SALUS Haus Dr. med. Otto Greither Nachf. GmbH & Co. KGv.Salu International LLC

Trademark Trial and Appeal Board

Nov 6, 2013

No. 91198619 (T.T.A.B. Nov. 6, 2013)

Mailed:
November 6, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________

SALUS Haus Dr. med. Otto Greither Nachf. GmbH & Co. KG
v.
Salu International LLC
________
Opposition No. 91198619
to application Serial No. 85007262
_______
Charles S. Murray, Jr. of Thomas Kayden Horstemeyer Risley LLP for
SALUS Haus Dr. med. Otto Greither Nachf. Gmbh & Co. KG.
J.T. Hollin, attorney at law, for Salu International LLC.
_______
Before Seeherman, Lykos and Gorowitz, Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:
On April 6, 2010, Salu International LLC (“applicant”) filed an applica-
tion to register the mark displayed below

This Opinion is Not a
Precedent of the TTAB
Opposition No. 91198619

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for “herbal supplements” in International Class 5.1 The application includes a
disclaimer of the word “health.”
SALUS Haus Dr. med. Otto Greither Nachf. GmbH & Co. KG (“oppos-
er”) opposed the registration of applicant’s mark on the grounds of priority of
use and likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), with opposer’s previously used and registered mark SALUS
in standard character format for “dietary supplements and dietetic foods and
beverages, namely, tonics, plant and herb extracts in liquid form; tea” in In-
ternational Class 30.2
In its answer to the amended notice of opposition, applicant admitted
the allegations relating to opposer’s ownership of its pleaded registration but
otherwise denied the salient allegations therein. Answer ¶4.
Both opposer and applicant filed briefs.3
I. The Record
The record includes the pleadings, and pursuant to Trademark Rule
2.122(b), applicant’s application file.

1 Application Serial No. 85007262, filed pursuant to Section 1(a) of the Trademark
Act, alleging January 1, 2010 as the date of first use anywhere and in commerce.

2 Registration No. 1740638, registered on December 15, 1992 on the Principal Regis-
ter. The registration alleges 1967 as the date of first use anywhere and in commerce;
second renewal. The registration includes a statement that the term “salus” trans-
lates to “health.”

3 Applicant’s motion to accept its late-filed brief is granted as conceded. See Trade-
mark Rule 2.127(a).
Opposition No. 91198619

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In this particular case, both parties submitted noncomplying evidence.
A party may not reasonably presume evidence is of record when that evidence
is not offered in accordance with the rules. Original Appalachian Artworks
Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB 1987).
Opposer submitted a notice of reliance on December 28, 2012. However,
because it was submitted after the close of opposer’s testimony period, it is un-
timely and has been given no consideration.4 See Trademark Rule 2.123(1);
Baseball America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1846 n.8
(TTAB 2004) (materials submitted outside of applicant's assigned testimony
period and which failed to comply with the Board's evidentiary rules given no
consideration). In addition, we note that opposer attached exhibits to its brief.
The materials attached to opposer’s brief were not properly introduced during
trial and therefore, with the exception of the online dictionary definitions of
“salus” which applicant discussed in its brief, they have been given no consid-
eration. See Swiss Watch International Inc. v. Federation of the Swiss Watch
Industry, 101 USPQ2d 1731, 1734-35 (TTAB 2012). We treat the online dic-
tionary definitions of “salus” as stipulated into the record.
Applicant, in lieu of submitting any evidence during its assigned testi-
mony period, also attached exhibits to its main brief. As such, the materials
are not properly made of record, and have been given no consideration. See id.

4 As reset, opposer’s main testimony period closed December 24, 2012.
Opposition No. 91198619

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In reaching our decision, we have not considered the statements made
by either opposer or applicant in their respective briefs that are not supported
by evidence in the record.
II. Standing
In view of applicant’s admission in its answer that opposer is the owner
of a valid and subsisting registration for the mark SALUS for goods identified
as “dietary supplements and dietetic foods and beverages, namely, tonics,
plant and herb extracts in liquid form; tea,” opposer has established its stand-
ing to bring this case. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
III. Section 2(d) Claim
We will now consider opposer’s Section 2(d) claim.
A. Priority
With regard to opposer’s pleaded mark SALUS, priority is not in issue
in view of applicant’s admission in its answer that opposer owns a valid and
subsisting registration for the mark for the goods identified therein. Cf. King
Candy, Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
B. Likelihood of Confusion
The remaining issue in this case is likelihood of confusion. As noted
earlier, applicant did not submit evidence during its assigned testimony peri-
Opposition No. 91198619

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od; nor are we considering the materials submitted with applicant’s brief.
Nonetheless, opposer, as plaintiff in this proceeding, bears the burden of es-
tablishing that there is a likelihood of confusion by a preponderance of the ev-
idence.
We base our determination under Section 2(d) on an analysis of all of
the probative evidence of record bearing on a likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“du Pont”). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all of the du Pont factors are
relevant to every case, and only factors of significance to the particular mark
need be considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus … on disposi-
tive factors, such as similarity of the marks and relatedness of the goods.”
Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380
(Fed. Cir. 2002) (citation omitted). These factors, and the other relevant
du Pont factors, are discussed below.
First, we turn to the du Pont factor regarding the similarity or dissimi-
larity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). “[T]he test is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather whether the marks
Opposition No. 91198619

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are sufficiently similar in terms of their overall commercial impression so that
confusion as to the source of the goods offered under the respective marks is
likely to result.” H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727
(TTAB 2008). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In
re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975).
Applicant contends that its “logo containing stylized artistic render-
ings” coupled with the additional phrase “life. health. wealth.” in its mark is
sufficient to distinguish it from “the mere typeface” of opposer’s SALUS mark.
Applicant’s Brief, p. 5. Applicant also argues that the additional phrase in its
mark makes a “significant difference” (Id.) in the sound, appearance, and
meaning of the mark because the wording “immediately brings to a viewer’s
mind a myriad of possibilities,” whereas opposer’s mark SALUS by itself “cre-
ates no connotation whatsoever.” Id. at 8.
We disagree. “[A] particular feature of a mark may be more obvious or
dominant, and therefore, when determining likelihood of confusion, greater
weight ought to be given to the force and effect of such a feature.” Kangol Ltd.
v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir.
1992) (internal citations omitted). The term “salu” as it appears in applicant’s
composite mark is more likely to be noted and remembered by prospective
consumers given its display as the first element of the mark in larger, more
Opposition No. 91198619

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prominent lettering in relation to the phrase “life. health. wealth.” which ap-
pears in smaller size font. See Palm Bay Imports, 73 USPQ2d at 1692
(“Veuve” is the most prominent feature of the mark VEUVE CLICQUOT be-
cause it is the first word in the mark.). “In the case of marks which consist of
words and a design, the words are normally accorded greater weight because
they would be used by purchasers to request the goods.” In re Dakin’s Minia-
tures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils,
Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). We find no reason to depart
from this well-established principle in this case. As such, we find that “salu” is
the dominant feature of applicant’s mark.
In addition, the term “salu” as it appears in applicant’s mark is a close
approximation of opposer’s standard character word mark SALUS, differing
only by the final letter “s.” The two words are therefore almost the same in
sound and appearance. Furthermore, because opposer has registered its mark
in standard character format, opposer may use its mark in any stylized dis-
play or color scheme, including one that is identical to that used by applicant.
See Trademark Rule 2.52(a). For these reasons, the involved marks are simi-
lar in sound and appearance.
With regard to the connotation and commercial impression of the
marks, opposer’s registration states that the word “salus” translates as
“health.” The record shows that the word “salu” is Latin for “health, safety,
Opposition No. 91198619

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well-being.” Opposer’s Brief, Ex. 2 (definition of “salu” obtained from
www.freedict.com). As used in connection with both applicant’s and opposer’s
goods, the significance of the terms “salu” and “salus” is virtually identical
and highly suggestive in relation to the parties’ goods. Indeed, the tag line of
“health. safety. wealth.” in applicant’s mark is almost identical to this transla-
tion.
We acknowledge the differences in wording and presence of the design
element in applicant’s mark. Nonetheless, it is more likely that prospective
consumers will not regard these distinctions as identifying different sources
for the goods, and instead view the marks as indicating origin in the same
source, given that they either contain or consist solely of the nearly identical
literal element “salu” or “salus.” As stated by our primary reviewing court, the
Court of Appeals for the Federal Circuit, “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.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). We therefore find that opposer’s mark and
applicant’s mark are similar in appearance, sound, connotation and commer-
cial impression. This first du Pont factor weighs in favor of finding a likeli-
hood of confusion.
The next step in our analysis is a comparison of the goods identified in
applicant’s application vis-à-vis the goods identified in opposer’s pleaded reg-
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istration. Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846; Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987). Applicant argues that because opposer’s goods are registered
in a different international class, they are “substantially and materially dif-
ferent and unrelated” to applicant’s goods. Applicant’s Brief, p. 6. Applicant
also contends that opposer presented no evidence that the parties’ respective
goods travel in the same trade channels or target the same consumers.
We are not persuaded. Classification is a purely administrative func-
tion to determine the number of filing fees to be paid, and has no bearing on
the likelihood of confusion analysis. See 15 U.S.C. § 1112. Additionally, it is
well established that the respective goods do not have to be identical or even
competitive in order to determine that there is a likelihood of confusion; ra-
ther, it is sufficient that the respective goods are related in some manner, or
the conditions surrounding their marketing are such that the goods will be
encountered by the same purchasers under circumstances that would give rise
to the mistaken belief that they originate from the same source. Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012). Applicant’s goods identified as “herbal supplements” are at the
very least highly related (if not legally identical to) to opposer’s “dietary sup-
plements and dietetic foods and beverages, namely, tonics, plant and herb ex-
tracts in liquid form.” Both parties are selling supplements, whether in liquid
or herbal form, which will appeal to the same type of consumer. We recognize
Opposition No. 91198619

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that the evidence regarding the relatedness of the goods comes solely from the
goods as identified in opposer’s registration and applicant’s application, but
this is sufficient. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding the Board erred in con-
cluding that there was insufficient evidence of relatedness because it "did not
consider the important evidence already before it, namely the ITU application
and [opposer’s] registrations”). As such, applicant’s goods as identified in its
application and opposer’s dietary supplements identified in its registration are
at a minimum closely related.
Furthermore, because the identification of goods in the involved appli-
cation and registration are unrestricted as to trade channels, we must pre-
sume that both parties’ products will be sold to the public at large. See Pack-
ard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354
(Fed. Cir. 2000) (“When the registration does not contain limitations describ-
ing a particular channel of trade or class of customer, the goods or services are
assumed to travel in all normal channels of trade.”). See also In re Elbaum,
211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc.,
258 F.2d 956, 119 USPQ 139 (CCPA 1958). Based on the nature of the goods
as identified in the respective application and registration, they are goods that
will be sold to the public at large, and therefore the same classes of consumers
will encounter them. These factors of the similarity of the goods and the
channels of trade also weigh in favor of finding a likelihood of confusion.
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Neither opposer nor applicant has submitted argument as to any other
du Pont factors, nor is there any evidence relating to them; to the extent that
any are relevant, we have treated them as neutral.
In view of the similarities of the marks in sound, appearance, meaning
and commercial impression, and the fact that applicant's goods are closely re-
lated to opposer's goods, we find that applicant's use of its mark is likely to
cause confusion with opposer’s registered mark. To the extent that there is
any doubt on the issue of likelihood of confusion, we must resolve such doubt
in favor of opposer. A new entrant presenting a new mark for registration has
an obligation to avoid confusion with established marks in the same market.
Bridgestone Americas Tire Operations LLC v. Federal Corp., 673 F.3d 1330,
102 USPQ2d 1061, 1063 (Fed. Cir. 2012), citing Hewlett-Packard Co. v. Pack-
ard Press, Inc., 62 USPQ2d at 1004 (“This court resolves doubts about the
likelihood of confusion against the newcomer because the newcomer has the
opportunity and the obligation to avoid confusion with existing marks.”).
Decision: The opposition is sustained.