Kroeger Herb Products Co., Inc.v.Shaperite Concepts, Ltd.

Trademark Trial and Appeal Board

Sep 5, 2001

No. 92028369 (T.T.A.B. Sep. 5, 2001)

9/5/01 Paper No. 15
DEB

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Kroeger Herb Products Co., Inc.
v.
Shaperite Concepts, Ltd.
_____

Cancellation No. 28,369
_____

David Mastbaum of Law Offices of David Mastbaum for Kroeger
Herb Products Co., Inc.

Michael D. McCully of Halliburton Company for Shaperite
Concepts, Ltd.
______

Before Hanak, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Kroeger Herb Products Co., Inc. (petitioner) has filed a
petition to cancel Registration No. 2,139,757 owned by
Shaperite Concepts, Ltd. (respondent) for the mark META-LEAN
for “vitamins and nutritional dietary supplements” in
International Class 5.1
As grounds for cancellation, petitioner alleges that
since prior to respondent’s first use petitioner has
continuously used the mark METALINE for natural dietary
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 28,369
- 2 -
supplements; petitioner asserts priority and likelihood of
confusion under Section 2(d) of the Trademark Act, contending
that respondent’s mark, when applied to respondent’s goods, so
resembles petitioner’s previously used mark METALINE for
dietary supplements as to be likely to cause confusion; that
on February 28, 1997 petitioner filed an application for the
mark METALINE for dietary supplements (Serial No.
75/249,3582), and that its application was refused
registration under Section 2(d) of the Act on the basis of
respondent’s registration; and that respondent’s registration
has caused damage to petitioner.
Respondent, in its answer, denied the salient allegations
of the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; the testimony, with exhibits, of
Michelle Filoia and Thomas Brown; and a number of documents,
including respondent’s answers to interrogatories, all made of
record by way of petitioner’s notice of reliance. Respondent
did not take any testimony or offer any evidence. Only
petitioner filed a brief. An oral hearing was not requested
by either party.

1 Registration No. 2,139,757 issued February 24, 1998, from an
application filed on September 16, 1996. The claimed dates of first
use and first use in commerce are September 18, 1996.
Cancellation No. 28,369
- 3 -
According to Thomas Brown, petitioner’s president,
petitioner manufactures and distributes dietary supplements.
Petitioner has continuously used since 1978 the mark METALINE
to identify a dietary supplement for metal detoxification.
Between 1978 and 1997, the sale of METALINE products in forty-
seven states produced $390,000 in revenues for petitioner.
The product is marketed to health food stores, pharmacies and
licensed health practitioners, through petitioner’s website,
through distributors including multilevel marketers, and at
trade shows.
We turn first to the question of priority of use. The
testimony of Thomas Brown supports petitioner’s continuous use
of the METALINE mark since November 1978. In this case,
respondent may rely on the filing date of its intent-to-use
application, which became its constructive use date upon the
issuance of its registration. That date, September 16, 1996,
is clearly subsequent to petitioner’s first use date of
November 1978. Accordingly, in this dispute, priority belongs
with petitioner.
This brings us to the issue of likelihood of confusion.
Our determination is based upon an analysis of all of the
probative facts in evidence that are relevant to the factors

2 Action on petitioner’s application has been suspended by the
Trademark Examining Attorney in Law Office 115 handling the
application.
Cancellation No. 28,369
- 4 -
regarding likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Turning first to the parties’ goods, both are described
as dietary supplements. Both are manufactured primarily with
herbal substances. While respondent sells its supplement as a
weight-loss product and petitioner touts its product as a
cleansing formula designed for those concerned about metal
poisoning, for purposes of our likelihood of confusion
analysis, these two dietary supplements must be deemed to be
closely related goods.
We turn next to the parties’ respective marks. There are
several obvious similarities between METALINE and META-LEAN.
They have a similar appearance as each has the same number of
letters, with the first five being identical. Each consists
of three syllables. When spoken, any minor differences in
sound between LINE and LEAN may go undetected since they are
quite similar in terms of their pronunciation.
Inasmuch as the word METALINE appears in the dictionary
as a mixture including metallic oxides,3 one might argue this
is in some way suggestive for a dietary supplement designed
for metal detoxification, while as applied to a weight-loss
product, the final syllable of META-LEAN creates a different,
Cancellation No. 28,369
- 5 -
suggestive connotation. However, in spite of these somewhat
different suggestions, we find that the similarities in
appearance and sound outweigh this slight difference in
meaning. Accordingly, we conclude that these respective marks
are quite similar in overall commercial impressions.
As to the du Pont factor dealing with channels of trade,
neither party has restricted itself to any particular channels
of trade. While there is no restriction in its identification
of goods, the record shows that respondent relies primarily
upon a multilevel marketing system. In any case, the record
shows that petitioner also relies upon such distributors.
Furthermore, both parties offer their products through
catalogues and newsletters, and both maintain an active
presence on the Internet. Again, while the record shows that
respondent’s procedural guidelines for its distributors would
seem to prevent the appearance of respondent’s goods on retail
shelves, the record also demonstrates that this proscription
is not enforced in a proactive manner.
Finally, as to the du Pont factor dealing with the
conditions under which and buyers to whom sales are made,
there is nothing in the record to suggest that dietary
supplements are so expensive or that the purchasers are so

3 “Metaline, n. [metal and –ine] a lubricating mixture of
metallic oxides, grease and other substances.” Webster’s Deluxe
Cancellation No. 28,369
- 6 -
sophisticated that our decision should be different because of
this consideration.4
Accordingly, given that these are quite similar marks
used on closely related goods moving through some of the same
channels of trade to be purchased by the same class of
ordinary purchasers, we find a likelihood of confusion.
Decision: The petition to cancel is granted, and
Registration No. 2,139,757 will be cancelled in due course.

Unabridged Dictionary, (2nd Ed.).
4 While registrant did not file a brief or submit testimony during
the trial portion of this case, respondent had argued in opposition
to an earlier motion by petitioner for summary judgment that its
customers were sophisticated when it came to health care products.