Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA284127
`ESTTA Tracking number:
`05/14/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77010647
`Nature's Way Products, Inc.
`ZUCOL
`Robyn L. Phillips
`Workman Nydegger
`1000 Eagle Gate Tower, 60 East South Temple
`Salt Lake City, UT 84111
`UNITED STATES
`rphillips@wnlaw.com, docketing@wnlaw.com
`Appeal Brief
`Applicant's Appeal Brief.pdf ( 17 pages )(866625 bytes )
`Applicant's Appeal Brief Exhibit A.pdf ( 8 pages )(837350 bytes )
`Applicant's Appeal Brief Exhibit B.pdf ( 6 pages )(717327 bytes )
`Applicant's Appeal Brief Exhibit C.pdf ( 12 pages )(1132157 bytes )
`Robyn L. Phillips
`rphillips@wnlaw.com
`/Robyn L. Phillips/
`05/14/2009
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`TRADEMARK APPLICATION
`Attorney Ref. No.: 10265.158.1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re application of
`
`Nature's Way Products,
`
`Inc.
`
`Mark:
`
`Serial No.
`
`Filed:
`
`ZUCOL
`
`77/010,647
`
`September 29,2006
`
`Int'l Classes:
`
`005
`
`Examining Attorney:
`
`Michelle E. Dubois
`
`Box TTAB NO FEE
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Dear Sirs:
`
`APPLICANT'S APPEAL BRIEF
`
`Applicant appeals to the Trademark Trial and Appeal Board of the United States Patent
`
`and Trademark Office from the final decision of the Examining Attorney refusing registration of
`
`Applicant's mark ZUCOL.
`
`I.
`
`PROCEDURAL HISTORY
`
`Applicant filed its application to register the mark "ZUCOL" ("Applicant's Mark") on
`
`September 29, 2007, which was assigned serial number 77/010,647. The United States Patent
`
`and Trademark Office mailed a First Office Action on February 26, 2007 wherein the
`
`Examining Attorney refused registration of Applicant's Mark citing a likelihood of confusion
`
`pursuant to 15 US.c.
`
`§ 1052(d) with United States Registration No. 3,194,667 for the stylized
`
`mark "ZACOL NMX"
`
`owned by Cosmo Technologies Limited,
`
`Ireland
`
`("the
`
`'667
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`Registration"). Applicant responded to the First Office Action on July 20,2007, explaining why
`
`there is no likelihood of confusion between Applicant's Mark and the' 667 Registration.
`
`The Patent and Trademark Office mailed a Final Office Action on November 5, 2007,
`
`wherein the Examining Attorney again refused registration of Applicant's Mark alleging a
`
`likelihood of confusion with the '667 Registration under Section 2(d) of the Trademark Act.
`
`Applicant timely filed a Notice of Appeal and Request for Reconsideration after Final Action on
`
`May 6, 2008,
`
`introducing additional evidence and arguments explaining why there is no
`
`likelihood of confusion between Applicant's Mark and the '667 Registration. Applicant's
`
`Request for Reconsideration was denied by the Examining Attorney on June 3,2008.
`
`In short, the Examining Attorney has refused registration of Applicant's Mark under
`
`Section 2(d) contending that the mark for which registration is sought so closely resembles the
`
`'667 Registration that it would be likely to cause confusion, mistake, or to deceive. As set forth
`
`below, Applicant believes that the Examining Attorney's contentions are in error and asks this
`
`Board to reverse the Examining Attorney's refusal and pass Applicant's Mark to publication.
`
`II.
`
`RELEVANT FACTS
`
`1.
`
`The Examining Attorney refused registration of Applicant's Mark under Section
`
`2(d), citing a likelihood of confusion with the' 667 Registration.
`
`2.
`
`The goods listed in the '667 Registration are "Pharmaceutical preparations,
`
`namely tablets, capsules, sugar-coated pills, granules, powders, and suppositories, namely anti-
`
`inflammatories, anti-infectives, antacids, anti-flatulars, and anti-parasitics; pharmaceutical and
`
`veterinary preparations for use in gastroenterology,
`
`for the prevention and treatment of diarrhea,
`
`for colon and digestive system health and regulation,
`
`for improving energy levels, and for
`
`2
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`maintaining and improving mucous levels and the mucosal
`
`lining of the intestines and colon;
`
`sanitary preparations for medical purposes, namely, nutraceutical preparations for colon and
`
`digestive system health and regulation, for maintenance and improvement of energy levels, and
`
`for maintaining and improving mucous levels and the mucosal lining of the intestines and colon;
`
`dietetic foods and beverages adapted for medical use, namely probiotic food and beverages for
`
`colon and digestive system health and regulation, for maintenance and improvement of energy
`
`levels, for maintaining and improving mucous levels and the mucosal lining of the intestines and
`
`colon; animal feed supplements and medicated animal feed" in International Class 005.
`
`[Ex. A,
`
`'667 Registration.]
`
`3.
`
`The evidence of record confirms that
`
`the '667 Registration is used only in
`
`connection with the goods identified in the '667 Registration, namely goods directed to the
`
`treatment of the digestive tract and colon. [Ex. B, Registrant's Advertisements
`
`for ZACOL
`
`NMX.]
`
`4.
`
`In contrast,
`
`the goods
`
`listed in the application for Applicant's Mark are
`
`"Vitamins, mineral supplements, dietary supplements and pharmaceutical preparations for the
`
`treatment of colds and other diseases of the respiratory tract."
`
`5.
`
`Numerous marks ending with the letter sequence "COL" exist for goods and
`
`services in International Class 005.
`
`[Ex. C, TESS Search.]
`
`III.
`
`ARGUMENT
`
`Applicant submits that there is no likelihood of confusion between Applicant's Mark
`
`and the '667 Registration because critical distinctions
`
`exist between the goods used in
`
`connection with the marks,
`
`the marks create different commercial
`
`impressions,
`
`the relevant
`
`3
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`consumers carefully consider purchases of goods associated with both the marks, and numerous
`
`similar third-party marks exist in this area.
`
`In determining whether a likelihood of confusion exists,
`
`the principal
`
`factors to be
`
`considered are laid out in In
`
`£.1.
`
`de
`
`& Co., 476 F.2d 1357, 177 US.P.Q.
`
`563 (C.C.P.A. 1973). Examining Attorney refused registration of Applicant's ZUCOL mark
`
`based primarily on an alleged similarity of the marks and goods of the '667 Registration.
`
`The Examining Attorney's arguments on these two factors, however, are mistaken. Further,
`
`the Examining Attorney failed to give proper weight
`
`to the other
`
`factors,
`
`including
`
`the care with which consumers make their purchases and the number of similar marks in the
`
`same area. For these reasons, Applicant
`
`respectfully submits that the Examining Attorney's
`
`rejection is mistaken and should be removed.
`
`A.
`
`The Goods Cited in Applicant's Application Are Dissimilar
`Cited in the '667 Re2istration
`
`to the Goods
`
`It is well settled that the question of likelihood of confusion must be determined based
`
`on an analysis of the goods recited in an applicant's application vis-a.-vis the goods identified in
`
`the cited registration.
`
`In
`
`Oil Co., 992 F.2d 1204, 1207,26 US.P.Q.2d 1687, 1690 n. 4
`
`(Fed. Cir. 1993);
`
`v.
`
`811 F.2d 1490, 1491, 1
`
`US.P.Q.2d 1813 (Fed. Cir. 1992).
`
`The goods recited in the Application are: "vitamins, mineral
`
`supplements, dietary
`
`supplements and pharmaceutical preparations for the treatment of colds and other diseases of the
`
`respiratory tract." The goods recited in the '667 registration are:
`
`pills,
`sugar-coated
`capsules,
`namely tablets,
`preparations,
`Pharmaceutical
`anti-
`granules,
`powders,
`and
`suppositories,
`namely
`anti-inflammatories,
`and
`infectives,
`antacids,
`anti-flatulars,
`and anti-parasitics;
`pharmaceutical
`veterinary preparations
`for use in gastroenterology,
`for the prevention and
`
`4
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`treatment of diarrhea, for colon and digestive system health and regulation, for
`improving energy levels, and for maintaining and improving mucous levels and
`the mucosal lining of the intestines and colon; sanitary preparations for medical
`purposes, namely, nutraceutical preparations
`for colon and digestive system
`health and regulation,
`for maintenance and improvement of energy levels, and
`for maintaining and improving mucous levels and the mucosal
`lining of the
`intestines and colon; dietetic foods and beverages adapted for medical use,
`namely probiotic food and beverages for colon and digestive system health and
`regulation, for maintenance and improvement of energy levels, for maintaining
`and improving mucous levels and the mucosal lining of the intestines and colon;
`animal feed supplements and medicated animal feed
`
`The Examining Attorney admits that Applicant's goods are all directed to the "treatment
`
`of colds and other diseases of the respiratory tract."
`
`[11/05/07 Final Office Action, at p. 3.] The
`
`Examining Attorney, however, argues that
`
`the goods recited the '667 Registration are not
`
`similarly limited to treatment of the digestive tract and colon.
`
`[11/05/07 Final Office Action, at
`
`p.3.] The Examining Attorney's argument that the goods of the marks are the same improperly
`
`relies on portions of the recitation of goods in the '667 Registration that have been removed
`
`from context. For example,
`
`the Examining Attorney argues that the '667 Registration is for
`
`goods "that are not limited to any particular part of the body:
`
`'Pharmaceutical preparations for
`
`improving energy levels[.]'"
`
`[11/05/07 Final Office Action, at p. 3.] Placing the quotation
`
`relied upon by the Examining Attorney in context, the '667 Registration recites pharmaceutical
`
`preparations "for improving energy levels" through the treatment of the digestive tract, as shown
`
`below.
`
`The phrase "improvement of energy levels" appears three times in the '667 Registration.
`
`Each time this phrase appears,
`
`it is in the following list of health benefits provided by the
`
`product:
`
`"for
`
`colon and digestive
`
`system health and regulation,
`
`for maintenance
`
`and
`
`improvement of energy levels, and for maintaining and improving mucous levels and the
`
`mucosal
`
`lining of the intestines and colon." Nowhere does the phrase "for improving energy
`
`5
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`levels" appear divorced from the additional benefits relating to treatment of the digestive
`
`system. The only reasonable interpretation of this recitation is that the product's "improvement
`
`of energy levels" also occurs through the treatment of the digestive system. The Examining
`
`Attorney's removal of this phrase from context is improper, and the strained interpretation of
`
`this phrase argued by the Examining Attorney is unreasonable when the phrase is placed in
`
`context.
`
`The Examining Attorney also argues that "Registrant's anti-infectives may be for use in
`
`the respiratory tract."
`
`[11/05/07 Final Office Action, at p. 3.] Nowhere do the words
`
`"respiratory tract," or any other
`
`reference to the respiratory system appear
`
`in the '667
`
`Registration. On the other hand, the '667 Registration contains the following words explicitly
`
`identifying or exclusively relating to the digestive system: suppositories, antacids, anti-flatulars,
`
`gastroenterology, diarrhea, "colon and digestive system," and "mucous levels and the mucosal
`
`lining of the intestines and colon." Again, it is clear that the "anti-infectives" identified in the
`
`'667 Registration are to treat infections only in the digestive system, not the respiratory system.
`
`Registrant's advertising confirms that the Examining Attorney's
`
`strained interpretation
`
`of the goods listed in the '667 Registration is wrong. A search of the internet reveals that the
`
`product offered by the owner of the '667 Registration is in fact specifically directed to
`
`treating various problems associated with the colon.
`
`Ex. B, Registrant's Advertisements
`
`for ZACOL NMX.]
`
`Registrant
`
`expressly states that
`
`it
`
`is a "specialty pharmaceutical
`
`company that aims to become a global
`
`leader
`
`in the market of optimized therapies
`
`for
`
`selected
`
`id at p. 4 (emphasis added).] Similarly, Registrant
`
`states that one of its business fields is "[d]evelopment and commercialization
`
`of proprietary
`
`6
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`drugs, primarily focused on the treatment
`
`of Inflammatory
`
`and colon
`
`id at p. 5 (emphasis added).] Nowhere does Registrant mention or suggest
`
`that
`
`it markets, or intends to market, any product
`
`to treat
`
`the respiratory tract, as the
`
`Examining Attorney argues. Registrant's
`
`advertising is consistent with the description of
`
`goods in the '667 Registration limited to treating the digestive system.
`
`Applicant has thoroughly investigated and searched both the internet and local retail
`
`stores to find goods sold under the '667 Registration,
`
`including those allegedly not directed
`
`to the colon as asserted by the Examining Attorney. The only information Applicant
`
`is able
`
`to locate is provided in Exhibit A, which
`
`states that the product
`
`sold by Registrant under its mark "ZACOL NMX" is directed to treating problems associated
`
`with the colon.
`
`Ex. B.] Registrant expressly states that the product
`
`is to treat "Intestinal
`
`disorders," Ex. B, at p. 2, and that "Zacol NMX is a dietary supplement
`
`...
`
`directed to the
`
`colon."
`
`[Id at p. 3.] The Examining Attorney's forced reading of the goods described in the
`
`'667 Registration is refuted by both the language of the '667 Registration and by the
`
`Registrant's marketing materials. The '667 Registration is for goods directed at treating the
`
`digestive system, and Applicant's goods are directed at treating the respiratory system. The
`
`goods marketed under the marks are different, and this factor weighs against a finding of likely
`
`confusion.
`
`B.
`
`The Marks Are Dissimilar
`
`Under
`
`the marks are compared as to sight, sound, connotation and commercial
`
`impression to ascertain their similarity or dissimilarity. 476 F.2d at 1361, 177 US.P.Q. at 567.
`
`When making these comparisons,
`
`the marks must be considered in the entireties, or as a
`
`7
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`whole.
`
`Inc. v.
`
`Inc., 970 F.2d 847, 23 US.P.Q.2d
`
`1471, 1473 (Fed. Cir. 1992).
`
`It is improper to break marks into component parts to reach a
`
`conclusion of confusing similarity, a mistake the Examining Attorney made here.
`
`In
`
`25 US.P.Q.2d
`
`1238, 1239 (Fed. Cir. 1992)
`
`(stating "marks
`
`tend to be
`
`perceived in their entireties, and all components thereof must given appropriate weight").
`
`a. The Marks Are Visually Dissimilar
`
`The Examining Attorney
`
`argues
`
`that
`
`the marks
`
`are "highly
`
`similar because
`
`applicant's mark, ZUCOL, and the dominant portion of the registered mark,
`
`'ZACOL,' begin
`
`with the letter' Z' and end in '-COL.' The only difference between the two words is the use
`
`of a different vowel."
`
`[11/05/07 Final Office Action, at p. 2.] This argument by the
`
`Examining Attorney improperly
`
`dissects
`
`the mark of the '667 Registration.
`
`Viewing
`
`Applicant's mark and the '667 Registration in their entireties, as required by controlling legal
`
`precedent,
`
`these marks are visually distinct.
`
`The '667 Registration is for
`
`the stylized mark ZACOL NMX.
`
`The Examining
`
`Attorney's
`
`first mistake was to compare Applicant's mark with only what
`
`the Examining
`
`Attorney considered to be the "dominant" portion of the '667 Registration,
`
`leaving out the
`
`letters "NMX."
`
`The letters "NMX," however, are an important visual aspect of the '667
`
`Registration.
`
`The Examining Attorney attempts to downplay the visual
`
`importance of the
`
`"NMX" portion of the '667 Registration by arguing that this portion of the mark is smaller
`
`than the "ZACOL"
`
`portion,
`
`and that "consumers
`
`are accustomed
`
`to seeing letters or
`
`acronyms used at the end of brand names of supplements and other Class 5 preparations."
`
`[11/05/07 Final Office Action, at p. 2.] The Examining Attorney is wrong on both accounts.
`
`8
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`First,
`
`the stylized '667 Registration includes
`
`specific design elements calculated to guard
`
`against any tendency by consumers to ignore the "NMX" portion of the '667 registration.
`
`The coloring of the '667 Registration inextricably ties the "NMX" and "ZACOL" portions of
`
`the '667 Registration,
`
`thereby assuring that
`
`the mark is viewed by consumers
`
`as whole.
`
`Specifically,
`
`the letters "Z," "A," "C," "L," "N," and "M" are colored blue, and the letters
`
`"0" and "X" are colored in brightly-contrasting
`
`orange. As such, the eye is drawn to the two
`
`orange letters "0" and "X," thereby providing an un-severable
`
`visual
`
`link between the
`
`"ZACOL"
`
`and "NMX"
`
`portions of
`
`the
`
`'667 Registration.
`
`As
`
`such,
`
`the Examining
`
`Attorney's
`
`argument
`
`that
`
`letters "NMX" are "less dominant visually" is wrong. Given the
`
`tailored variations in the coloring of the '667 Registration,
`
`the entire mark "ZACOL NMX"
`
`is visually integrated and tied together and has no "dominant portion."
`
`The Examining Attorney is also wrong to argue that
`
`the visual
`
`importance of the
`
`"NMX" portion of the '667 Registration is somehow diminished because "consumers
`
`are
`
`accustomed to seeing letters or acronyms used at the end of brand names of supplements and
`
`other Class 5 preparations."
`
`[11/05/07 Final Office Action, at p. 2.]
`
`The Examining
`
`Attorney goes on to argue that "[t]he use of letters to denote a particular
`
`technology or
`
`ingredient
`
`in a mark is widespread
`
`for supplements
`
`and pharmaceutical
`
`preparations."
`
`[11/05/07 Final Office Action, at p. 2.] While the Examining Attorney's
`
`recitation of the
`
`facts is correct,
`
`the Examining Attorney's conclusion that such widespread usage diminishes
`
`the importance of such letters or acronyms
`
`is backwards.
`
`To the contrary, consumers'
`
`exposure to numerous marks containing letter or acronyms at the end of brand names to
`
`identify ingredients,
`
`characteristics
`
`or
`
`technologies
`
`of
`
`supplements
`
`and other Class 5
`
`9
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`preparations
`
`has conditioned
`
`consumers
`
`to pay particular
`
`attention to such letters or
`
`acronyms because they provide useful, and even critical,
`
`information about
`
`the products.
`
`These letters or acronyms convey information such as whether
`
`the product will help you
`
`sleep ("PM"),
`
`stay awake ("AM"), or in the case of the ZACOL NMX,
`
`is based on the
`
`patented MMX technology.
`
`[See Request for Reconsideration,
`
`at Ex. B, p. 3.] Disregarding
`
`these "letters or acronyms" following a brand name as the Examining Attorney argues may
`
`result in very unpleasant unintended consequences,
`
`such as staying awake all night or falling
`
`asleep during an important business meeting. Thus, consumers understand that the "letters or
`
`acronyms" at the end of marks used in Class 5 are often more important visually than rest of
`
`the mark due to the information they convey about the product. Consequently,
`
`the "ZACOL"
`
`portion of the '667 Registration is not
`
`the "visually dominant" portion of the mark, and
`
`cannot be separated from the mark as a whole for purposes of visual comparison.
`
`Comparing Applicant's mark and the '667 Registration in their entireties,
`
`they are
`
`visually distinct. Applicant's mark has no letters following ZUCOL, which provides an
`
`important visual distinction from the ZACOL NMX mark.
`
`Further,
`
`the coloring of the
`
`ZACOL NMX mark distinguishes
`
`that mark from Applicant's mark.
`
`Although
`
`the
`
`Examining Attorney correctly states the general proposition that the stylized colorization of a
`
`registered mark cannot be considered when the Applicant's mark is in standard character
`
`form,
`
`this general
`
`rule does not apply to the facts of this case. As discussed above,
`
`the
`
`alternating blue and orange colorization of the '667 Registration is specifically tailored to
`
`draw a visual
`
`link between the "ZACOL" and "NMX" portions of the mark. Whereas the
`
`ZUCOL mark has no additional
`
`letters or acronyms,
`
`it is impossible for the ZUCOL mark to
`
`10
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`adopt the coloring scheme of making one letter in each of the first and second portions of the
`
`mark orange due to the simple fact that
`
`there is no second portion to the ZUCOL mark.
`
`Thus, Applicant's mark and the '667 Registration are visually distinct and this factor weighs
`
`against
`
`finding a likelihood of confusion.
`
`b. The Marks Sound Differently
`
`When considered as a whole, Applicant's mark and the '667 Registration also sound
`
`differently. The first syllable of Applicant's mark ZUCOL has a completely different sound
`
`than the first syllable of the '667 Registration. More importantly,
`
`the letters "NMX" of the
`
`'667 Registration must also be considered when comparing
`
`the sound of
`
`the marks.
`
`Consequently, Applicant's mark ZUCOL has only two (2)
`
`syllables,
`
`and the
`
`'667
`
`Registration has five (5) syllables. Of these syllables,
`
`the marks share only one common
`
`syllable, "COL," between them. As explained below,
`
`the syllable "COL" is very common in
`
`marks for goods in International Class 005, and thus this single common element between the
`
`sounds of the marks is not
`
`likely to cause any confusion there between.
`
`The two marks
`
`considered in their entireties also have a different rhythm and cadence. Therefore,
`
`the marks
`
`in their entireties have significantly different pronunciations
`
`that consumers are not likely to
`
`be confused between. As such, this factor weighs against finding a likelihood of confusion
`
`between the marks.
`
`c. The Marks Have Different Connotations
`
`Applicant's mark and the '667 Registration also have different connotations.
`
`First,
`
`ZUCOL is a coined or made-up mark that has no meaning or connotation to the consuming
`
`public. The '667 Registration ZACOL NMX,
`
`in contrast, has a very specific meaning. The
`
`11
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`letter combination "NMX" has the express meaning that the ZACOL NMX product
`
`is the
`
`nutraceutical
`
`version
`
`of
`
`the patented MMX technology.
`
`[See Ex. B, Registrant's
`
`Advertisements
`
`for ZACOL NMX, at p. 3.] The Registrant has made concerted efforts to
`
`ensure that the "NMX" portion of its mark ZACOL NMX clearly conveys to consumers that
`
`its product
`
`is related to its MMX technology.
`
`For example, on the page of the web site
`
`directed to the Zacol NMX product Registrant's
`
`lead paragraph states,
`
`in relevant part,
`
`"Zacol NMX is a dietary supplement based on the MMX technology.
`
`.
`
`..
`
`NMX is a
`
`nutraceutical
`
`version of MMX technology."
`
`[Id]
`
`Thus, Applicant's ZUCOL mark is
`
`arbitrary and has no connotation, but the ZACOL NMX mark has a connotation of being a
`
`nutraceutical version of the patented MMX technology for treating the colon. These different
`
`connotations weigh against finding a likelihood of confusion.
`
`d.
`
`The Marks as a Whole Create Different Commercial Impressions
`
`The dissimilarities
`
`of the marks
`
`in their entireties
`
`as to appearance,
`
`sound and
`
`connotation create different commercial
`
`impressions. That is, when consumers encounter the
`
`marks in a retail setting, the differences in appearances, pronunciations
`
`and meanings create
`
`distinct commercial
`
`impressions.
`
`These distinct commercial
`
`impressions will prevent any
`
`consumer confusion between the marks. These distinct commercial
`
`impressions will also
`
`inform the consumer that the goods are from different sources. Because these and the other
`
`differences
`
`discussed
`
`herein
`
`create
`
`significantly
`
`different
`
`commercial
`
`impressions,
`
`Applicant's mark is not likely to be confused with the '667 Registration and the dissimilarity
`
`of the marks factor weighs against finding a likelihood of confusion.
`
`12
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`c.
`
`in
`or Services Are Encountered
`Conditions Under which Goods
`Marketolace and Consumers' Careful Attention Durim!: the Purchasim!:
`Process
`
`Another
`
`factor used when considering whether
`
`a likelihood of confusion exists
`
`between trademarks are the conditions under which the goods and services are encountered
`
`and in which the purchasing decision is made.
`
`476 F.2d at 1361, 177 US.P.Q. at
`
`567. As previously stated,
`
`the goods sold under
`
`the '667 Registration are nutraceutical
`
`products directed to colon or intestinal problems.
`
`[See Ex. A,
`
`'667 Registration; Ex. B,
`
`Registrant's Advertisements
`
`for ZACOL NMX.] Accordingly,
`
`this product
`
`is directed to
`
`consumers with a narrow and specific need regarding problems with their digestive tract.
`
`Applicant's
`
`"vitamins, mineral supplements, dietary supplements and pharmaceutical
`
`preparations for the treatment of colds and other diseases of the respiratory tract" are likewise
`
`directed to a narrow class of purchaser
`
`- those who are seeking a product for "the treatment
`
`of colds or other diseases of the respiratory tract." Thus,
`
`it is unlikely that any appreciable
`
`overlap in customers
`
`for goods of the two marks will exist.
`
`In other words, customers
`
`shopping for pharmaceuticals/nutraceuticals
`
`to treat respiratory problems are not likely to be
`
`shopping for pharmaceuticals/nutraceuticals
`
`to treat digestive problems.
`
`Further, products
`
`aimed at
`
`treating a particular problem are typically marketed
`
`together. For example, Applicant's ZUCOL product will be located in the standard "cold and
`
`flu" section of a pharmacy or retailer, and Registrant's ZACOL NMX product will be located
`
`in the section of a pharmacy or retailer dedicated to products
`
`for treating digestive tract
`
`problems.
`
`Thus, consumers
`
`looking for a treatment,
`
`such as Applicant's ZUCOL,
`
`for a
`
`respiratory problem are unlikely to encounter Registrant's ZACOL NMX mark for goods to
`
`treat the digestive tract, and vise-versa.
`
`Consumers of pharmaceuticals/nutraceuticals
`
`are also likely to give careful attention
`
`to purchases of products used to treat a respiratory or gastrointestinal problem. The courts
`
`13
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`have explained that
`
`there is "less likelihood of confusion where goods are expensive and
`
`purchased
`
`de
`
`de
`
`v.
`
`657 F.2d 482,489,212 US.P.Q. 245, 252 (1st Cir. 1981) (emphasis added).
`
`It is highly unlikely that a customer wanting to purchase a "pharmaceutical preparations
`
`for
`
`the treatment of colds and other diseases of the respiratory tract" under Applicant's mark will
`
`mistakenly pick up a product
`
`to treat his or her digestive system, or even believe that he or
`
`she is purchasing goods sponsored by or originating from the same source as nutraceutical
`
`products directed to the treatment of colons or intestinal problems.
`
`Consumers of goods in International Class 005 are also accustomed to distinguishing
`
`between marks ending with the letters "COL." A search of the TESS database reveals that
`
`there are over three hundred marks other than Applicant's mark "ZUCOL"
`
`in International
`
`Class 005 that
`
`include a word that ends in the letter sequence "COL."
`
`[See Ex. C, TESS
`
`Search.] The following are some examples of marks in International Class 005 that are
`
`currently "live" and end in "COL":
`
`Registration
`Number
`3557682
`3194667
`3130054
`3360009
`3249810
`3157590
`3501895
`3386697
`3240597
`3106430
`3017965
`3143208
`3121737
`3238818
`3184453
`
`Mark
`
`CARICOL
`ZACOLNMX
`BENECOL
`PAN-O-COL
`SAVICOL
`VENTRACOL
`BIOCOL
`PURACOL
`CHOLESTICOL
`TEPICOL
`DIGESTICOL
`FLEXICOL
`MEDICOL
`DANACOL
`REDUCOLR
`
`Registration
`Number
`2902023
`2807949
`2814553
`2835809
`2515297
`2958897
`2619664
`2321589
`2615737
`2773801
`2654649
`2402160
`2290152
`2106361
`2208461
`
`Mark
`
`PURACOL
`PREDOCOL
`GENACOL
`PONSOCOL
`THORACOL
`LOGICOL
`VISICOL
`ABCOL
`PELVICOL
`MUTACOL
`PERMACOL
`PHOSPHOCOL
`PROSTACOL
`BENECOL
`SAMBUCOL
`
`14
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`2802524
`3185435
`2870363
`3504807
`3489777
`3395594
`3372610
`3510479
`3382332
`3382331
`
`3489116
`3499449
`3489198
`2591170
`2585004
`3429157
`3291293
`2648496
`3123924
`3149098
`2797160
`
`THYROGLANUCOL
`RHONCOL
`REDUCOL
`HEPA-DESICOL
`AVICOL
`ARNICOL
`SYNCOL
`CEPACOL
`HISTACOLDM
`HISTACOLDM
`PEDIATRIC
`HISTACOLLA
`LIBRACOL
`MYRISTOCOL
`INFACOL
`IBSACOL
`PHARMACOL-40
`ASACOL
`PROTOCOL
`SOTRADECOL
`NUTRICOLNM
`EUDRACOL
`
`Serial
`Number
`79/059014
`79/064885
`78/786427
`
`78/581338
`78/251637
`77/448141
`77/659852
`77/499162
`77/613885
`
`Mark
`
`BIFICOL
`DERMACOL
`SANCOL
`
`PURCOL
`PURELOGICOL
`INFACOL
`SOBICOL
`VIVICOL
`VEGACOL
`
`77/540851
`
`D-COL
`
`2059448
`2066666
`1946084
`2086261
`1984257
`2336942
`1963487
`1998784
`1906270
`1756344
`
`1688694
`1823557
`1639501
`1638854
`1629658
`1489002
`1372087
`1624398
`1541197
`0747513
`0388313
`
`Serial
`Number
`77/672022
`77/670265
`77/597201
`
`77/228413
`77/168332
`77/568894
`77/291861
`77/010647
`77/010666
`
`76/450455
`
`HYDROCOL
`MATRICOL
`FIBRACOL
`CEPACOL
`CHOLACOL
`SAMBUCOL
`LAVACOL
`NOVOCOL
`DURICOL
`NOVOCOL
`
`VIBURCOL
`PROTOCOL
`LESCOL
`PROTOCOL
`PROXACOL
`BETACOL
`ASACOL
`PROTOCOL
`ELIMICOL
`WEBCOL
`ESPECOL
`
`Mark
`
`GEMICOL
`PURCOL
`CEPACOL
`FIZZLERS
`STERICOL
`MENTICOL
`QUELCOL
`EVACOL
`ZUCOL
`ZUCOL
`COLDCARE
`PERMACOL
`GOLD
`
`15
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`Given the voluminous number of marks in International Class 005 that end with
`
`"COL," customers of these products are well-trained at distinguishing between marks ending
`
`in "COL," and clearly understand that marks for goods in International Class 005 sharing the
`
`syllable "COL,"
`
`such as Applicant's mark and the '667 Registration, do not indicate any
`
`affiliation between the marks. As such, both the manner in which consumers will encounter
`
`the marks in the marketplace and the careful attention consumers give to the purchase of the
`
`products weigh against finding a likelihood of confusion.
`
`IV.
`
`CONCLUSION
`
`Based on the precedent established by the United States Court of Appeals for the
`
`Federal Circuit and Trademark Trial and Appeal Board of the United States Patent and
`
`Trademark Office, Applicant
`
`respectfully asserts that it is apparent
`
`that the record does not
`
`support
`
`finding of
`
`likelihood
`
`of confusion
`
`between Applicant's Mark and the
`
`'667
`
`Registration. Therefore, Applicant respectfully requests that the Board reverse the Examining
`
`Attorney's refusal to register, and that it order the approval of the Application for registration on
`
`the Principal Register.
`
`DATED this 14th day of May, 2009.
`
`Respectfully submitted,
`
`IRobyn L. Phillips/
`ROBYN L. PHILLIPS
`Attorney for Applicant
`Registration No. 39,330
`
`WORKMAN I NYDEGGER
`1000 Eagle Gate Tower
`60 East South Temple
`Salt Lake City, Utah 84111
`Telephone:
`(801) 533-9800
`Facsimile:
`(801) 328-1707
`
`16
`
`2373353 l.DOC
`
`

`
`Re:
`Mark:
`Serial No.:
`
`Applicant's Appeal Brief
`ZUCOL
`77/010647
`
`TABLE OF CASES CITED
`
`Cases
`
`v.
`811 F.2d 1490,1491,1 US.P.Q.2d 1813 (Fed. Cir. 1992)
`& Co.,
`E.I
`de
`476 F.2d 1357, 177 US.P.Q. 563 (C.C.P.A. 1973)
`
`In
`
`In
`
`In
`
`1238, 1239 (Fed. Cir. 1992)
`25 US.P.Q.2d
`Oil Co.,
`992 F.2d 1204, 1207,26 US.P.Q.2d 1687, 1690 n. 4 (Fed. Cir. 1993)
`Inc. v.
`Inc.,
`970 F.2d 847, 23 US.P.Q.2d
`1471,1473 (Fed. Cir. 1992)
`de
`de
`v.
`657 F.2d 482,489,212 US.P.Q. 245, 252 (1st Cir. 1981)
`Rules and Statutes
`15 US.c. § 1052
`
`Pa2e(s)
`
`9
`
`.4
`
`.4
`
`9
`
`.4
`
`13
`
`1
`
`17
`
`

`
`APPL|CANT’S APPEAL BRIEF
`SERIAL NO. 77/010,647
` MARK:ZUCOL
`
`EXHIBIT A
`
`

`
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`Zac
` NMX
`
`Word Mark
`Goods and
`Services
`
`Mark Drawing
`Code
`
`Design
`Search Code
`Serial
`Number
`
`Filing Date
`Cu rrent Filing
`Basis
`
`IC 005. US 006 018 044 046 051 052. G & S: Pharmaceutical preparations, namely tablets, capsules,
`sugar-coated pills, granules, powders, and suppositories, namely anti—inllammatories, anti—intectives,
`antacids, anti-tlatulars, and anti-parasitics; pharmaceutical and veterinary preparations for use in
`gastroenterology, for the prevention and treatment of diarrhea, for colon and digestive system health
`and regulation, for improving energy levels, and for maintaining and improving mucous levels and the
`mucosal lining of the intestines and colon; sanitary preparations for medical purposes, namely,
`nutraceutical preparations for colon and digestive system health and regulation, for maintenance and
`improvement of energy levels, and for maintaining and improving mucous levels and the mucosal
`lining of the intestines and colon; dietetic foods and beverages adapted for medical use, namely
`probiotic f