Jarrow Formulas, Inc.v.Rob van der Kleijn d/b/a BrainBoost Nutrition and VDK Global LLC

Trademark Trial and Appeal Board

Jan 11, 2021

92067896 (T.T.A.B. Jan. 11, 2021)

Mailed: January 11, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Jarrow Formulas, Inc.
v.
Rob van der Kleijn and VDK Global LLC
_____

Cancellation No. 92067896
_____

John L. Cordani of Robinson & Cole LLP for Jarrow Formulas, Inc.

Steven C. Sereboff of SoCal IP Law Group LLP
for Rob van de Kleijn and VDK Global LLC.
_____

Before Bergsman, Wolfson and Pologeorgis, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Rob van der Kleijn registered on the Principal Register the trademark
BrainBoost Nutrition, in standard character form, for the goods listed below:
Amino acids for nutritional purposes; Dietary and
nutritional supplements; Dietary and nutritional
supplements containing Moringa plant extract, vitamins,
minerals and amino acids focused on brain health and
performance; Dietary and nutritional supplements for
endurance sports; Liquid nutritional supplement; Mineral
nutritional supplements; Nutritional and dietary
supplements formed and packaged as bars; Nutritional
supplement energy bars; Nutritional supplement for
eliminating toxins from the body; Nutritional supplement
This Opinion Is Not a
Precedent of the TTAB
Precedent of the TTAB
PrePrecedent of the TTAB
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meal replacement bars for boosting energy; Nutritional
supplement shakes; Nutritional supplements; Nutritional
supplements for boosting brain performance and general
health; Nutritional supplements in the form of capsules,
powder; Powdered nutritional supplement drink mix and
concentrate, in International Class 5 (hereinafter “dietary
and nutritional supplements”).1
Respondent disclaimed the exclusive right to use the word “Nutrition.”
During this proceeding, Rob van der Kleijn assigned the BrainBoost Nutrition
trademark and registration to VDK Global LLC. The USPTO recorded the
assignment on March 26, 2018, at reel 6301, frame 0053. On March 26, 2018, Rob
van der Kleijn filed a motion to substitute VDK Global LLC as party defendant.2 To
facilitate discovery, the Board joined, rather than substituted, VDK Global LLC as a
party defendant.3 For purposes of this decision, we refer to both Rob van der Kleijn
and VDK Global LLC as “Respondent.”
Jarrow Formulas, Inc. (Petitioner) petitions to cancel Respondent’s BrainBoost
Nutrition registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
on the ground that Respondent’s mark so resembles Petitioner’s previously used
trademark BrainBoost for dietary and nutritional supplements as to be likely to
cause confusion.
Respondent, in its Answer, denies the salient allegations in the Petition for
Cancellation. Respondent also alleges purported affirmative defenses that are not

1 Registration No. 5120680 registered January 10, 2017 on the Principal Register, based on
application Serial No. 86784070 filed October 9, 2015.
2 4 TTABVUE.
3 5 TTABVUE.
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affirmative defenses but amplifications of its defenses, including that Petitioner’s
BrainBoost mark “when used in conjunction with the relevant goods, is descriptive
and lacking secondary meaning.”4 Respondent also alleges, “Petitioner’s claims are
barred by its own conduct, actions, and inaction, which constitute a waiver of each of
its claims.”5 In its brief, Respondent explains that it is asserting laches.6
I. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file.7 Only Petitioner introduced any
testimony or evidence. We list below the testimony and evidence Petitioner
introduced:
● Notice of reliance on a copy of the file history for Petitioner’s application Serial
No. 87438535 for the mark BRAINBOOST, in standard character form, for “dietary
and nutritional supplements,” in International Class 5;8
● Notice of reliance on a copy of cancelled Registration No. 4269753 for the mark
BRAIN BOOSTER MEMORY FORMULA, in standard character form, for “dietary

4 Respondent’s Fifth Affirmative Defense (6 TTABVUE 5).
5 Fourth Affirmative Defense (6 TTABVUE 5).
6 Respondent’s Brief, pp. 12-13 (26 TTABVUE 12-13).
7 Therefore, it was not necessary for Petitioner to introduce a copy of Respondent’s
registration file. (23 TTABVUE 79-142).
8 23 TTABVUE 9-77.
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and nutritional supplements,” in International Class 5 (“Memory Formula”
disclaimed);9
● Notice of reliance on a copy of abandoned application Serial No. 86936974 for
the mark DAILY BRAIN BOOSTER, in standard character form, for “nutritional
supplements,” in International Class 5 (“Daily” disclaimed);10
● Notice of reliance on a copy of abandoned application Serial No. 86938755 for
the mark DAILY BRAIN BOOSTER and design, for “nutritional supplements,” in
International Class 5 (“Daily Brain Booster” disclaimed);11
● Notice of reliance on a copy of abandoned application Serial No. 87301822 for
the mark BRAINBOOST NUTRITION, FOOD FOR THOUGHT and design, for, inter
alia, dietary and nutritional supplements, in International Class 5, filed by
Respondent;12
● Notice of reliance on excerpts from Petitioner’s website circa July 24, 2010,
October 10, 2011, January 3, 2012, January 17, 2013, July 3, 2014, September 10,
2015, July 10, 2016, July 16, 2017, November 10, 2018, and April 4, 2019, that
Petitioner printed from web.archive.org;13

9 23 TTABVUE 144-148. The registration was owned by a third party, Independent Vital Life,
LLC. It was cancelled September 8, 2018.
10 23 TTABVUE 150-151. The application was filed by a third party, Shawn Moore. It was
abandoned on October 3, 2018.
11 23 TTABVUE 153-155. This application also was filed by Shawn Moore. It was abandoned
on July 13, 2018.
12 23 TTABVUE 157-159.
13 23 TTABVUE 161-175.
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● Notice of reliance on an excerpt from vitaminshoppe.com circa April 5, 2015,
that Petitioner printed from web.archive.org;14
● Notice of reliance on an excerpt from brainboostnutrition.com printed March 9,
2020;15
● Notice of reliance on Respondent’s supplemental responses to Petitioner’s
interrogatories;16
● Notice of reliance on Respondent’s supplemental responses to Petitioner’s
requests for admission;17
● Notice of reliance on Respondent’s supplemental responses to Petitioner’s
request for production of documents;18 and

14 23 TTABVUE 176-178.
15 23 TTABVUE 180-183.
16 23 TTABVUE 185-191.
17 23 TTABVUE 193-196. A party may introduce only an admission to a request for admission
through a notice of reliance. Trademark Rule 2.120(k)(3)(i), 37 C.F.R. § 2.120(k)(3)(i). A denial
or statement that the responding party cannot respond to the request does not establish the
truth or falsity of the assertion, but rather leaves the matter for proof at trial. Life Zone Inc.
v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008) (denials to requests for
admission inadmissible because “unlike an admission (or a failure to respond which
constitutes an admission), the denial of a request for admission establishes neither the truth
nor the falsity of the assertion, but rather leaves the matter for proof at trial.”). As such, we
have considered only the admissions to the requests for admission.
18 23 TTABVUE 198- 208. Responses to a request for production of documents introduced
through a notice of reliance are admissible solely for purposes of showing that a party has
stated that there are no responsive documents; documents produced in response to the
requests are generally not admissible by notice of reliance alone. Trademark Rule
2.120(j)(3)(ii), 37 C.F.R. § 2.120(j)(3)(ii); see also City Nat’l Bank v. OPGI Mgmt. GP
Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674 n.10 (TTAB 2013) (responses to document
production requests are admissible solely for purposes of showing that a party has stated
that there are no responsive documents); ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d
1036 n.7 (TTAB 2012) (written responses to document requests indicating that no documents
exist may be submitted by notice of reliance).
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● Testimony declaration of Rory Lipsky, Petitioner’s Director of Business
Strategy.19
II. Entitlement to a Statutory Cause of Action20
Even though Respondent did not contest it, Petitioner’s entitlement to a statutory
cause of action is a threshold issue in every inter partes case. See Australian
Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d
10837, at *3 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components,
Inc., 572 U.S. 118, 109 USPQ2d 2061, 2067 n.4 (2014)). A party in the position of
plaintiff may petition for cancellation of a registered mark where such cancellation is
within the zone of interests protected by the statute, 15 U.S.C. § 1064, and the party’s
reasonable belief in damage is proximately caused by continued registration of the
mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 2020 USPQ2d
11277, at *6-7 (Fed. Cir. Oct. 27, 2020).

To establish its entitlement to a statutory cause of action in this proceeding,
Petitioner relies on its pending application for the mark BRAINBOOST (Serial No.
87438535) for dietary and nutritional supplements, which the USPTO refused to
register because of Respondent’s registration based on likelihood of confusion.21 “[A]

19 23 TTABVUE 209-308. Petitioner introduced the Lipsky declaration a second time at
24 TTABVUE.
20 Board decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Section 13
and 14 remain applicable. See Spanishtown Enters., Inc. v. Transcend Resources, Inc., 2020
USPQ2d 11388, at *2 (TTAB 2020).
21 23 TTABVUE 25, 27-28, and 31-32.
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pending application that has been refused registration based on a likelihood of
confusion with a registered mark is sufficient to show that the petitioner seeking to
cancel the registered mark is the type of party Congress authorized under 15 U.S.C.
§ 1064.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
1058, 1062 (Fed. Cir. 2014). See also ShutEmDown Sports, 102 USPQ2d at 1041
(citing Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982)). As explained in Lipton, the desire for a registration with its “attendant
statutory advantages” is a “legitimate commercial interest,” so to satisfy the
requirements for bringing a cancellation proceeding, it is enough to show that a
petitioner “filed an application and that a rejection was made because of
[Respondent’s] existing registered mark.” 213 USPQ at 189.
We find that the evidence that the USPTO refused to register Petitioner’s mark
because of the mark in Respondent’s registration identifies an interest falling within
the zone of interests protected by Section 14 of the Trademark Act, 15 U.S.C. § 1064.
Therefore, Petitioner has proven its entitlement to a statutory cause of action.
III. Priority
“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122,
31 USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches
to” Respondent’s involved registration, and Petitioner, the alleged prior user, bears
the burden of proving its claim of priority by a preponderance of the evidence. Id.;
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Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
To establish priority, Petitioner must show proprietary rights in the mark that
produce a likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (citing Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981)). These proprietary rights
may arise from a prior registration, prior trademark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights. Id.
In the absence of evidence establishing earlier use of its mark, a party may rely
for priority purposes on the filing date of the application that matured into its
registration. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c). See also Brewski
Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard
Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980).
Respondent filed the underlying application for the registration at issue on
October 9, 2015, based on Respondent’s claim of a bona fide intent to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). In response
to Petitioner’s written discovery, Respondent stated that it first used its mark
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BrainBoost Nutrition as of January 1, 2016.22 Thus, the earliest date upon which
Respondent may rely to establish its date of first use is October 9, 2015.
Rory Lipsky, Petitioner’s Director of Business Strategy, testified Petitioner first
used the BrainBoost mark in commerce in April 2010.23 To support his testimony,
Lipsky introduced a copy of an invoice from the first sale of Petitioner’s BrainBoost
dietary and nutritional supplements dated April 2, 2010.24 Thus, Petitioner proved
that it first used its BrainBoost trademark as of April 2, 2010, prior to Respondent’s
constructive date of first use of October 9, 2015.
Respondent argues that Petitioner has not proven that it has proprietary rights
in BrainBoost because that mark is merely descriptive when used in connection with
dietary and nutritional supplements.25
Petitioner’s mark, BrainBoost, combines the words “brain”
and “boost.” There is no dispute that these words are both
well known and defined.
Putting two words together, such as “brain boost,” and
eliminating the space between them to make “brainboost”
does not alter the commercial impression.26

22 Respondent’s supplemental response to Petitioner’s interrogatory No. 1 (23 TTABVUE
185); Respondent’s supplemental response to Petitioner’s request for admission No. 1 (23
TTABVUE 193).
23 Lipsky Testimony Decl. ¶9 (23 TTABVUE 211).
24 Id. at ¶14 and Exhibit 6 (23 TTABVUE 212 and 235).
25 Respondent’s Brief, p. 6 (26 TTABVUE 7).
26 Id., p. 7 (26 TTABVUE 8).
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Although Respondent did not introduce any evidence defining the words “brain”
and “boost,” we may take judicial notice of their dictionary definitions.27 The RANDOM
HOUSE UNABRIDGED DICTIONARY (2021) defines “brain,” inter alia, as “the center of
thought, understanding, etc.; mind; intellect.”28 It defines “boost,” as
“to increase; raise.”29
In short, Petitioner’s product provides a “boost” to the
“brain.” It is a “brain boost.” Petitioner’s own advertising
explicitly state[s] that the BrainBoost product gives the
brain a boost.30
Petitioner advertises that “[h]ealthy individuals who want to give their brains an
additional nutritional boost” will benefit from BrainBoost.31
As noted above, Petitioner must have proprietary rights in its BrainBoost mark
to prevail on its likelihood of confusion claim. “[E]ven though something is used as a
trademark, if it is not distinctive, the user does not have a trademark because he has
no existing trademark rights.” Otto Roth, 209 USPQ at 43. Thus, we turn to
Respondent’s defense that Petitioner’s mark BrainBoost is merely descriptive.

27 The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); In re S. Malhotra & Co. AG,
128 USPQ2d 1100, 1104 n.9 (TTAB 2018); In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006).
28 Dictionary.com accessed December 6, 2021.
29 Id.
30 Respondent’s Brief, p. 8 (26 TTABVUE 9).
31 Lipsky Decl. Exhibit 4 (23 TTABVUE 231). See also Lipsky Decl. Exhibit 8 (23 TTABVUE
239).
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“A mark is merely descriptive if it immediately conveys information concerning a
feature, quality, or characteristic of the goods or services for which registration is
sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d
1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d
1707, 1709 (Fed. Cir. 2017)).
We “must consider the mark as a whole and do so in the context of the goods
or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.,
695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (emphasis added); In re
Calphalon Corp., 122 USPQ2d 1153, 1162 (TTAB 2017). “Whether consumers could
guess what the product is from consideration of the mark alone is not the test.” In re
Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Rather, “the question is
whether someone who knows what the goods and services are will understand the
mark to convey information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting
In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)).
This applies to compound marks as well.
In considering a mark as a whole, the Board may weigh the
individual components of the mark to determine the overall
impression or the descriptiveness of the mark and its
various components. … [I]f ... two portions individually are
merely descriptive of an aspect of appellant’s goods [or
services], the PTO must also determine whether the mark
as a whole, i.e., the combination of the individual parts,
conveys any distinctive source-identifying impression
contrary to the descriptiveness of the individual parts.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004).
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Respondent bears the burden of showing, by a preponderance of the evidence, that
Petitioner’s mark BrainBoost is merely descriptive. Anheuser-Busch, Inc. v. Kelly J.
Holt, 92 USPQ2d 1101, 1105 (TTAB 2009); Goodyear Tire & Rubber Co. v.
Continental Gen’l Tire Inc., 70 USPQ2d 1067, 1070 (TTAB 2003). Respondent may
meet this burden by introducing websites, publications, labels, packages, advertising
material, and explanatory text on specimens that are probative of the reaction of
actual and prospective purchasers of the goods. See N. C. Lottery, 123 USPQ2d at
1710; In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Any competent source suffices to show the relevant public’s understanding of a
contested term or phrase.”); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978).
The issue before us is whether the mark BrainBoost as a whole is merely
descriptive when used in connection with dietary and nutritional supplements, and
if so, whether it acquired distinctiveness prior to October 9, 2015. Alternatively, as
stated above, the issue is to determine how a consumer shopping for dietary and
nutritional supplements will perceive the term BrainBoost.
The first thing we note when we analyze Respondent’s argument is that
Respondent is arguing that the term “Brainboost” is merely descriptive when
Petitioner uses it to identify dietary and nutritional products but it is not merely
descriptive when Respondent uses it to identify those same products. Respondent
registered BrainBoost Nutrition on the Principal Register with a disclaimer of the
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word “Nutrition”32 and without a claim to acquired distinctiveness under Section 2(f).
Thus, we must and do accord Respondent’s BrainBoost Nutrition registration all
applicable probative value, including as prima facie evidence that the registered
mark is valid under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), and in
the absence of a claim of acquired distinctiveness, that the term “BrainBoost” is
inherently distinctive. See Cold War Museum Inc. v. Cold War Air Museum Inc., 586
F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (presumption of validity of
registration includes presumption of distinctiveness); Tea Bd. of India v. The
Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). See also 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:43 (5th ed. 2020 Update) (noting that
“when the USPTO registers a mark without requiring evidence of secondary meaning
(‘acquired distinctiveness’), it is presumed to be inherently distinctive.”).
Respondent’s explanation for this discrepancy is two-fold. First, even though
Petitioner’s mark BrainBoost is almost the same as Respondent’s mark
BrainBoost Nutrition and Respondent “has stated that it chose its mark because
‘it believed it was a good brand,’”33 Respondent’s “non-expert opinion” is not binding

32 The Examining Attorney reviewing the application to register Respondent’s application for
the mark BrainBoost Nutrition required Respondent to disclaim the exclusive right to use
the word “Nutrition” because it is merely descriptive. February 1, 2016 Office Action (TSDR
4). Respondent disclaimed the exclusive right to use the word “Nutrition” in response to the
Examining Attorney’s requirement. March 31, 2016 Response to an Office Action (TSDR 2
and 4).
Citations to the examination record refer to the USPTO’s Trademark Status and Document
Retrieval system (TSDR) by page number in the downloadable .pdf format.
33 Respondent’s supplemental response to Petitioner’s interrogatory No. 4 (23 TTABVUE
186).
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on the Board.34 Second, “[w]hether [Respondent’s] mark is descriptive is not at issue
here – it is presumed to be distinctive.”35
The Court of Appeals for the Federal Circuit has recognized that while
Respondent’s contrary position regarding the conceptual or inherent strength of its
mark vis-à-vis Petitioner’s mark when used on the same goods may not constitute an
estoppel, it does have significance as facts “illuminative of shade and tone in the total
picture confronting the decision maker.” Juice Generation, Inc. v. GS Enter. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (quoting Interstate Brands
Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 153 (CCPA 1978)).
See also Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (“A party’s prior arguments may be
considered as ‘illuminative of shade and tone in the total picture,’ but do not alter the
Board’s obligation to reach its own conclusion on the record.”). “To that extent, a
party’s earlier contrary opinion may be considered relevant and competent.”
Interstate Brands, 198 USPQ at 153. Respondent’s registration of BrainBoost
Nutrition on the Principal Register without a claim of acquired distinctiveness for
the term “BrainBoost,” while not dispositive, supports Petitioner’s position that the
term “BrainBoost” is inherently distinctive, not merely descriptive.
On the record before us, the term “Brainboost” is not merely descriptive because
it is vague or indefinite and lacks specificity as to what ingredient, quality, or

34 Respondent’s Brief, p. 8 (26 TTABVUE 9).
35 Id., p. 9 n.1 (26 TTABVUE 10).
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characteristic a brain boost purportedly describes. As noted above, a mark is merely
descriptive if it forthwith conveys an immediate idea of the ingredient, qualities, or
characteristics of the goods. The immediate idea must be conveyed forthwith with a
“degree of particularity.” In re TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB
1978). See also Goodyear Tire & Rubber Co. v. Continental General Tire Inc., 70
USPQ2d 1067, 1069 (TTAB 2003); In re Entemann’s Inc., 15 USPQ2d 1750, 1751
(TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13, 1991) (a merely descriptive term
must describe with some degree of particularity a quality or ingredient of the product
in question).
We have carefully considered Petitioner’s mark BrainBoost for dietary and
nutritional supplements. As noted above, it falls short of describing the products or
their ingredients, qualities or characteristics with any degree of particularity. On the
other hand, BrainBoost suggests that the dietary and nutritional supplements
enhance the user’s cognitive process, improves the physical health of the brain, or
increases the ability of the brain to work. Respondent chose not to introduce any
testimony or evidence, and the record does not suffice to establish how consumers
perceive the term “Brainboost.” To effect a readily understood connection between
Petitioner’s BrainBoost mark and dietary and nutritional supplements, we find that
actual or prospective customers are required to use thought, imagination or
extrapolation. BrainBoost fails directly to convey any vital purpose or function of
Petitioner’s dietary and nutritional supplements.
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In sum, Respondent failed to meet its burden of proof and the evidence of record
does not support finding that BrainBoost is merely descriptive when used in
connection with dietary and nutritional supplements. Thus, the mark is suggestive
and not merely descriptive.
We find that Petitioner has proven that it has prior rights in the mark
BrainBoost.
IV. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the probative
facts in evidence that are relevant to the factors bearing on the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138,
113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen
DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg.
Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont,
177 USPQ at 567). “Not all DuPont factors are relevant in each case, and the weight
afforded to each factor depends on the circumstances. Any single factor may control
a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d
994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020) (citing Dixie Rests., 41 USPQ2d at 1406-
07).
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“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l,
64 USPQ2d at 1380).
A. The similarity or dissimilarity and nature of the goods.
Respondent has registered its mark for, inter alia, dietary and nutritional
supplements. Petitioner uses its mark for dietary and nutritional supplements.36
Respondent’s description of goods and Petitioner’s goods are in part identical.
Under this DuPont factor, Petitioner need not prove, and we need not find,
similarity as to each product listed in Respondent’s description of goods. It is
sufficient that we find any item encompassed by Respondent’s description of goods in
a particular class and Petitioner’s goods related. Tuxedo Monopoly, Inc. v. Gen. Mills

36 Lipsky Decl. ¶¶5-8 (23 TTABVUE 210).
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Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc,
116 USPQ2d 1406, 1409 (TTAB 2015), aff’d 866 F.3d 1315, 123 USPQ2d 1744 (Fed.
Cir. 2017); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
B. Established, likely-to-continue channels of trade and classes of
consumers.
Where, as here, there are no limitations or restrictions in Respondent’s description
of goods, we presume that Respondent offers its dietary and nutritional supplements
in all channels of trade normal for such goods, and that they would be purchased by
all potential customers, including the channels of trade in which Petitioner offers its
dietary and nutritional supplements and to the classes of consumers to whom
Petitioner sells its products. See Citigroup Inc. v. Capital City Bank Grp. Inc.,
637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)); CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Paula Payne
Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
C. The similarity or dissimilarity of the marks.
We now turn to the DuPont factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression. DuPont, 177 USPQ at 567. “Similarity in any one of these elements may
be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019); accord Krim-
Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968)
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(“It is sufficient if the similarity in either form, spelling or sound alone is likely to
cause confusion.”) (citation omitted).
In comparing the marks, we are mindful that where, as here, the goods are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012). “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721).
Respondent’s mark is BrainBoost Nutrition and Petitioner’s mark is
BrainBoost. The marks are similar because they share the term “BrainBoost.”
“BrainBoost” is the dominant feature of Respondent’s mark because the word
“Nutrition” is merely descriptive when used in connection with dietary and
nutritional supplements. Accordingly, during the prosecution of its application,
Respondent disclaimed the exclusive right to use the word “Nutrition.” Disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. See In re Detroit Ath. Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047,
1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 41 USPQ2d at 1533-34); Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark may
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be given little weight in reaching a conclusion on the likelihood of confusion.’”)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter
is often “less significant in creating the mark’s commercial impression”).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, “our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on a comparison of
the entire marks, not just part of the marks.” In re Ox Paperboard, LLC, 2020
USPQ2d 10878, *4 (TTAB 2020) (citing Stone Lion, 110 USPQ2d at 1161).
On the other hand, 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 a consideration
of the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.
Nat’l Data Corp., 224 USPQ at 751.
Further reinforcing the prominence of the term “BrainBoost” in Respondent’s
mark is its location as the first part of the mark. The Court of Appeals for the Federal
Circuit has often held that the lead element in a mark has a position of prominence;
it is likely consumers will notice and remember the first part of a mark as it plays a
dominant role in the mark. See Detroit Ath. Co., 128 USPQ2d at 1049 (finding “the
identity of the marks’ two initial words is particularly significant because consumers
typically notice those words first”); Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is
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the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label); Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(upon encountering the marks, consumers will first notice the identical lead word).
“[I]f the dominant portion of both marks is the same, then confusion may be likely
notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB
1985). The peripheral difference in this case, Respondent’s addition of the descriptive
word “nutrition,” fails to distinguish the marks.
Under these circumstances, the fact that Respondent’s mark incorporates
Petitioner’s entire mark increases the similarity of the marks, particularly where, as
here, the parties’ goods are in part identical. See, e.g., China Healthways Inst. Inc. v.
Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s
mark CHI PLUS is similar to opposer’s mark CHI both for electric massagers); In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark
VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus
confusingly similar to TITAN for medical ultrasound diagnostic apparatus);
Broadcasting Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007)
(respondent’s mark ABS-CBN is similar to petitioner’s mark CBN both for television
broadcasting services); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988)
(applicant’s mark MACHO COMBOS for food items confusingly similar to MACHO
for restaurant entrees).
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We find that Respondent’s mark BrainBoost Nutrition is similar to Petitioner’s
mark BrainBoost in their entireties in terms of appearance, sound, connotation and
commercial impression.
D. The length of time during and conditions under which there has
been concurrent use without any evidence of actual confusion.
Respondent is unaware of any instance of actual confusion.37 Because Petitioner
did not introduce any evidence regarding actual confusion, we presume that
Petitioner is unaware of any reported instances of actual confusion.
Respondent argues,
Petitioner is forced to rely on hypothetical evidence of
confusion because there is no actual confusion. A lack of
evidence is especially evident of no actual confusion when
considering the fact that both marks have coexisted in the
marketplace for four years.38
This eighth DuPont factor — “[t]he length of time during and conditions under
which there has been concurrent use without evidence of actual confusion,” 177 USPQ
at 567 — requires us to look at actual market conditions, to the extent there is
evidence of such conditions of record. New Era Cap Co., Inc. v. Pro Era, LLC,
2020 USPQ2d 10596, *17 (TTAB 2020) (citing In re Guild Mortg. Co., 2020 USPQ2d
10279, *6 (TTAB 2020)). The absence of any reported instances of confusion is
meaningful only if the record indicates appreciable and continuous use by Respondent
of its mark for a significant period in the same markets as those served by Petitioner

37 Respondent’s supplemental response to Petitioner’s interrogatory No. 14 (23 TTABVUE
188).
38 Respondent’s Brief, p. 12 (26 TTABVUE 13).
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under its mark. Citigroup Inc. v. Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1660
(TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the
absence of actual confusion to be probative, there must have been a reasonable
opportunity for confusion to occur. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d
1283, 1287 (TTAB 2007) (the probative value of the absence of actual confusion
depends upon there being a significant opportunity for actual confusion to have
occurred); Red Carpet Corp. v. Johnstown Am. Enters. Inc., 7 USPQ2d 1404, 1406-
1407 (TTAB 1988); Central Soya Co., Inc. v. N. Am. Plant Breeders, 212 USPQ 37, 48
(TTAB 1981) (“[T]he absence of actual confusion over a reasonable period of time
might well suggest that the likelihood of confusion is only a remote possibility with
little probability of occurring.”).
The following information regarding Respondent’s use of BrainBoost Nutrition
is of record:
● Respondent has been continuously using its mark BrainBoost Nutrition since
January 1, 2016;39
● Respondent sells dietary and nutritional supplements through its online store
and “directly to select brick-and-mortar retailers.”40 Respondent did not identify any

39 Respondent’s supplemental response to Petitioner’s interrogatory No. 1 (23 TTABVUE
185).
40 Respondent’s supplemental response to Petitioner’s interrogatory No. 8 (23 TTABVUE
187).
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of the “select brick-and-mortar retailers,” nor did Respondent identify its primary
geographic trading area.
● Respondent does not sell to distributors.41
● Respondent “advertises or promotes the goods and services sold under or in
connection with the BRAINBOOST NUTRITION Mark through conventional outlets.
Primarily [Respondent] advertises on its website https://www.brainboost
nutrition.com/.”42 Respondent did not identify what it meant by “conventional
outlets.”
● Respondent “has spent less than $10,000 per year on advertising.”43 Respondent
did not explain how it spends that $10,000 on advertising other than “through
conventional outlets,” that, as noted above, are undefined.
The following testimony regarding Petitioner’s use of its BrainBoost mark is of
record:
● Petitioner has been continuously using BrainBoost since April 2010.44
● Petitioner widely distributes its marketing materials to sales personnel,
distributors, and customers.45 Petitioner’s witness did not testify as to the number of

41 Respondent’s supplemental response to Petitioner’s interrogatory No. 9 (23 TTABVUE
187).
42 Respondent’s supplemental response to Petitioner’s interrogatory No. 10 (23 TTABVUE
187).
43 Respondent’s supplemental response to Petitioner’s interrogatory No. 12 (23 TTABVUE
188).
44 Lipsky Testimony Decl. ¶9 (23 TTABVUE 211).
45 Id. at ¶13 (23 TTABVUE 212).
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sales personnel, distributors or customers Petitioner has or their geographical
distribution.
● In April 2010, Petitioner sent shipments of BrainBoost dietary and nutritional
supplements to customers in California, New York, Alabama, Washington,
Wisconsin, Florida, New Jersey, and Georgia.46
● Total sales of BrainBoost dietary and nutritional supplements exceeded
$35,000 in 2010.47
● Since 2010, Petitioner’s revenues for sales of BrainBoost dietary and
nutritional supplements have been “substantially greater than $35,000.”48
Petitioner’s witness did not explain what he meant by the term “substantially
greater” and did not indicate the specific revenue figures after 2010.
● Petitioner has sold and shipped BrainBoost to customers in all 50 states
“through all the typical channels of distribution for dietary and nutritional
supplements, including health stores, health-food markets, grocery stores, vitamin
and nutritional supplement shops, and the typical online channels such as vitamin
and nutritional supplement websites and general retail websites like Amazon.”49
Petitioner’s witness did not testify regarding the extent of sales in each state.

46 Id. at ¶14 (23 TTABVUE 212).
47 Id. at ¶15 (23 TTABVUE 212-213).
48 Id. at ¶17 (23 TTABVUE 213).
49 Id. at ¶18 (23 TTABVUE 213).
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On this record, we cannot determine whether there has been a reasonable
opportunity for actual confusion to occur. For example,
● While Respondent has spent less than $10,000 per year on advertising, a de
minimis amount, there is no testimony or evidence regarding Petitioner’s advertising
expenditures or the effectiveness of Respondent’s advertising;
● While Petitioner claims to have revenues “substantially” exceeding $35,000,
there is no testimony or evidence regarding Respondent’s revenues;
● There is no testimony or evidence regarding the number of customers for either
party; and
● There is no testimony or evidence illustrating the overlap in sales and
advertising of the parties’ products.
We find this DuPont factor to be neutral.
E. Conclusion
Because the marks are very similar, the goods are in part identical and we
presume that Respondent offers such goods in the same channels of trade to the same
classes of consumers as Petitioner, we find that Respondent’s mark BrainBoost
Nutrition for, inter alia, dietary and nutritional supplements, is likely to cause
confusion with Petitioner’s mark BrainBoost for dietary and nutritional
supplements.
V. Laches
Respondent contends that we should deny the Petition for Cancellation because
Petitioner is guilty of laches.
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Despite Petitioner’s own purported strong Du Pont
evidence, Petitioner has done nothing to stop [Respondent]
from using its BRAINBOOST NUTRITION trademark.
Petitioner filed its petition February 12, 2018, which while
challenging [Respondent’s] right to its registration does not
challenge [Respondent’s] right to use its trademark. After
at least 2½ years of knowing about [Respondent],
Petitioner’s inaction should bar its claims by the doctrine
of laches and therefore a waiver of its claims against
[Respondent].50
However, this is not a case where likelihood of confusion is reasonably in doubt.
As noted by Respondent, Petitioner has made a strong showing that there is a
likelihood of confusion. In fact, confusion, mistake or deception is not only likely but
also inevitable in light of the near identity of the marks, identity of the goods, and
presumption that the parties offer their goods in the same channels of trade to the
same classes of consumers. Where, as here, confusion is inevitable, the Board will not
apply laches because the public interest in avoiding confusion is paramount. Teledyne
Techs., Inc. v. W. Skyways, Inc., 208 Fed. App’x. 886, *890 (Fed. Cir. 2006) (citing
Ultra White Co., Inc. v. Johnson Chem. Indus., Inc., 465 F.2d 891, 175 USPQ 166, 167
(CCPA 1972)); Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d
1575, 1584 (TTAB 2015) (“Even when a laches defense has been proven, it will not
serve as a bar against a petition for cancellation on a likelihood of confusion ground
when confusion is inevitable.”).
The affirmative defense of laches is not applicable and does not bar Petitioner’s
Section 2(d) claim of likelihood of confusion.

50 Respondent’s Brief, pp. 12-13 (23 TTABVUE 13-14).
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Decision: The petition for cancellation is granted.