The Mentho-latum Company

Trademark Trial and Appeal Board

Dec 19, 2000

No. 75589320 (T.T.A.B. Dec. 19, 2000)

Paper No. 9
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re The Mentholatum Company
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Serial No. 75/589,320
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Richard A. Sharpe of Watts Hoffmann Fisher & Heinke Co. L.P.A.
for The Mentholatum Company.
Andrea P. Hammond, Trademark Examining Attorney, Law Office
115 (Angela Lykos, Acting Managing Attorney).
_______
Before Hanak, Quinn and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application has been filed by The Mentholatum Company
to register the mark STOP IT COLD for “vitamin supplements in
beverage form.”1
The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, if applied to applicant’s goods, would so
resemble the previously registered mark STOPS PAIN COLD for
“pain relieving gel”2 as to be likely to cause confusion, to
cause mistake or to deceive.
1 Application Serial No. 75/589,320, filed November 16 1998, alleging
a bona fide intention to use the mark in commerce.
2 Registration No. 2,234,542, issued March 23, 1999.
12/19/00
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/589,320
2
When the refusal was made final, applicant appealed.
Applicant and the Trademark Examining Attorney have filed
briefs. An oral hearing was not requested.
We reverse the refusal to register.
Applicant contends that its mark is distinct from the
cited mark as to sound, appearance and meaning, resulting in a
very different overall commercial impression. With respect to
the goods, applicant argues it is most compelling that “[p]ain
medication gels and vitamin supplements in beverage form are
significantly different goods…” (Applicant’s brief, pp. 6-7).
Applicant also states that the goods travel in different
channels of trade to different classes of purchasers inasmuch
as registrant’s goods “are only available to health care
professionals at this time.” (Applicant’s brief, p. 9).
The Examining Attorney maintains that the marks are
similarly constructed:
…[B]oth marks consist of three word slogans
with the same syntax of ‘STOP’ or ‘STOPS’
appearing first and COLD appearing last. The
examining attorney reiterates that the
Applicant merely changes the word ‘pain’ to
‘it,’ and deletes the ‘s’ from the word
‘stops.’ In viewing the mark in its entirety,
the phrase ‘STOP IT COLD’ and ‘STOPS PAIN COLD’
have a similar connotation, i.e., stopping
whatever ‘it’ is. (Trademark Examining
Attorney’s brief, unnumbered p. 3).
As to the goods, the Trademark Examining Attorney points
out correctly that registrant’s identification of goods does
Serial No. 75/589,320
3
not contain any limitations bearing on channels of trade or
classes of purchasers. The application file contains a dozen
federal registrations where third parties allegedly adopted
and used the same mark “on or in conjunction with vitamin
supplements and pain relieving gels/medications/analgesics.”
(Trademark Examining Attorney’s brief, unnumbered p. 6).
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. See
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).
We first turn to consider the goods. It is well settled
that the issue of likelihood of confusion between applied-for
and registered marks must be determined on the basis of the
goods as they are identified in the involved application and
cited registration, rather than on what any evidence may show
as to the actual nature of the goods, their channels of trade
and/or classes of purchasers. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
The goods need not be identical or even competitive in nature
Serial No. 75/589,320
4
to support a finding of likelihood of confusion. Instead, it
is sufficient that the goods are related in some manner and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with
the same producer or provider. See In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
On this record, without proof of applicant’s allegations about
registrant’s restrictive channels of trade, we must agree with
the Trademark Examining Attorney that these items would appear
to travel in the same channels of trade to the same classes of
customers.
On the other hand, as argued by applicant in the present
case, these respective goods have distinctly different
properties. There is certainly no per se rule that all items
sold in a drug store, for example, are related for purposes of
a likelihood of confusion analysis. One item is a topical
balm while the other is a beverage to be ingested. The mark
in the cited registration is used on one specific item –- pain
relieving gels. Applicant intends to use its mark on another
rather narrow category of item -- vitamin supplements in
beverage form. On this point, we agree with applicant that it
Serial No. 75/589,320
5
is unlikely they would be sold in the same sections of a
retail store.
The Trademark Examining Attorney has submitted for the
record a dozen third-party registrations where a single
registrant had adopted a single mark and applied it to topical
analgesics and to vitamins or dietary supplements. The
Trademark Examining Attorney states that these are merely
“representative” of the register generally. However, we agree
with applicant that this listing is not all that probative
inasmuch as many of these marks are indeed house marks (e.g.,
CVS, Walgreens, Phar-Mor, Stanley, etc.) covering a wide
variety of pharmacy and non-pharmacy items.
In sum, we find that while the goods are somewhat
related, this factor is largely neutral.
We thus turn to focus our attention on a comparison of
applicant’s mark STOP IT COLD and registrant’s STOPS PAIN COLD
mark.
Applicant argues that its mark has a different meaning in
light of the fact that its goods are a cold or flu product:
Applicant's mark, STOP IT COLD, is to be used
on vitamin supplements in beverage form and
sold to cold and flu sufferers. Thus the
"COLD" in the mark STOP IT COLD when viewed in
connection with its goods cleverly connotes or
suggests the common cold and cold-like
symptoms. By contrast, STOPS PAIN COLD is used
on pain relieving gels. As such, the “COLD” in
STOPS PAIN COLD connotes the sensation received
Serial No. 75/589,320
6
as a result of using the Registrant’s pain
relieving gels… Registrant’s pain relieving
gels provide a cold bodily sensation to the
user. Hence, the Registrant’s use of the word
“COLD” is descriptive of the sensation given to
the user in the area of the body treated with
Registrant’s pain relieving gel. (Applicant’s
brief, p. 4).
Both marks appear to be a play on the term “stopping
[something] cold” –- an expression in our vernacular meaning
“stopping it abruptly.” Yet in context, the term “COLD” in
registrant’s mark (as applied to a topical analgesic) may well
suggest the cool sensation on the skin when the gel is
applied. By contrast, in applicant’s mark STOP IT COLD, the
final two words of this phrase have another double meaning.
There is the suggestion that when one fears the on-set of a
cold or the flu, one should take this vitamin supplement to
end “it” (one’s “cold”) in an abrupt or unceremonious fashion.
Accordingly, we find that when the word “COLD” is applied to
the specific goods of applicant and of registrant, these
different meanings are the ones most likely to be ascribed to
the respective marks.
Regardless of the exact nature of the term “COLD” in the
respective marks, the marks also include different terms,
namely, “STOP” versus “STOPS” and “PAIN” versus “IT.” The
Trademark Examining Attorney, having concluded there is a
likelihood of confusion, minimizes the differences in the
Serial No. 75/589,320
7
marks by concluding that applicant has merely changed the word
“pain” to “it” and deleted the letter “s” from the word
“stops.” However, as applicant argues, the singular word
“Stop” in STOP IT COLD makes this an imperative statement
while the plural “Stops” in STOPS PAIN COLD is a descriptive
characterization of what something allegedly does.
Furthermore, as discussed in more detail above, even the words
“pain” and “it,” as applied to the goods, have quite different
meanings. The first (the word “pain”) refers to muscle or
joint pain, while the second (the word “it”) is an allusion to
a cold or the flu. In sum, after analyzing applicant’s mark
and registrant’s mark, we find that they are different as to
sound, appearance and meaning. As a consequence, we find that
the marks in their entireties create very different overall
commercial impressions, and that consumers are not likely to
be confused if these marks should be applied to these somewhat
related but specifically different goods.
Decision: The refusal to register is reversed.