Limited
v.
Douglas G. Mann, assignee of Cape Cod Biolab Corporation,
formerly Cape Cod Laboratory Corporation
Opposition No. 106,125
to application Serial No. 75/037,754
filed on December 8, 1995
_____
Marvin S. Gittes of Cobrin & Gittes
for Horphag Research Limited.
Craig A. Fieschko of Dewitt Ross & Stevens S.C.
for Douglas G. Mann.
______
Before Seeherman, Walters and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Cape Cod Laboratory Corporation1 filed an application
to register the mark CRANOGENOL (stylized) for “nutritional

1 The original applicant’s name, Cape Cod Laboratory Corporation,
was changed to Cape Cod Biolab Corporation. This change of name
was recorded by the Office at Reel 1803, Frame 0014. The
application was then assigned to Douglas G. Mann, as an
individual. The assignment, executed March 25, 1999, was
recorded at Reel 1887, Frame 0036. The caption of this
proceeding has thus been amended to reflect both the change of
name and the assignment. We note, however, that inasmuch as the
Opposition No. 106,125
2
supplements prepared with extracts of cranberries.”2
Horphag Research Limited filed an opposition to
registration of the mark on the ground of likelihood of
confusion under Section 2(d) of the Trademark Act. Opposer
alleges use of the mark PYCNOGENOL for dietary and
nutritional supplements since as early as July 27, 1987;
ownership of a registration for the mark;3 and likelihood of
confusion if applicant were to use its mark in association
with nutritional supplements.
Applicant, in its answer, denied the salient
allegations of the notice of opposition. Applicant has
taken no action in the case since the filing of its answer
other than appointing new counsel.
The record consists of the file of the involved
application and the certified status and title copy of
opposer’s registration, the copy of the assignment documents
recorded by the Office on February 2, 1993, showing that the

present application was filed under Section 1(b) and no
allegation of use has been filed, the application may only be
assigned under Trademark Rule 3.16 to a successor to applicant’s
business or that portion of the business to which the mark
pertains. Accordingly, in the event that applicant ultimately
prevails in this proceeding, the application should be remanded
to the Examining Attorney under Trademark Rule 2.131 for
consideration of the effect of the assignment on the validity of
the application.
2 Serial No. 75/037,754, filed December 8, 1995, based on an
assertion of a bona fide intention to use the mark in commerce.
3 Registration No. 1,769,633, issued May 11, 1993, for the mark
PYCNOGENOL for “dietary and nutritional supplements”; Section 8
affidavit filed and accepted.
Opposition No. 106,125
3
present owner of the registration is opposer and not its
predecessor-in-interest, Horphag Overseas Limited, as
indicated on the certified copy of the registration, and the
copy of a new recordation form cover sheet and request for
correction of assignment which were filed with the Office on
January 20, 1998, all of which were made of record by means
of opposer’s notice of reliance.4 Opposer filed a brief,
but an oral hearing was not requested.
Priority is not an issue here, in view of the certified
status and title copy of the opposer’s pleaded registration.
King Candy Co. v. Eunice King’s Kitchen, Inc. 496 F.2d 1400,
182 USPQ 108 (CCPA 1974). The supplemental documents made
of record establish the transfer of title to opposer,
although not reflected in the certified copy of the
registration, and the recordation of this assignment with
the Office.5
Thus, we turn to the issue of likelihood of confusion,
and to those of the du Pont factors which are relevant under
the present circumstances.6

4 The exhibits attached to the brief are untimely filed and have
been given no consideration.
5 The correction of prior Office records and recordation of the
assignment which was executed September 18, 1990 has been
recorded by the Office at Reel 1684, Frame 0811.
6 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 106,125
4
Insofar as the goods of the parties are concerned, the
broad identification of opposer’s goods in its registration
as dietary and nutritional supplements encompasses the
particular nutritional supplements of applicant. Opposer
has attempted to make the relationship between the goods of
the parties even more specific by its assertions that its
supplements are made primarily from pine bark and thus the
goods of both are manufactured from plant extracts. Opposer
has made no evidence of record, however, to support this
claim. Nonetheless, for purposes of determining likelihood
of confusion, the goods of the parties must be considered to
be identical.
Opposer states that its goods are sold by mail order,
on the Internet and in retail stores. There being no
limitation in the identification of goods in either
applicant’s application or opposer’s registration, it must
be presumed that both parties’ goods would travel in all the
normal channels of trade and be sold to all the usual
purchasers for goods of this nature. See Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987). Thus, we must assume that applicant’s goods
would be marketed through the same trade channels and to the
same purchasers as opposer’s goods.
The issue narrows down to whether the marks are of such
a degree of similarity that confusion as to source is likely
Opposition No. 106,125
5
when the same potential purchasers encounter opposer’s
PYCOGENOL nutritional supplements and applicant’s CRANOGENOL
nutritional supplements containing cranberry extracts. It
is well recognized that in general the greater the
similarity of the goods, the lesser the degree of similarity
of the marks which is necessary to support a conclusion that
there will be a likelihood of confusion. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
Opposer argues that the marks PYCNOGENOL and CRANOGENOL
must be considered in their entireties, and as such they are
very similar, both having ten letters, four syllables, the
same stress pattern with the primary accent on the second
syllable, and the same suffix -NOGENOL.
Of these asserted similarities, we find the presence of
the common suffix –NOGENOL to be the most significant. In
the first place, this suffix represents a major portion of
each mark. Furthermore, on the record before us, the suffix
appears to be arbitrary when used with opposer’s nutritional
supplements. There is no evidence of use by others of a
similar suffix for similar goods, as might indicate that -
NOGENOL is suggestive of a characteristic or feature of the
nutritional supplements. For purposes of our determination
of likelihood of confusion, the suffix is common only to the
marks of opposer and applicant. Cf. Tektronix, Inc. v.
Opposition No. 106,125
6
Daktronics, Inc. 187 USPQ 588 (TTAB 1975), aff’d, 534 F.2d
915, 189 USPQ 693 (CCPA 1976)[third-party registrations show
that others have adopted the suffixes -TRONICS or -TRONIX to
suggest the electronic nature of their goods and thus the
inclusion of these suffixes in the marks TEKTRONIX and
DAKTRONICS is not sufficient in itself to predicate a
holding of likelihood of confusion].
This being the case, we do not find the sole difference
between the marks, the first syllable of each, sufficient to
distinguish the marks as a whole. It is true that the
beginning syllable of applicant’s mark is suggestive of the
composition of its supplements, whereas, on this record, the
beginning syllable of opposer’s mark PYCNOGENOL appears to
be arbitrary.7 Nonetheless, we believe that purchasers
already familiar with opposer’s PYCNOGENOL nutritional
supplements might well assume that applicant’s CRANOGENOL
supplements are new products, or an expansion into a new
type of supplement, originating from opposer. The
difference in the first syllable would more likely be viewed
as an indication of a separate product, rather than of a
separate source. See NutraSweet Co. v. K & S Foods, Inc., 4
USPQ2d 1964 (TTAB 1987)[purchasers familiar with NUTRASWEET

7 We take judicial notice of the dictionary definition of the
prefix “pycno” as “a combining form meaning ‘dense,’ ‘close,’ or
‘thick,’ used in the formation of compound words.” Random House
Unabridged Dictionary, 2nd Ed. (1987).
Opposition No. 106,125
7
sweetening product likely to assume that NUTRA SALT salt is
a new product line put out by same producer].8
Accordingly, we find the marks PYCOGENOL and CRANOGENOL
sufficiently similar, if both are used on nutritional
supplements, to result in a likelihood of confusion.9 To
the extent that any doubt may exist, this doubt must also be
resolved in opposer’s favor, as the prior user of its mark
for nutritional supplements and against applicant as the
newcomer. See Century 21 Real Estate Corp. v. Century Life
of America, supra; and Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983).

8 We are aware that in a recent unpublished decision in Horphag
Research Limited v. FreeLife International, LLC., Opposition No.
102,797 (TTAB Aug. 20, 1999), the Board dismissed the opposition
filed by opposer, based on its same mark PYCNOGENOL, against
registration of the mark SOYGENOL for nutritional supplements.
We find the circumstances here to be distinguishable, in that the
present marks are of an equal number of syllables and share three
common syllables. As a whole, there is a much greater degree in
similarity in the marks in the present case.
9 Opposer has further argued that because of the medicinal
properties of the nutritional supplements, the doctrine of
greater care should be applied and a lesser degree of similarity
of the marks required. Because we think that purchasers
exercising ordinary care are likely to be confused, we find no
need to consider of the applicability of that doctrine to the
present goods.
Opposition No. 106,125
8
Decision: The opposition is sustained and registration
is refused to applicant.
E. J. Seeherman
C. E. Walters
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board