Mindful Herb LLC

Trademark Trial and Appeal Board

Jun 24, 2015

No. 85953179 (T.T.A.B. Jun. 24, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mindful Herb LLC
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Serial No. 85953179
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Luke Brean of Breanlaw LLC for Mindful Herb LLC.

Kamal Preet, Trademark Examining Attorney, Law Office 112 (Angela Bishop
Wilson, Managing Attorney).
_______

Before Seeherman, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Mindful Herb LLC (“Applicant”) seeks registration on the Principal Register of
the mark

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with the following statements provided in response to requirements issued by the
Trademark Examining Attorney:
The non-Latin characters in the mark transliterate to “De Fu Ben Cao”
and this means “morals and mind” for “De”, “blessing and good luck”
for “Fu”, and “herbal materia medica” for “Ben Cao” in English. The
English translation of “De Fu Ben Cao” in the mark is “Mindful Herb”.

The color(s) green and white is/are claimed as a feature of the mark.
The mark consists of a white ginkgo leaf resembling a brain and white
Chinese characters displayed on the bottom, with two on each side of
the stem and where the green background symbolizes the natural
origin of the herb products.

No claim is made to the exclusive right to use “herb” and the non-latin
characters that transliterate to “ben cao” apart from the mark as
shown.

The application recites the following goods, as amended:
Chinese medicinal herbs offered exclusively through owner’s website
and retail locations, namely, medicinal herbs in dried or preserved
form, medicinal herb extracts and medicinal herbs; herbal skin care,
namely, plant and herb extracts sold as components of medicated
cosmetics; herbal tea in the nature of herb teas for medicinal purpose;
and other herbal products, namely, aromatherapy packs containing
herbs used for relief from headaches, insomnia and sinus discomfort

in International Class 5.1
The Examining Attorney has refused registration of Applicant’s mark on the
ground of a likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), in view of Registration No. 3983874 for the mark

1 Application Serial No. 85953179 was filed on June 6, 2013, based upon Applicant’s
assertion of May 1, 2013 as a date of first use of the mark anywhere and May 13, 2013 as a
date of first use of the mark in commerce.
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issued on the Principal Register with the following statements:
No claim is made to the exclusive right to use “nutrients” apart from
the mark as shown.

Color is not claimed as a feature of the mark.

The mark consists of the words “MINDFUL NUTRIENTS” with a
circle behind the words “MINDFUL NUTRIENTS” and the word
“MINDFUL” above the word “NUTRIENTS”.

The registration recites the following goods: “vitamins and nutritional supplements”
in International Class 5.2
Applicant filed a request for reconsideration and appealed the final refusal to
register. The Examining Attorney denied the request for reconsideration. The
refusal has been fully briefed by Applicant and the Examining Attorney.3
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See

2 Issued on June 28, 2011.
3 Applicant submitted 48 pages of exhibits with its main brief. We will not undertake a
separate review of the exhibits. To the extent that they were previously made of record,
their attachment to Applicant’s brief is duplicative and unnecessary. To the extent that any
papers were not previously made of record, they will not be considered.
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also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003).
Strength of Registrant’s Mark
Before considering the merits of this appeal, we address an evidentiary matter.
Applicant has submitted a list of 179 registrations and applications retrieved from a
search of the USPTO’s Trademark Electronic Search System (TESS) database of
applications and registrations which consist of or include the word “mindful” and 50
registrations and applications which include the word “herb.”4 The Examining
Attorney advised Applicant that the mere submission of a list of registrations does
not make them of record and, further, instructed Applicant as to how to make the
third-party registrations properly of record.5 As the Examining Attorney made
clear, to make a third-party registration of record, a copy of the registration, either
a copy of the paper certificate of registration, or a copy taken from the electronic
records of the Office, should be submitted. See generally TBMP §1208.02 (June
2014). See also In re Duofold Inc., 184 USPQ 638 (TTAB 1974). Applicant did not
provide copies of the listed registrations as instructed. Inasmuch as Applicant was
warned of the evidentiary failing at a time when it could correct the deficiency, and
still failed to correct it, the list of registrations will not be considered.

4 October 1, 2013 communication at 8-18; October 10, 2013 communication at 9-16, 33-35.

Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publicly
available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6
(TTAB 2014). Citations to the prosecution history, such as the above, are displayed by date
and page number.

5 November 5, 3013 Office Action at 2.
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Even if we had considered the list, our decision would be the same inasmuch as a
mere listing of third-party marks, without any accompanying indication of the goods
and/or services associated therewith, has virtually no probative value. See TBMP
§1208.02 (June 2014) and the authorities cited therein. Further, any expired
registrations or pending applications are of no value. See Action Temporary Services
Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A]
cancelled registration does not provide constructive notice of anything”), and the
applications show only that they have been filed. Interpayment Services Ltd. v.
Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003). As a result, the list of
registrations and applications submitted by Applicant is insufficient to support its
contention that the mark in the cited registration, and in particular, the component
term “mindful,” is weak as applied to the goods recited therein and therefore
entitled only to a narrow scope of protection.
Relationship of the Goods
We turn now to the du Pont factor involving the similarity or dissimilarity of
Applicant’s Chinese medicinal herbs, herbal skin care and aromatherapy products,
and herbal teas, and Registrant’s “vitamins and nutritional supplements.” It is
settled that in making our determination, we must look to the goods as identified in
the application vis-à-vis those recited in the cited registration. See Octocom Sys.,
Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). It is not
necessary that the respective goods be competitive, or even that they move in the
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same channels of trade to support a holding of likelihood of confusion. It is sufficient
that the respective goods are related in some manner, or that the conditions and
activities surrounding the marketing of the goods are such that they would or could
be encountered by the same persons under circumstances that could give rise to the
mistaken belief that they originate from the same producer. Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir.
2012); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
In support of the refusal to register, the Examining Attorney introduced into the
record with the September 24, 2014 Office Action the following definition from
education.yahoo.com of “herb” – “any of various often aromatic plants used
especially in medicine or as seasoning.”6 In addition, the Examining Attorney
introduced into the record with the September 24, 2014 Office Action evidence from
commercial Internet websites suggesting that the same entities provide both
Applicant’s Chinese herbs and herb extracts and Registrant’s “vitamins and
nutritional supplements” under the same marks. These include gnc.com;
swansonvitamin.com; puritan.com; and naturalhealthyconcepts.com.7
In addition, the Examining Attorney made of record with the September 24,
2014 Office action copies of third-party, use-based registrations, of which twelve

6 At 14-15.

7 Id. at 50-86.

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recite goods of the type identified both in the involved application and cited
registration.8 The following examples are illustrative:
Registration No. 1267585 for goods including “vitamin supplements
and medicinal herbs;”

Registration No. 1357556 for goods including “vitamins, minerals,
medicinal herbs, medicinal herbal teas, ginseng, antler, and
pharmaceutical preparations;”

Registration No. 2067695 for goods including “tea, processed ginseng
for use as an herb, herb tea for medicinal purposes, ginseng in the
nature of a nutritional supplement;”

Registration No. 2017559 for “dietary and nutritional supplements,
medicinal herb teas, herb teas;” and

Registration No. 2263361 for goods including “herb teas for medicinal
purposes, herbal supplements, medicated skin lotions containing
herbs, vitamins containing vitamin C and other vitamins.”

These registrations suggest that third parties provide certain of Applicant’s goods
and Registrant’s goods under a single mark. See In re Infinity Broadcasting Corp. of
Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001) (“The registrations show that
entities have registered their marks for both television and radio broadcasting
services. Although these registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them, they nevertheless have
probative value to the extent that they serve to suggest that the services listed
therein, including television and radio broadcasting, are of a kind which may
emanate from a single source.). See, also e.g., In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1259 (Fed. Cir. 2010); In re Anderson, 101 USPQ2d 1912, 1919

8 Id. at 16-50.
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(TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
Based upon the evidence of record, we find that consumers would believe that
certain of Applicant’s goods, such as its herbs, herb teas and medicated cosmetics,
are related to Registrant’s “vitamins and nutritional supplements.” Moreover, it is
not necessary for the Examining Attorney to prove likelihood of confusion with
respect to each item of goods identified in Applicant’s single-class application; if
there is likelihood of confusion with respect to any of Applicant’s identified goods,
the refusal of registration must be affirmed. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The evidence of
record in this case indicates that goods of a type identified in Applicant’s application
and Registrant’s registration are commercially related goods that may be marketed
and sold together under a common designation by third parties, and thus may be
encountered together by consumers.
Channels of Trade and Classes of Purchasers
Where the goods in an application or cited registration are broadly described,
such that there are no restrictions as to trade channels and purchasers, it is
presumed that the identification of goods encompasses not only all goods of the
nature and type described therein, but that the identified goods are offered in all
the normal channels of trade, and that they would be purchased by all the usual
customers. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
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Applicant’s goods, as identified in its application, are “offered exclusively
through owner’s website and retail locations.” However, Registrant’s goods are not
limited to any particular channels of trade, and thus we must assume they are
available in all trade channels common for “vitamins and nutritional supplements”
and also are available to all usual consumers of such goods. It is not clear from the
evidence of record whether Applicant only sells its own products on its website and
at its retail locations. However, even if we accept that Applicant’s goods and
Registrant’s goods are not sold in the same stores and Internet website, the
evidence of record discussed above supports a finding that they will be marketed to
the same class of purchasers, namely, consumers of vitamins, nutritional
supplements and herbal remedies.
Similarities and Dissimilarities of the Marks
We now turn to the du Pont factor of the similarity or dissimilarity of the marks
at issue as to appearance, sound, meaning, and overall commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). As noted above, these are the
involved marks:
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and
Regarding the first du Pont factor, we recognize that the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, and
the analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on the entire marks, not just part of
the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985); see also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ
23, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion”). In addition, we observe that while we have placed the two
marks next to one another for comparison purposes, consumers may not necessarily
encounter the marks in such proximity and must rely upon their recollections
thereof.
In this case, the marks are similar to the extent that “MINDFUL,” the first word
of Registrant’s mark, is identical to the first term in Applicant’s mark, in
appearance and sound. Further, in both marks, the term “MINDFUL” is followed by
terms, respectively, “HERB” and “NUTRIENTS,” that are, at best, highly
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descriptive of the goods identified thereby. Although the design elements in the two
marks are different, they are not sufficient to distinguish the marks. If a mark
comprises both a word and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request the goods or services. In
re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Further, according to
Applicant’s description of the mark, the ginkgo leaf design “resembles a brain.”
Therefore, the design further reinforces the term “mindful.” To the extent
consumers may translate the Chinese characters in the mark into English, the
characters translate to “MINDFUL HERB,” also reinforcing the English wording in
the mark.9 For those consumers who do not translate the Chinese characters, they
provide a point of distinction in appearance between Applicant’s mark and that of
Registrant, but since they will not understand the characters, the characters will
either be ignored or will suggest Chinese or Japanese characters. Applicant argues,
with regard to the design in Registrant’s mark, that “the background is gray and
white, with a gray dot on a white background which presents an impression of the
flag of Japan.”10 Therefore, to the extent that consumers view the design in

9 “Under the doctrine of foreign equivalents, foreign words from common languages are
translated into English to determine genericness, descriptiveness, as well as similarity of
connotation in order to ascertain confusing similarity with English word marks.” Palm Bay
Imports Inc. 73 USPQ2d at 1696. The doctrine is applied “when it is likely that the ordinary
American would ‘stop and translate [the word] into its English equivalent.’” Id., quoting In
re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976). We note however that neither
Applicant nor the Examining Attorney present arguments or evidence regarding the extent
to which consumers would translate into English the Chinese characters in Applicant’s
mark. As a result, we do not apply the doctrine of foreign equivalents in our determination
of the similarity or dissimilarity of the marks.

10 7 TTABVUE 8.

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Registrant’s mark as the flag of Japan, both marks convey an Asian theme. For
those consumers who do not associate the design with the flag of Japan, the simple
circle design is basically a background, and does not serve to distinguish
Registrant’s mark from Applicant’s mark.
Viewed as a whole, Applicant’s mark is more similar to than dissimilar from the
mark in the cited registration in appearance, sound and, in particular, connotation.
As a result, we find that the marks convey commercial impressions that are more
similar than dissimilar.
Conditions of Sale and Sophistication of Purchasers
Applicant introduced the affidavit of its principal, Anna Ma, who attests, inter
alia, as follows:
It is my experience that our consumers will exercise a very high level
of sophistication in their purchase of our goods as they were designed
to attract and appeal to a very specific demographic – that of
consumers looking for remedies provided by traditional Chinese
medicine.11

Applicant’s argument that the involved goods would be purchased solely by
sophisticated consumers is not persuasive. Ms. Ma attests that Applicant’s goods
are marketed to a discrete demographic. However, there is nothing in the
identification of goods, Ms. Ma’s affidavit or elsewhere in the record to indicate that
Applicant’s Chinese medicinal herbs and related herbal products are custom-
formulated products, offered at only high prices and purchased only by consumers
with specialized knowledge. Both Applicant’s goods and Registrant’s goods appear
to be available to anyone seeking them, regardless of their level of knowledge of

11 August 23, 2014 request for reconsideration at 10.
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herbs, vitamins or nutritional supplements. Even if we accept that some consumers
of Applicant’s goods are knowledgeable and sophisticated purchasers of Chinese
herbal remedies, that does not necessarily mean that they are immune from source
confusion since the marks are so similar. In re Decombe, 9 USPQ2d 1812 (TTAB
1988).
Conclusion
We have considered all of the du Pont factors for which Applicant and the
Examining Attorney have introduced evidence and arguments. The rest we treat as
neutral. After considering all of the evidence properly of record, including any
evidence not specifically discussed herein, and arguments pertaining to the du Pont
likelihood of confusion factors, we find that the marks are similar, the goods are
related and appear to be offered to the same classes of purchasers who may or may
not be sophisticated in their purchase thereof. While Applicant’s goods are offered in
discrete trade channels, consumers who purchase Applicant’s goods in Applicant’s
stores and on its website can still encounter Registrant’s goods sold in other stores
and websites. In view thereof, we find that Applicant’s mark, if used in association
with the goods identified in the application, is likely to cause confusion with the
registered mark used in connection with the goods recited in the registration.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.