Royal Crown Co., Inc.v.Total Body Research & Development Ltd.

Trademark Trial and Appeal Board

Jan 13, 2000

No. 91103014 (T.T.A.B. Jan. 13, 2000)

Paper No. 17
EWH/MM
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
______
Royal Crown Company, Inc.
v.
Total Body Research & Development Ltd.
_____
Opposition No. 103,014
to application Serial No. 74/676,665
filed on May 15, 1995
_____
Parker H. Bagley of Baker & Botts, LLP for Royal Crown
Company, Inc.
Charles T. Brodsky for Total Body Research & Development
Ltd.
______
Before Seeherman, Hanak and Holtzman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Total Body Research & Development Ltd. (applicant)
seeks to register in typed drawing form DIET RIGHT SYSTEMS
for “food supplements containing minerals, vitamins, and
proteins.” The intent-to-use application was filed on May
15, 1995.
Opposition No. 103,014
2
Royal Crown Company, Inc. (opposer) filed a notice of
opposition alleging that long prior to 1995 it made
continuous use of the mark DIET RITE in connection with soft
drinks (including dietetic soft drinks). Continuing,
opposer alleged that “applicant’s mark is deceptively
similar to opposer’s mark so as to cause confusion and lead
to deception as to the sponsorship of applicant’s goods
rendered under applicant’s mark.” (Notice of opposition
paragraph 6).
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition, including in
particular those contained in paragraph 6.
The record in this case consists of the testimony
deposition (with exhibits) of Jeffrey H. Spencer, opposer’s
senior vice-president of marketing. Applicant made of
record no evidence.
Opposer filed a brief. Applicant did not. Neither
party requested a hearing.
Opposer has established that priority of use rests in
its favor in that it has made continuous use of the mark
DIET RITE in connection with dietetic soft drinks since at
least 1983. (Spencer deposition page 17).
In any likelihood of confusion analysis, two key
considerations are the similarities of the marks and the
similarities of the goods. Federated Foods, Inc. v. Fort
Opposition No. 103,014
3
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by Section 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Considering first the marks, we note that applicant has
essentially taken the entirety of opposer’s mark DIET RITE;
altered the spelling of the second word; and added the word
SYSTEMS thereto. The word SYSTEMS has very limited source
identifying significance, and it has been quite properly
disclaimed by the applicant. It is well established “that
one may not appropriate the entire mark of another and avoid
a likelihood of confusion by the addition thereto of …
subordinate matter.” Bellbrook Dairies v. Hawthorn-Melody
Dairy, 253 F.2d 431, 117 USPQ 213, 214 (CCPA 1958). We find
that this legal proposition likewise applies to a situation,
as is the case here, when one appropriates the entire mark
of another and alters it ever so slightly by changing the
spelling of RITE to RIGHT.
Moreover, it must be kept in mind that applicant seeks
to register DIET RIGHT SYSTEMS in typed drawing form. This
means that applicant’s mark is “not limited to the mark
depicted in any special form.” Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). If
applicant were to obtain a typed drawing registration of
Opposition No. 103,014
4
DIET RIGHT SYSTEMS, it would obtain the benefits of federal
registration and yet be able to depict its mark with the
DIET RIGHT portion in large lettering on one line and the
SYSTEMS portion in much smaller lettering on a second line.
When so depicted, applicant’s mark would, in terms of visual
appearance, be extremely similar to opposer’s mark.
Moreover, no matter how depicted, applicant’s mark is
extremely similar to opposer’s mark in terms of
pronunciation and connotation in that both marks consist of
or begin with the two words DIET RIGHT/RITE.
Turning to a consideration of the goods, it should be
noted at the outset that when the marks are extremely
similar, as is the case here, the degree of similarity of
the goods necessary to support a finding of likelihood of
confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993).
Since at least 1983, opposer has promoted its DIET RITE
dietetic soft drinks as healthy beverages containing no
sodium, no caffeine and no calories. It has extensively
advertised its DIET RITE dietetic soft drinks in health
magazines such as American Health Magazine for Women and
Walking. Moreover, it has advertised its DIET RITE dietetic
soft drinks on television in connection with exercise
(workout) shows. In addition, opposer has marketed its DIET
RITE dietetic soft drinks by offering to consumers who
Opposition No. 103,014
5
purchase said soft drinks coupons entitling the consumers to
discounts on vitamin tablets. In short, opposer’s DIET RITE
dietetic soft drinks are marketed not only to consumers
interested in losing weight or maintaining their weight, but
also to consumers who are interested in enjoying a healthy
lifestyle.
As previously noted, applicant made of record no
evidence. In addition, there is nothing to indicate that
applicant has yet to begun use of its mark DIET RIGHT
SYSTEMS in connection with food supplements containing
minerals, vitamins and proteins. However, just from the
description of applicant’s goods in the application, it is
clear that said food supplements would also appeal to
consumers interested in a healthy lifestyle as well as
consumers who, while dieting, wish to make certain that they
get an adequate supply of minerals, vitamins and proteins.
In short, applicant’s goods and opposer’s dietetic soft
drinks are extremely similar in that they are both dietetic
products which appeal to the same types of consumers. A
consumer interested in losing weight may well choose to
drink DIET RITE dietetic soft drinks and at the same time
take DIET RIGHT SYSTEMS food supplements containing
minerals, vitamins and proteins in order to make certain
that they get an adequate supply of these essential
nutrients while dieting. Moreover, given the fact that
Opposition No. 103,014
6
opposer has promoted its DIET RITE dietetic soft drinks by
offering discount coupons for the purchase of vitamins
tablets, it is quite plausible that a consumer familiar with
DIET RITE dietetic soft drinks would, upon seeing DIET RIGHT
SYSTEMS food supplements containing vitamins, assume that
the latter product was sponsored by, endorsed by or
otherwise affiliated with the makers of DIET RITE dietetic
soft drinks.
Of course, to the extent there exists any doubt on the
issue of likelihood of confusion, said doubt must be
resolved in favor of opposer as the prior user.
Decision: The opposition is sustained.
E. J. Seeherman
E. W. Hanak
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial and
Appeal