From: Young, Thomas
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`Sent: 8/8/2018 6:33:50 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 87332368 - NEWMERA - N/A - EXAMINER BRIEF
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`Attachment Information:
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`Count: 1
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`Files: 87332368.doc
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`U.S. APPLICATION SERIAL NO. 87332368
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`MARK: NEWMERA
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`CORRESPONDENT ADDRESS:
` JAY STEIN
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` STEIN & ASSOCIATES
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`*87332368*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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` 10940 WILSHIRE BOULEVARD
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` SUITE 600
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` LOS ANGELES, CA 90024
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`TTAB INFORMATION:
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`http://www.uspto.gov/trademarks/process/appeal/index.js
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`APPLICANT: SWISS TECH BIOLABS, INC.
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` N/A
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`CORRESPONDENT E-MAIL ADDRESS:
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` jay@steinlawyers.com
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`EXAMINING ATTORNEY’S APPEAL BRIEF
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`STATEMENT OF THE CASE
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`Swiss Tech Biolabs, Inc. (“Applicant”) has appealed the Trademark Examining Attorney’s final
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`refusal to register the applied-for mark NEWMERA in standard characters for “Dietary supplements for
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`the alleviation of edema and pain” in International Class 5 on the ground the applied-for mark is likely to
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`cause confusion, mistake, or deception under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d),
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`with the mark in U.S. Registration No. 4934480, NEMERA in standard characters for, inter alia,
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`“Pharmaceutical products for the treatment of ophthalmic disorders, respiratory disorders,
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`dermatological disorders, ophthalmologic and inflammatory disorders; Medical preparations for use in
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`the treatment of ophthalmic disorders, respiratory disorders and inflammatory disorders; Sanitary
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`preparations for medical purposes; Dietetic substances for medical use, namely, meal replacement bars
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`and meal replacement drink mixes” in International Class 5, and the mark in U.S. Registration No.
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`4857255, NEMERA in stylized form for, inter alia, “Pharmaceutical products for the treatment of
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`ophthalmic disorders, respiratory disorders, dermatological disorders, ophthalmologic and inflammatory
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`disorders; Medical products, namely, pharmaceutical preparations for use in the treatment of
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`ophthalmic disorders, respiratory disorders and inflammatory disorders; Sanitary products for medical
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`purposes, namely, sanitary preparations for medical use; Dietetic substances for medical use, namely,
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`meal replacement bars and meal replacement drink mixes” in International Class 5. Both of the cited
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`registrations are owned by the same registrant, Devix Midco. It is respectfully requested that the refusal
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`be affirmed.
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`FACTS
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`Applicant filed this application on February 10, 2017, applying to register the mark NEWMERA in
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`standard characters for “Dietary supplements and preparations for the alleviation of edema and pain” in
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`International Class 5 on the Principal Register. In the first Office Action dated May 5, 2017, a refusal to
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`registration was issued under Section 2(d) of the Trademark Act on the ground that the mark, when
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`used on or in connection with the referenced goods, so resembles the marks in U.S. Registration Nos.
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`4857255 and 4934480 as to be likely to cause confusion, to cause mistake, or to deceive as to the source
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`of the goods of the applicant and registrant.
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`On November 5, 2017, the applicant filed its response, arguing that the refusal to register the
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`applied-for mark under Section 2(d) should be withdrawn because the marks and goods were not
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`confusingly similar. On November 10, 2017, the refusal to register the mark pursuant to Trademark Act
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`Section 2(d) for a likelihood of confusion with U.S. Registration Nos. 4857255 and 4934480 was
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`maintained and made final.
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`On May 10, 2018, the applicant filed a request for reconsideration, amending its identification of
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`goods to “Dietary supplements for the alleviation of edema and pain” in International Class 5 and
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`reasserting its position that the marks and goods were not confusingly similar. On May 16, 2018, the
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`examining attorney denied the applicant’s request for reconsideration and the present appeal followed.
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`ISSUE
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`The sole issue on appeal is whether the mark, when used in connection with the identified
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`goods, so resembles the marks in U.S. Registration Nos. 4857255 and 4934480 as to be likely to cause
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`confusion, to cause mistake, or to deceive as to the source of the goods of the applicant and registrant
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`under Trademark Act Section 2(d).
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`ARGUMENT
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a
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`registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of
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`the goods of the applicant and registrant. See 15 U.S.C. §1052(d). A likelihood of confusion
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`determination under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I.
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`du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this
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`determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256
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`(Fed. Cir. 2011). In this case, the following factors are most relevant: the similarity of the marks, the
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`similarity and nature of the goods, and the similarity of the trade channels of the goods. See In re Viterra
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`Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.
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`Because the applicant’s mark NEWMERA is similar in sound and appearance to the registered
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`marks for NEMERA and the goods offered by the applicant and registrants are related, registration of
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`the applied-for mark is likely to create consumer confusion as to source.
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`A) COMPARISON OF MARKS
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`The Applied-For Mark and Registered Marks are Similar
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`In a likelihood of confusion determination, marks are compared in their entireties for similarities
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`in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion
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`Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); TMEP §1207.01(b)-(b)(v).
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`“Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re
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`Davia, 110 USPQ2d 1810, 1812 (TTAB 2014); TMEP §1207.01(b). In conducting this analysis, the test is
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`not whether the marks can be distinguished in a side-by-side comparison, but rather whether an
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`average purchaser, who retains a general rather than specific impression of trademarks, would mistake
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`or confuse the source of the goods. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049,
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`(TTAB 2014); TMEP §1207.01(b).
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`In this instance, the applicant’s mark NEWMERA and the registrant’s marks NEMERA are
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`substantially similar in appearance as both begin with the letters “NE” and end with the term “MERA”.
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`The only difference between the marks is the applied-for mark includes the letter “W” after the letters
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`“NE”. Despite that slight alteration in spelling, the marks in question could be pronounced the same.
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`Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In
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`re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); TMEP §1207.01(b)(iv).
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`The inclusion of stylization in U.S. Registration No. 4857255 does not diminish the likelihood of
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`confusion. The word portion of a mark is more likely to indicate the origin of the goods because it is that
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`portion that consumers use when referring to or requesting the goods. Bond v. Taylor, 119 USPQ2d
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`1049, 1055 (TTAB 2016); TMEP §1207.01(c)(ii). Moreover, the applicant has applied to register its mark
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`in standard characters and, therefore, the applied-for mark may be displayed in any lettering style as the
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`rights reside in the wording or other literal element and not in any particular display or rendition. See In
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`re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); 37 C.F.R. §2.52(a); TMEP
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`§1207.01(c)(iii). Thus, the stylization in the registered mark does not obviate confusion because the
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`applied-for mark could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d
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`at 1363, 101 USPQ2d at 1909.
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`In the applicant’s brief, it argues that the applied-for and registered marks are dissimilar in
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`sound, appearance, and commercial impression. Applicant’s Appeal Brief (“Brief”), 11 TTABVUE, pp. 10-
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`15. Specifically, it argues the letter “W” in the applied-for mark alters its pronunciation from the
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`registered mark. However, there is no correct pronunciation of a mark because it is impossible to predict
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`how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105
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`USPQ2d 1825, 1835 (TTAB 2013); TMEP §1207.01(b)(iv). Even if the prefixes “NE” and “NEW” are not
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`pronounced identically, it would produce only a slight difference in sound, which would not avoid a
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`likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983).
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`Additionally, the applicant provides no evidence to support its claim that consumers would
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`consider the letter “W” in the applied-for mark as a “highly significant” visual element. Brief at p. 13.
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`Instead, because the marks share the first two letters “NE” and end with the identical term “MERA”, an
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`average purchaser who retains a general rather than specific impression of trademarks would likely
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`confuse or mistake the goods produced under the marks as originating from the same commercial
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`source. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016); TMEP §1207.01(b). See
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`also Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986),
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`aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490,
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`1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly
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`similar).
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`Furthermore, the applicant’s argument that “NEMERA” in the registered marks creates the
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`commercial impression of a name, which is not conveyed by the applied-for mark is unpersuasive. Brief
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`at pp. 15-17. The applicant has attached no evidence that American consumers would perceive
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`“NEMERA” as a name. Instead, the applicant’s evidence merely indicates that “NEMERA” is, at best, an
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`extremely uncommon Hebrew name. Therefore, the term is unlikely to be known to consumers or
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`perceived as a name. However, even if “NEMERA” were perceived as a name, the applicant has
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`submitted no evidence that consumers audibly perceiving the applied-for mark would not develop the
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`same commercial impression.
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`Based on the foregoing, the applied-for and registered marks are similar in sound and
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`appearance and, therefore, this factor weighs in favor of finding a likelihood of confusion.
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`B) COMPARISON OF THE GOODS
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`The Goods of the Applicant and Registrant are Related
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`The goods of the parties need not be identical or even competitive to find a likelihood of
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`confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed.
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`Cir. 2000); TMEP §1207.01(a)(i). Instead, the respective goods need only be “related in some manner
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`and/or if the circumstances surrounding their marketing are such that they could give rise to the
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`mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning
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`LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83
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`USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
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`As stated earlier, the applicant’s identified goods are “Dietary supplements for the alleviation of
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`edema and pain” in International Class 5. The goods of the registrant are “Pharmaceutical products for
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`the treatment of ophthalmic disorders, respiratory disorders, dermatological disorders, ophthalmologic
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`and inflammatory disorders; Medical products, namely, pharmaceutical preparations for use in the
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`treatment of ophthalmic disorders, respiratory disorders and inflammatory disorders; Sanitary products
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`for medical purposes, namely, sanitary preparations for medical use; Dietetic substances for medical
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`use, namely, meal replacement bars and meal replacement drink mixes” and “Pharmaceutical products
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`for the treatment of ophthalmic disorders, respiratory disorders, dermatological disorders,
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`ophthalmologic and inflammatory disorders; medical preparations for use in the treatment of
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`ophthalmic disorders, respiratory disorders and inflammatory disorders; sanitary preparations for
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`medical purposes; dietetic substances for medical use, namely, meal replacement bars and meal
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`replacement drink mixes” in International Class 5. In this instance, the goods of the applicant and
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`registrant are highly related as the goods commonly emanate from the same commercial entity, travel
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`through the same channels of trade, and are used for related purposes.
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`The question of likelihood of confusion is determined based on the description of the goods
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`stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion
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`Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014).
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`Absent restrictions in the identification of goods in the application and/or registration, the identified
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`goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re
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`Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co.
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`v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally,
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`unrestricted and broad identifications are presumed to encompass all goods of the type described. See
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`In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
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`In this instance, the identification of goods in the application indicates that its dietary
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`supplements are “for the alleviation of edema and pain”. The registrant’s pharmaceutical preparations
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`are for the treatment of various conditions, including “inflammatory disorders”. The wording
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`“inflammatory disorders” is presumed to encompass all disorders of the type described, including the
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`conditions set forth in the applicant’s more narrow identification – “edema”, a medical condition that
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`causes pain and results from inflammation. April 5, 2017 Office action (“First action”), TSDR pp. 13-23.
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`Thus, the goods at issue are competitive as both intended for and will be marketed to the same class of
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`consumers.
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`In addition, the goods of the applicant and registrant are commonly produced by the same
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`commercial entity and marketed and sold through the same channels of trade. The record contains
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`numerous examples of entities that manufacture dietary supplements and dietetic substances and/or
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`provide retail store services featuring dietary supplements and pharmaceutical preparations under the
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`same mark, such as:
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`• Neuro Biologix® – Produces dietary supplements for treatment of joint inflammation and pain
`relief as well as meal replacement drink mixes for promoting immune system and digestive
`health under its mark, which are marketed and sold on its website. May 16, 2018 Office action
`(“RFR Denial”), TSDR pp. 3-8.
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`• Naturade® – Produces dietary supplements for joint health, including reducing joint pain, and
`meal replacement mixes under its mark and features those goods for sale on its online retail
`store. Id. at pp. 9-14.
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`• Garden of Life® – Produces meal replacement bars and meal replacement drink mixes as well
`as dietary supplements for joint health, which promote normal joint function and mobility,
`and these goods are marketed and available for purchase on its online retail store. Id. at pp.
`23-31.
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`Isagenix® – Produces joint relief supplements and creams, which are used to soothe joint pain
`and inflammation, as well as meal replacement drink mixes under its mark, both of which are
`available for purchase through on their website. Id. at pp. 60-71.
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`• MaxLife Solution – Produces Inflagene™, a product intended for use as an anti-inflammatory
`and to promote joint health, which is identified as a nutritional supplement and
`pharmaceutical product. First action at pp. 30-31.
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` Nexgen Pharma® - Manufactures dietary supplements and pharmaceutical products, which
`are produced for grocery and health food stores and alternative health care practitioners,
`among others. November 10, 2017 Office action (“Final action”) at p. 67.
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`See also Final action at pp. 3-48, RFR Denial at pp. 15-22, 32-59. Moreover, neither the applicant nor
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`registration have any restrictions as to the channels of trade for their respective goods. Therefore, it is
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`presumed that these goods travel in all normal channels of trade, such as pharmacies. Final action at pp.
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`3-48. Thus, consumers are accustomed to encountering the goods at issue through the same channels of
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`trade and emanating from the same commercial entities under the same mark.
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`In its brief, the applicant argues that the goods are dissimilar because the goods are formulated
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`differently and subject to different labeling requirements. Brief at pp. 17-19. However, the registrant’s
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`meal replacement bars and drink mixes are not limited to those produced as a pharmaceutical and,
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`therefore, those goods would include meal replacement products subject to the same labeling
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`requirements of the applicant’s goods. Moreover, the applicant submits no evidence that establishes
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`consumers would believe the goods at issue emanate from different commercial sources based on any
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`differences in formulation or labeling.
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`Regardless, the fact that the goods of the parties differ is not controlling in determining
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`likelihood of confusion. Instead, the issue is whether there will be a likelihood of confusion as to the
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`source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d
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`1201, 1205 (Fed. Cir. 2003); TMEP §1207.01. Here, the evidence of record clearly establishes that the
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`same commercial entities in the medical industry commonly manufacture pharmaceutical products and
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`dietary supplements. Final action at pp. 50-71.
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`Furthermore, the applicant’s argument that the goods are non-competitive and travel through
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`dissimilar channels of trade is also unpersuasive. Brief at pp. 19-22. The identification of goods in the
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`registration does not limit its pharmaceutical products, medical preparations, or dietetic substances to
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`only those sold pursuant to a prescription or by a medical professional. Thus, it is presumed that the
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`registrant’s goods include those sold over-the-counter, that is, without a prescription. Final action at pp.
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`73-81. Thus, the goods at issue are competitive and travel through the same channels of trade as the
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`evidence of record demonstrates that retail pharmacies commonly feature dietary supplements, over-
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`the-counter pharmaceutical and medical preparations, and dietetic meal replacement products for
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`purchase without a prescription and market those goods to the same consumers. Id. at pp. 3-48.
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`Based on the foregoing, the goods of the applicant and registrant are related and this factor
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`weighs in favor of finding a likelihood of confusion.
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`C) OTHER FACTORS
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`Consumer Sophistication
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`Purchaser sophistication does not obviate the likelihood of confusion. The applicant has
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`submitted no evidence that consumers of the goods at issue are sophisticated. Regardless, the fact that
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`purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they
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`are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP
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`§1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110
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`USPQ2d 1157, 1163-64 (Fed. Cir. 2014).
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`Furthermore, the applicant’s argument that only medical professionals are consumers of the
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`registrant’s goods is inaccurate. Brief at pp. 21-22. As noted earlier, the identification of goods in the
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`registration does not limit its pharmaceutical products, medical preparations, or dietetic substances to
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`only those sold pursuant to a prescription or by a medical professional. Thus, the registrant’s goods
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`would include pharmaceutical products, medical preparations, or dietetic substances sold over-the-
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`counter and directly to consumers. Final action at pp. 3-48, 73-81. Accordingly, the goods at issue are
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`available to both professional purchasers and the general public. The standard of care for purchasing the
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`goods is that of the least sophisticated potential purchaser. Primrose Ret. Cmtys., LLC v. Edward Rose
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`Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016). Because the goods at issue are available to the
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`general public, the relevant consumers include those not knowledgeable in the field of trademarks and,
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`therefore, more likely to experience source confusion.
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`Absence of Actual Confusion
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`The applicant’s claim that there are no known instances of actual consumer confusion is
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`unpersuasive. Brief at pp. 22-23. “‘[A] showing of actual confusion is not necessary to establish a
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`likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir.
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`2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380
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`(Fed. Cir. 2002)); TMEP §1207.01(d)(ii). The evidence of record clearly establishes that the marks are
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`similar and the goods are related and, thus, there exists a likelihood of confusion between the applied-
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`for mark and the registered marks.
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`CONCLUSION
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`The overriding concern is not only to prevent buyer confusion as to the source of the goods, but
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`to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.
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`See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any
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`doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP
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`§1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001,
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`1003 (Fed. Cir. 2002).
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`In this instance, the applicant’s mark NEWMERA is likely to be confused with the registrant’s
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`marks for NEMERA because the marks are similar in sound and appearance and are used on related
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`goods. As such, it is highly likely that the applicant’s mark, NEWMERA, and the registrant’s marks,
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`NEMERA, will cause consumer confusion. For the foregoing reasons, it is respectfully submitted that the
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`refusal of registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), be affirmed.
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`Respectfully submitted,
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`/Thomas Young/
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`Examining Attorney
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`Law Office 120
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`thomas.young@uspto.gov
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`(571) 272-5152
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`David Miller
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`Managing Attorney
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`Law Office 120
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