Suarez Corporation Industries

Trademark Trial and Appeal Board

Jan 16, 2009

No. 77040538 (T.T.A.B. Jan. 16, 2009)

Mailed: January 16, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Suarez Corporation Industries
________

Serial No. 77040538
_______

John P. Murtaugh of Pearne & Gordon LLP for Suarez
Corporation Industries.

Aisha Y. Salem, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hairston, Zervas and Taylor, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Suarez Corporation Industries has filed an application
to register on the Principal Register the mark BIO
SPEEDSLIM (in standard character form) for “Dietary
supplements; Herbal supplements; Mineral supplements;
Nutritional supplements; Vitamin supplements” in
International Class 5.1

1 Serial No. 77040538, filed November 9, 2006, and alleging a
bona fide intention to use the mark in commerce.

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 77040538
2
Registration has been refused on the ground of
likelihood of confusion, mistake or deception under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), with the
mark in U.S. Registration No. 1773374, BIOSLIM, for
“vitamins, food supplements and diet pills” in
International Class 5.2
When the refusal was made final, applicant appealed.
Both applicant and the examining attorney filed briefs. We
affirm the refusal to register.
Before we begin our likelihood of confusion analysis,
we must discuss an evidentiary matter. The examining
attorney has objected to copies of electronic records of
ten third-party registrations (for marks containing the
term “Bio” in combination with other matter) and an
electronic copy of the application record of applicant’s
application Serial No. 78221251, all retrieved from the
Trademark Electronic Search System (TESS) and submitted by
applicant for the first time with its appeal brief.
Insofar as the registrations are concerned, the Board notes
applicant’s reference to them in its response to the First
Office Action as well as the examining attorney’s
admonition in her Final Office Action that the Board does
not take judicial notice of such registrations, and that to

2 Registration No. 1773374, issued May 25, 2003; renewed.
Ser No. 77040538
3
make such registrations proper evidence of record,
applicant must file soft copies of the registrations or
their electronic equivalent. We also point out that 37
C.F.R. § 2.142(d) provides, in part, that “[t]he record in
the application should be complete prior to the filing of
an appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal
is filed.” As such, it was incumbent upon applicant to
make the registrations and application of record prior to
the filing of the appeal. Applicant did not do so. We
thus find the introduction of the registrations and
application with applicant’s brief untimely.
Accordingly, the examining attorney’s objection is
sustained and neither the registrations nor the application
have been considered in the decision herein.3

3 We add that even if we had considered the registrations, our
decision would be the same. While third-party registrations may
be used to demonstrate that a portion of a mark is suggestive or
descriptive, they are not evidence that the marks shown therein
are in use or that the public is aware of them. See AMF
Incorporated v. American Leisure Products, Inc., 177 USPQ 268,
269 (CCPA 1973)[“little weight is to be given such registrations
in evaluating whether there is likelihood of confusion.”].
Moreover, our review of such registrations reveals that none of
the marks in the third-party registrations is as similar to
registrant’s mark as is applicant’s mark.
Similarly, as discussed infra, consideration of applicant’s
application Serial No. 78221251 would not change our decision
herein.
Ser No. 77040538
4
Turning now to the merits of the appeal, 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 also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the goods. Since
the examining attorney focused her discussion on vitamins
and food supplements in the cited registration, we will do
the same. The examining attorney argues that “the goods
are substantially related in that registrant’s
identification of goods is broad enough to encompass
applicant’s goods. Specifically, registrant’s vitamins and
food supplements could easily encompass applicant’s
dietary, herbal, mineral, nutritional and vitamin
supplements.” (Br. unnumbered p. 7.) Applicant does not
Ser No. 77040538
5
argue otherwise. The examining attorney attached to her
brief a definition of the term “dietary supplement” from
Merriam Webster Online, of which we take judicial notice.4
The term is defined as “a product taken orally that
contains one or more ingredients (as vitamins or amino
acids) that are intended to supplement one’s diet and are
not considered food.” Based on this definition, we
conclude that registrant’s vitamins and food supplements
encompass applicant’s dietary, herbal, mineral, nutritional
and vitamin supplements.
Further, in the absence of any limitations to the
goods recited in applicant’s application and the cited
registration, we must presume that both applicant’s and
registrant’s goods will be offered in the same channels of
trade, e.g., drug stores, specialty nutrition stores and
grocery stores, and to the same classes of purchasers
seeking such supplements. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). In view of the above, the du Pont factors
of the relatedness of the goods and the channels of trade
strongly favor a finding of likelihood of confusion.

4 From the website www.merriam-webster.com. The Board may take
judicial notice of dictionary definitions, including online
dictionaries which exist in printed format. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002). See also
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 77040538
6
We now consider applicant's mark BIO SPEEDSLIM and
registrant's mark BIOSLIM. In determining the similarity
or dissimilarity of the marks, we must consider the marks
in their entireties in terms of sound, appearance, meaning
and commercial impression. See Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689
(Fed. Cir. 2005). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
their entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general, rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). In addition,
when marks would appear on virtually identical goods, as
they do here, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant maintains that the marks differ in
appearance, sound, meaning and commercial impression
because of the “distinct and obvious differences in the two
marks; that is, applicant’s mark consists of three
Ser No. 77040538
7
components, BIO, SPEED and SLIM, whereas registrant’s mark
simply has the two components BIO and SLIM.” (Applicant’s
br. p. 3). The examining attorney, on the other hand,
contends that “[t]he addition of the term ‘SPEED’ in
applicant’s mark does not obviate the similarity between
the marks.” (Examining attorney’s br. at unnumbered p. 4)
We agree with the examining attorney. Because both of
the involved marks include the terms BIO and SLIM, in the
same order, there are significant similarities in terms of
appearance, sound, connotation and commercial impression.
The addition of the space and the term SPEED to applicant’s
mark does not serve to distinguish the marks to avoid a
likelihood of confusion. With particular regard to the
connotation of the marks, the word SPEED, as used in
applicant’s mark, will be regarded as modifying the terms
“bio” and “slim.” The word is defined, in pertinent part,
as “to move, go, or happen fast, or to cause (something) to
happen fast.”5 Under this definition, the word SPEED, when
used with BIO and SLIM, may suggest that applicant’s
supplements produce fast results. However, even if we were
to assume that purchasers did note the difference in the
marks because of the word SPEED in applicant’s mark, in

5 We take judicial notice of the definition of “speed” taken
from the Cambridge Dictionary of American English, and retrieved
Ser No. 77040538
8
view of the strong similarities stemming from the identical
terms BIO and SLIM, and in view of the fact that the marks
are used on virtually identical products, purchasers are
likely to believe that they are variants of each other and
that they identify products emanating from the same source.
The factor of similarity of the marks thus favors a
finding of likelihood of confusion.
Applicant also argues that because there are many
other “BIO-type” marks registered, the cited BIOSLIM mark
is a very weak mark entitled to a very narrow scope of
protection. As previously discussed, there is no evidence
of record supporting this position. Moreover, even if
“BIOSLIM” was considered to be weak due to an asserted
degree of common usage of marks including “BIO,” even weak
marks are entitled to protection where confusion is likely.
See Matsushita Electric Company v. National Steel Co., 442
F.2d 1383, 170 USPQ 98, 99 (CCPA 1971) [“Even though a mark
may be ‘weak’ in the sense of being a common word in common
use as a trademark, it is entitled to be protected
sufficiently to prevent confusion from source arising”].
Here, notwithstanding any alleged weakness in the
registered mark, it is still similar in sound, appearance,

at Cambridge Dictionaries Online,
http://dictionary.cambridge.org/define.asp?key+speed*1+0&dect+A.
Ser No. 77040538
9
connotation and commercial impression to applicant’s mark.
We accordingly find this du Pont factor is neutral.
As a final matter, applicant argues that it “already
owns U.S. Application No. 78224251 for SPEED SLIM for
dietary and nutritional supplements, which mark has been
allowed by the U.S. Trademark Office” and that its current
application for the mark BIO SPEEDSLIM “is simply an
extension of applicant’s prior SPEED SLIM mark.” (Br. p.
4). Applicant goes on to argues that “since there was no
likelihood of confusion between applicant’s SPEED SLIM mark
and the prior BIOSLIM mark, for the same reasons there is
no likelihood of confusion between applicant’s BIO
SPEEDSLIM mark and the cited BIOSLIM mark.” (Id.) We find
this argument unavailing. First, as noted, the asserted
application is not of record. Second, even if the
application was of record, applicant’s SPEED SLIM mark is
not as similar to the cited mark as it its involved BIO
SPEEDSLIM mark. Last, and more importantly, applicant’s
ownership of another mark that somewhat resembles its
applied-for mark is not relevant to the specific likelihood
of confusion issue involving the registered mark BIOSLIM.
See, Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60
USPQ2d 1733, 1737 (TTAB 2001); Baroid Drilling Fluids v.
Sun Drilling Products, 24 USPQ2d 1048, 1052 (TTAB 1992);
Ser No. 77040538
10
and In re Lar Mor International, Inc., 221 USPQ 180, 183
(TTAB 1983).
After careful consideration of the arguments and the
evidence of record, we conclude that purchasers familiar
with registrant’s vitamins and food supplements sold under
the BIOSLIM mark would be likely to believe, upon
encountering applicant’s mark BIO SPEEDSLIM for dietary,
herbal, mineral, nutritional and vitamin supplements, that
such goods emanate from or are sponsored by or affiliated
with the same source.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.