Zinpro Corporation

Trademark Trial and Appeal Board

Sep 17, 2009

No. 77419601 (T.T.A.B. Sep. 17, 2009)

Hearing: Mailed:
05 August 2009 17 September 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Zinpro Corporation
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Serial No. 77419601
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Janet E. Phipps Burkhead of McKee, Voorhees & Sease, P.L.C.
for Zinpro Corporation.

Julie Thomas Veppumthara, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Rogers, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On March 12, 2008, applicant Zinpro Corporation
applied to register the mark PERFORMINS (in standard
character form) on the Principal Register for “dietary
supplements, namely, vitamin and mineral supplements for
human consumption” in Class 5. Serial No. 77419601. The
application is based on applicant’s allegation of a bona
fide intention to use the mark in commerce.
The examining attorney has refused to register
applicant’s mark on the ground that applicant’s mark is not
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77419601
2
registrable under Section 2(d) of the Trademark Act because
it is likely to cause confusion, to cause mistake, or to
deceive as a result of a registration for the mark
PERFORMANCE in typed or standard character form for
“nutritional food supplement for human consumption” in
Class 5.1 15 U.S.C. § 1052(d). After the examining
attorney made the refusal final, applicant filed a request
for reconsideration, which was subsequently denied, and
this notice of appeal. An oral hearing on the appeal was
held on August 5, 2009.
The question here is whether there is a likelihood of
confusion between applicant’s mark PERFORMINS for dietary
supplements, namely, vitamin and mineral supplements and
registrant’s PERFORMANCE mark for nutritional food
supplements. We consider the issue of likelihood of
confusion under the relevant factors set out in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed.
Cir. 2000). In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of

1 Registration No. 1950118 issued January 23, 1996, renewed.
Ser. No. 77419601
3
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The first factor that we will consider is whether
applicant’s and registrant’s goods are related.
Applicant’s goods are dietary supplements, namely, vitamin
and mineral supplements and registrant’s goods are
nutritional food supplements. Both goods are specified as
being “for human consumption.” We must consider the goods
as they are identified in the application and registration.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) and
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973). The examining attorney2
submitted copies of registrations to show that these goods
are related because the same entity has registered a common
mark for both dietary supplements such as vitamin and
mineral supplements and nutritional food supplements. See,
e.g., Registration Nos. 3184504 (POWERBAR for “Nutritional
supplements; dietary food supplements”); 3111332 (MONA-VIE
ACTIVE for “Nutritional supplements, vitamin and mineral

2 The current examining attorney was not the original examining
attorney in this case.
Ser. No. 77419601
4
supplements”); 3266128 (IMMUNE FORMULATION 200 for
“vitamins; nutritional supplements; and dietary food
supplements”); 3168270 (LIVING HEALTH for “Dietary food
supplements; Dietary supplemental drinks; Dietary
supplements; food supplements… Nutritional supplements;
Vitamin and mineral supplements; Vitamin supplements”);
3205657 (MASON NATURAL for “dietary food supplements …
nutritional supplements for use in body conditioning”);
3428519 (I BITTA for “dietary food supplements… vitamin and
mineral supplements”); 3440773 (SERRAPLUS+ for “Dietary and
nutritional supplements; Dietary supplements”); 3431881
(NANOVAPOR for “Food supplements, nutritional supplements,
vitamin supplements, dietary supplements”); 3472926
(LIPOCHOL for “Dietary and nutritional supplements; Dietary
supplemental drinks; Dietary supplements; Dietary
supplements for human consumption; Food supplements”);
3415416 (RAPID NUTRITION for “dietary supplements; food
supplements”); 3417703 (CELL DEFENDER for “Dietary and
nutritional supplements”); and 3459122 (BENEVIA for
“Dietary supplements; Food supplements; Vitamins; Mineral
supplements; Nutritional supplements”).
Use-based, third-party registrations are relevant to
the extent that they may suggest that goods or services are
related. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
Ser. No. 77419601
5
1470 n.6 (TTAB 1988) (Although third-party registrations
“are not evidence that the marks shown therein are in use
on a commercial scale or that the public is familiar with
them, [they] may have some probative value to the extent
that they may serve to suggest that such goods or services
are the type which may emanate from a single source”). See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786
(TTAB 1993). In this case, to the extent that the goods
are not overlapping, the registrations suggest that a
common entity is the source of both dietary and nutritional
food supplements.
Also, since there are no limitations in the
identification of goods, we must consider the channels of
trade and purchasers to be similarly unrestricted.
Moreover, neither the application nor the registration
limits the channels of trade through which the goods
move. In the absence of such a limitation we must
assume that the goods move through the normal channels
for such goods, and that with respect to these
particular goods, these channels are the same.

In re Sawyer of Napa Inc., 222 USPQ 923, 924 (TTAB 1983).
See also In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)
(“[W]here the goods in a cited registration are broadly
described and there are no limitations in the
identification of goods as to their nature, type, channels
of trade or classes of purchasers, it is presumed that the
Ser. No. 77419601
6
scope of the registration encompasses all goods of the
nature and type described, that the identified goods move
in all channels of trade that would be normal for such
goods, and that the goods would be purchased by all
potential customers”). The same purchasers are likely to
purchase both nutritional food supplements and dietary
supplements and the channels of trade would overlap since
these products are likely to be sold in the same section of
stores such as drug stores and health food stores. We add
that even purchasers who may be somewhat careful about the
ingredients in their vitamins and dietary supplements might
not necessarily be “expert in trademark evaluation or
immune from source confusion.” In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983).
Another, often critical, factor in likelihood of
confusion analysis is a comparison of the marks. This
“DuPont factor requires examination of ‘the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). Here,
applicant’s mark is PERFORMINS and registrant’s mark is
PERFORMANCE. The examining attorney argues that:
Ser. No. 77419601
7
The “distinct” difference in appearance amounts to the
substitution of a letter “I” for the second letter “A”
in registrant’s mark and a substitution of a letter
“S” for the letters “CE” in registrant’s mark. The
vowel substitution in applicant’s mark does not create
a distinctly different sound or look as applicant
argues. Applicant referenced the definition of …
“performance,” but applicant did not address the
pronunciation tool offered with the definition. The
pronunciation suggests “pə(r)-‘for-mən(t)s” as a
recommendation for pronouncing the term “performance.”
The pronunciation indicates the use of a schwa in
place in the last syllable of the wording.

Brief at unnumbered pp. 4-5.

In response, applicant argues that as “to the
difference in sound, it is more than just a mere ‘vowel
substitution’ as the Examining Attorney contends. The
Examining Attorney argues that because of the use of a
schwa in the pronunciation guide for the term
“performance,” the last syllable of the word can be
pronounced in a variety of ways contending that an ‘i’ is
interchangeable with an ‘a’ and an ‘s’ is interchangeable
with a ‘c.’ … With the multitude of phonetic spellings and
pronunciations offered by the Examining Attorney, there
appears to be no one sure way to pronounce the cited mark;
however, there is only one pronunciation of Appellant’s
mark with clear distinction of the last syllable as
‘mins.’” Reply Brief at 2.
The schwa (ə) is “the mid-central, neutral vowel sound
typically occurring in unstressed syllables in English,
Ser. No. 77419601
8
however spelled, as the sound of a in alone and sofa, e in
system, i in easily, o in gallop, u in circus.”
“Performance” is pronounced “pər fôr’ məns.” The Random
House Dictionary of the English Language (unabridged) (2d
ed. 1987). We take judicial notice of these definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).3 It has long been held
that there is no correct pronunciation of a trademark. In
re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227, 227
(CCPA 1969) (“[T]he appellant acknowledges that ‘there is
no correct pronunciation of a trademark.’ We think that
one is very likely to pronounce ‘Collegienne’ as if it were
spelled ‘Colleejen’ or ‘Colleejun.’ Thus, in sound, the
appellant’s mark differs from the registered mark primarily
in that the former is the plural form of the latter, which
we feel does not amount to a material difference in a
trademark sense”). See also Centraz Industries Inc. v.
Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006)
(However, there “is no correct pronunciation of a
trademark, and it obviously is not possible for a trademark

3 From the same dictionary, we also take judicial notice that
“performance” is defined as “the execution or accomplishment of
work, acts, feats, etc.” and “a particular action, deed, or
proceeding” rather than applicant’s online definition to which
the examining attorney has objected.
Ser. No. 77419601
9
owner to control how purchasers will vocalize its mark”).
In this case, the marks PERFORMANCE and PERFORMINS would be
pronounced very similarly, if not identically. Indeed, any
slight difference in pronunciation may be undetected by
many purchasers. The fact that the marks would be
pronounced very similarly is an important factor favoring a
conclusion of likelihood of confusion. Crown Radio Corp.
v. Soundscriber Corp., 506 F.2d 1392, 184 USPQ 221, 222-23
(CCPA 1974) (“In considering the respective marks in their
entireties, we agree that the marks have a marked
similarity in sound, although they do differ in meaning… We
conclude the mind of the purchasing public would find that
the marks ‘CROWNSCRIBER’ and ‘SOUNDSCRIBER’ confusingly
similar”). See also Centraz, 77 USPQ2d at 1701 (“What
stands out in the comparison between the marks ICE SHINE
and ISHINE (stylized) is the similarity in sound”). “It is
sufficient if the similarity in either form, spelling or
sound alone is likely to cause confusion.” Krim-Ko Corp.
v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968). See also Eveready Battery Co. v. Green Planet Inc.,
91 USPQ2d 1511, 1519 (TTAB 2009).
While the marks are highly similar in sound, they are
also similar in appearance, meaning, and commercial
impression. The first seven and the ninth letters of the
Ser. No. 77419601
10
marks are the same. The only differences are the eighth
letters are the vowels “A” and “I” and the endings are “S”
and “CE.” Their overall appearance is more similar than
different. Concerning their meaning, while applicant
argues that its mark is a word “formed from linking of two
words ‘perform’ and ‘minerals’” (Brief at 4), many
purchasers would see the word as a simple misspelling of
“Performance.” In that case, it would have the same
meaning. Finally, the commercial impressions of the marks
are not likely to distinguish the marks for many purchasers
when applicant’s mark is viewed as a misspelling of the
term in registrant’s mark. We add that a “[s]ide by side
comparison is not the test.” Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
Applicant argues that “the term ‘performance’ is a
ubiquitous term and is used in many other live, registered
marks for a variety of goods with a vast number of those
marks offering nutritional supplements and/or other dietary
products.” Brief at 4. The registrations that applicant
submitted include:
3112038 PERFORMANCE EDGE vitamin supplements
2893424 PERFORMANCE BOOST food supplements
2973275 COMMAND PERFORMANCE nutritional supplements
2922514 XTRA PERFORMANCE nutritional supplements
3038892 PEAK PERFORMANCE vitamin supplements
Ser. No. 77419601
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2450024 CENTRUM PERFORMANCE dietary supplements
2311890 PERFORMANCE PLUS dietary supplements
2791547 XTREME PERFORMANCE dietary supplements
2464077 PURE PERFORMANCE dietary supplements
2518902 PERFORMANCE ZONE nutritional supplements4

The examining attorney argues that the registrations all
contain additional wording and that the marks create
“wholly distinct commercial impressions.” Brief at 7.
We begin by noting that “‘third party registrations
relied upon by applicant cannot justify the registration of
another confusingly similar mark.’” In re J.M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1987), quoting, Plus
Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB
1983). These “registrations are not evidence of use of the
marks shown therein. Thus, they are not proof that
consumers are familiar with such marks so as to be
accustomed to the existence of similar marks in the
marketplace, and as a result are able to distinguish
between the JUMP marks based on slight differences between
them.” In re Jump Designs LLC, 80 USPQ2d 1370, 1375 (TTAB
2006). However, “third-party registrations can be used in
the manner of a dictionary definition to illustrate how a
term is perceived in the trade or industry.” In re Box
Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). In this

4 This registration is now cancelled.
Ser. No. 77419601
12
case, applicant’s evidence indicates that the term
“performance” is a highly suggestive term when used with
dietary supplements. However, we cannot find that it is
entitled to such a narrow scope of protection that a
virtually phonetically identical term can be registered for
highly similar, if not overlapping, goods. In re The
Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978)
(ERASE for a laundry soil and stain remover held
confusingly similar to STAIN ERASER, registered on the
Supplemental Register, for a stain remover); In re Chica
Inc., 84 USPQ2d 1845, 1850 (TTAB 2007) (“We add that even
if the word CORAZON, and its English translation, was
considered to be highly suggestive of jewelry, it
nonetheless is entitled to protection from the use of a
very similar mark on jewelry products”); In re Colonial
Stores, 216 USPQ 793, 795 (TTAB 1982) (“[E]ven weak marks
are entitled to protection against registration of similar
marks, especially identical ones, for related goods and
services”). Here, even if the term “Performance” is weak,
it is nonetheless entitled to some scope of protection.
When the goods are as similar as they are in this case and
the marks can be pronounced the same, the fact that the
term is weak does not mean that the use of these marks on
the identified goods would not result in confusion.
Ser. No. 77419601
13
We conclude that the marks are very similar, if not
identical, in pronunciation, and similar in appearance,
meaning, and commercial impression. Baseball America Inc.
v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 (TTAB 2004)
(Opposer’s “mark BASEBALL AMERICA and applicant’s mark
BASEBALL AMERICANA are more similar than dissimilar when
viewed in their entireties in terms of appearance, sound,
connotation and overall commercial impression”). Inasmuch
as the goods are very similar, we conclude that confusion
is likely.
Decision: The refusal to register applicant’s mark
PERFORMINS under Section 2(d) of the Trademark Act is
affirmed.