Symbio Herborn Group GmbH & Co.

Trademark Trial and Appeal Board

Sep 9, 2003

No. 75583411 (T.T.A.B. Sep. 9, 2003)

Hearing: Mailed:
June 25, 2003 September 9, 2003
Paper No. 21
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Symbio Herborn Group GmbH & Co.
________
Serial No. 75/583,411
_______
William H. Holt for Symbio Herborn Group GmbH & Co.
Carol A. Spils, Trademark Examining Attorney, Law Office
105 (Tom Howell, Managing Attorney).
_______
Before Hanak, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Symbio Herborn Group GmbH & Co. seeks registration on
the Principal Register for the mark shown below:
for “pharmaceutical and veterinary products, namely,
biological cultures and media for use in the
production of nutritional additives for medical, for
veterinary and for sanitary purposes and for the
care of health, such nutritional additives
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/583,411
- 2 -
consisting of or containing bacterial and/or enzyme
preparations; vitamin preparations, roughage and
mineral-food supplements; namely, nutritional
supplements, vitamins, mineral supplements and
nutritional additives for animal and human food;
preparations of trace elements for human and animal
use, namely, nutritional supplements and/or trace
elements for medical, for veterinary, for sanitary
purposes and for the care of the health,”1
in International Class 5.
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
SYMBIO registered for “Drug [preparation in capsule form]
product for veterinary use to combat infection,” also in
International Class 5,2 as to be likely to cause confusion,
to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal and both appeared before the
Board at the oral hearing requested by applicant.
We affirm the refusal to register.
1 Application Serial No. 75/583,411 was filed on November 5,
1998, based upon German Registration No. 1,128,662, in accordance
with §44(e) of the Trademark Act. Applicant has disclaimed the
term LACT apart from the mark as shown.
2 Registration No. 756,724, issued on the Principal Register
on September 17, 1963; renewed.
Serial No. 75/583,411
- 3 -
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
As to the differences in the two marks, applicant
argues as follows:
“… [I]t is clear that the differences
between applicant’s mark SYMBIO LACT (and
Leaf Design) and the cited mark SYMBIO, per
se, are distinct from each other in all
three of the trilogy of sound, appearance
and meaning…”
(applicant’s appeal brief, p. 5).
By contrast, the Trademark Examining Attorney argues
as follows:
“Applicant’s mark simply adds the term LACT
to the dominant term SYMBIO in the
registrant’s mark. LACT is descriptive and
disclaimed. The mere addition of a term to
a registered term is not sufficient to
overcome a likelihood of confusion under
Section 2(d)…”
(Trademark Examining Attorney’s appeal brief, p. 5).
Serial No. 75/583,411
- 4 -
We agree with the position of the Trademark Examining
Attorney that these marks are confusingly similar.
Clearly, marks must be considered in their entireties,
including any descriptive matter. Nonetheless, our
principal reviewing court has indicated that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, “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 consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
according to the court, “that a particular feature is
descriptive … with respect to the involved goods or
services is one commonly accepted rationale for giving less
weight to a portion of a mark ….” Id. In the instant
case, SYMBIO is registrant’s entire mark, and applicant has
simply added a descriptive term to this matter – placing
the term LACT directly below the word SYMBIO. Similarly,
while the letter “Y” in applicant’s SYMBIO with its
elongated tail and leaf design does create a somewhat
different appearance, we find that it is not significant
enough to obviate the confusing similarity of these two
marks.
Serial No. 75/583,411
- 5 -
We turn then to the similarity in the nature of the
goods as described in the application and cited
registration. The goods of the cited registration are
antibiotic drugs used to kill bacteria in animals. The
goods listed in the involved application comprise a much
broader range of health and medicinal products, but include
veterinary products designed to improve the nutrition and
health of animals. Unlike registrant’s antibiotics, these
therapeutic products are described as containing beneficial
bacteria.
Of course, it is not necessary that the respective
goods be identical or even competitive in order to support
a finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner, or
that the circumstances surrounding their marketing are
such, that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective goods. See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d
Serial No. 75/583,411
- 6 -
1386 (TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
Accordingly, we find that these respective goods are
not competitive or overlapping. In fact, while
registrant’s goods are designed to combat harmful bacteria,
applicant’s goods rely upon helpful bacteria. Nonetheless,
we find that both include pharmaceutical preparations
intended for use with animals. As such, these related
goods could well be encountered by one caring for animals
in such a way that it might give rise, because of the
similarity of these marks, to a mistaken belief that there
is a connection between the sources of these respective
goods.
Turning to the du Pont factors dealing with the
similarity or dissimilarity of established, likely-to-
continue trade channels as well as the conditions under
which and buyers to whom sales are made, we must presume
that applicant’s goods and registrant’s goods will move
through all of the normal channels of trade to all of the
usual purchasers for goods of the types identified. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 UPSQ2d 1813, 1815, (Fed. Cir. 1987). There is
no limitation inherent in these goods, so we must presume
that the purchasers of applicant’s and of registrant’s goods
Serial No. 75/583,411
- 7 -
include ordinary consumers. Hence, in looking to these two
related du Pont factors, we conclude that the channels of
trade and classes of purchasers will be the same.
As to the du Pont factor that focuses on the number
and nature of similar marks in use on similar goods,
applicant argues “… that the mark SYMBIO is a weak mark in
that a considerable number of Registrations have been
granted for the identical mark and for variations of the
word …. Thus it appears that marks comprised of SYMBIO,
plus a distinguishing suffix, are appropriate for
registration.” (Applicant’s brief, p. 4).
Although applicant has attached to its brief a simple
listing of trademark registrations and pending applications
containing SYMBIO- formative marks, this does not provide
any information about the goods or services listed in these
applications and registrations. Certainly, many of these
marks on their face do not separate out the word SYMBIO
from other letters or words in the composite as does
applicant’s special form drawing. Moreover, even if we had
much more detail on the goods or services involved in the
subsisting registrations, these registrations are not
evidence that the marks shown therein are in commercial use
or that the public is familiar with them. Finally, to the
extent several other SYMBIO-formative marks owned by
Serial No. 75/583,411
- 8 -
applicant have been handled differently than the instant
application, they may well demonstrate that among third-
party marks on the federal trademark register, SYMBIO-
marks are relatively weak when applied to pharmaceutical
preparations directed to humans but not weak as to
pharmaceutical products within the ordinary channels of
trade directed to the veterinary marketplace. In any case,
while the SYMBIO prefix may well have a suggestive
connotation in the pharmaceutical field, on this record, we
cannot agree with applicant that SYMBIO has been shown to
be a weak mark subject to a narrow scope of protection for
veterinary products.
In conclusion, we find that the respective goods are
related and move in the same channels of trade to the same
ordinary consumers, that the two marks are confusingly
similar, and that SYMBIO is not a weak mark for the goods
identified in the cited registration.
Decision: The refusal to register is hereby affirmed.