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`This Opinion is not a
`Precedent of the TTAB
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`Mailed: March 20, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Swiss Tech Biolabs, Inc.
`_____
`
`Serial No. 87332368
`
`_____
`
`
`Jay Stein of Stein & Associates
`for Swiss Tech Biolabs, Inc.
`
`
`Thomas Young, Trademark Examining Attorney, Law Office 120,
`David Miller, Managing Attorney.
`
`
`Before Zervas, Shaw and Kuczma,
`Administrative Trademark Judges.
`
`_____
`
`
`Opinion by Zervas, Administrative Trademark Judge:
`Swiss Tech Biolabs, Inc. (“Applicant”) seeks registration on the Principal Register
`
`of the standard character mark NEWMERA for “Dietary supplements for the
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`alleviation of edema and pain” in International Class 5.1
`
`
`1 Application Serial No. 87332368, filed on February 10, 2017 pursuant to Section 1(a) of the
`Trademark Act, 15 U.S.C. § 1051(a), asserting first use on March 26, 2013 and first use in
`commerce on March 1, 2014.
`
`
`
`Serial No. 87332368
`
`The Examining Attorney refused registration pursuant to Section 2(d) of the
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`Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
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`to Applicant’s goods, is likely to cause confusion with the previously registered mark
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` for goods and services including the following International
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`Class 5 goods:
`
`Pharmaceutical products for the treatment of ophthalmic disorders,
`respiratory disorders, dermatological disorders, ophthalmologic and
`inflammatory disorders; Medical products, namely, pharmaceutical
`preparations for use in the treatment of ophthalmic disorders,
`respiratory disorders and inflammatory disorders; Sanitary products for
`medical purposes, namely, sanitary preparations for medical use;
`Dietetic substances for medical use, namely, meal replacement bars and
`meal replacement drink mixes.2
`
`After the Examining Attorney made the refusal final, Applicant appealed and
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`requested reconsideration. On remand from the Board, the Examining Attorney
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`denied the request for reconsideration. The appeal resumed and both Applicant and
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`the Examining Attorney filed briefs. We affirm the refusal to register.
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`I. Likelihood of Confusion
`
`Our determination under Section 2(d) of the Trademark Act is based on an
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`analysis of the probative facts in evidence that are relevant to the factors bearing on
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`a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
`
`USPQ 563 (CCPA 1973) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
`
`Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
`
`
`2 Registration No. 4857255, registered November 24, 2015. The registration states that the
`mark consists of the stylized wording “NEMERA,” in orange, the color orange is claimed as a
`feature of the mark and “NEMERA” has no meaning in a foreign language.
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`- 2 -
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`Serial No. 87332368
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`In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
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`considering the evidence of record on these factors, we keep in mind that “[t]he
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`fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
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`differences in the essential characteristics of the goods and differences in the marks.”
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`Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
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`(CCPA 1976). “Not all of the [du Pont] factors are relevant to every case, and only
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`factors of significance to the particular mark need be considered.” Coach Servs., Inc.
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`v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012)
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`(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir
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`2010)).
`
`A. The Marks
`
`We first consider whether Applicant’s and registrant’s marks are similar when
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`viewed in their entireties in terms of appearance, sound, connotation and commercial
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`impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
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`110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve
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`Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1689). The test under the
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`this du Pont factor is not whether the marks can be distinguished when subjected to
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`a side-by-side comparison, but rather whether the marks are sufficiently similar that
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`confusion as to the source of the goods under the respective marks is likely to result.
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`See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017);
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`Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. The focus is on
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`the recollection of the average purchaser, who normally retains a general rather than
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`Serial No. 87332368
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`a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC,
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`118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089
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`(TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). The
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`average purchaser of both Applicant’s and registrant’s goods is a member of the
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`general public.
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`Applicant has simply added the letter “W” between the second and third letters of
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`registrant’s mark. Because the letter “W” lies within Applicant’s mark and it shares
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`all of the remaining lettering in the same order as in registrant’s mark, the marks
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`appear similar. Of course, the addition of the letter “W” makes the first syllable of
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`Applicant’s mark the English word, “new.” The term “new” only slightly changes the
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`appearance and sound of the marks and therefore does not distinguish them.3 The
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`additional letter “W” also does not provide any meaning to the mark considered as a
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`whole; both marks are arbitrary terms with no known meaning. Due to the arbitrary
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`nature of the marks and the similarity – almost identity – in lettering, the marks
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`have a similar commercial impression.
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`We do not agree with Applicant that the “marks have different meanings and
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`suggestive
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`connotations.”4 Applicant
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`relies on
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`the webpage
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`located at
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`http://www.nemera.net/about-us/new-identity, presumably registrant’s webpage,
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`3 The fact that Applicant’s mark is a standard character mark and registrant’s mark is
`stylized is not of any importance; Applicant’s standard character mark is not limited to any
`particular form of display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
`Cir. 1983), and could be presented, for example, in the same style, color and size of lettering
`as registrant’s mark.
`4 Applicant’s brief at 10, 11 TTABVUE 15.
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`- 4 -
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`Serial No. 87332368
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`which states NEMERA is “from the Greek Emera, meaning day, renewal, fresh hope,
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`life” and “from and the Hebrew and Arabic Nemer, meaning leopard: swiftness,
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`efficiency, agility.”5 Applicant has not offered evidence that demonstrates recognition
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`by U.S. consumers of these derivations, Applicant has not identified or proven the
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`primary meaning of the term and the translation statement in the registration record
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`provides that that “NEMERA” has no meaning in a foreign language. Further, it has
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`not escaped our attention that the “Think Baby Names” webpage submitted by
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`Applicant states “Nemera is an uncommon given name for women” and “Nemera has
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`yet to be listed in the list thus far. (TOP BABY NAMES, 2016).”6 This reinforces the
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`arbitrary nature of registrant’s mark.
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`The du Pont factor regarding the similarity of the marks weighs in favor of finding
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`that confusion is likely.
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`B. The Goods, Trade Channels and Classes of Purchasers
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`It is well settled that goods and services need not be identical or even competitive
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`to support a finding of likelihood of confusion. Rather, it is sufficient that the goods
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`are related in some manner or that the circumstances surrounding their marketing
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`are such that they would be likely to be encountered by the same persons in situations
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`that would give rise, because of the marks used thereon, to a mistaken belief that
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`they originate from or are in some way associated with the same producer or that
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`there is an association between the producers of the goods or services. See In re
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`
`5 Id. at 10-11, 11 TTABVUE 15-16; Req. for Recon., TSDR 27.
`6 Req. for Recon., TSDR 30.
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`Serial No. 87332368
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`Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Int’l Telephone & Telegraph
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`Corp., 197 USPQ 910 (TTAB 1978). We must compare the goods as described in the
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`application and the registration to determine if there is a likelihood of confusion.
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`Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
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`(Fed. Cir. 1987).
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`The Examining Attorney argues that the Applicant’s and registrant’s goods are
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`related for two reasons.
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`First, the Examining Attorney maintains that “dietary supplements for the
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`alleviation of edema and pain” and medical products, namely, pharmaceutical
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`preparations for use in the treatment of inflammatory disorders “are competitive as
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`both intended for and will be marketed to the same class of consumers.”7 Edema and
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`pain are related to inflammatory disorders. The Merriam-Webster Dictionary defines
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`“edema” as an “abnormal infiltration and excess accumulation of serous fluid in
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`connective tissue or in a serous cavity.”8 “Edema” is addressed in webmd.com as “the
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`medical term for swelling. Body parts swell from injury or inflammation”;9 it explains,
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`“a large allergic reaction (such as from a bee sting) may cause edema on your entire
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`arm that can bring … pain” and “[t]o treat edema, you often must treat its underlying
`
`
`7 13 TTABVUE 9.
`8 https://www.merriam-webster.com/dictionary/edema. We take judicial notice of this
`definition. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame
`du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
`217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
`regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
`9 November 5, 2017 Office Action, TSDR 20.
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`- 6 -
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`Serial No. 87332368
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`cause.”10 Edema and inflammation are not one in the same; edema can be caused by
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`inflammation. The treatment of edema logically involves the treatment of the
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`inflammation underlying the edema and the treatment of pain.
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`Moving on, the record reflects several medications, including Advil, for treating
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`pain and inflammation. Advil is identified as effective for “minor pain of arthritis”
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`and “arthritis” is defined as “inflammation of joints due to infectious, metabolic, or
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`constitutional causes.”11 The record further reflects that certain pain and
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`inflammation medications such as Advil may be obtained without a prescription, and
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`are available at drug stores.12 See webpages from cvs.com13 and walgreens.com.14
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`Applicant’s goods are advertised as “A Natural Pill To Relieve Pain[,] A Safe
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`Alternative to Over-The-Counter Drugs” and promotional material states, “Most
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`Over-The-Counter Drug Pain Relief Pills May Lead to Stroke and Heart Attack.”15
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`Applicant’s goods hence are competitive with pharmaceutical preparations for use in
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`the treatment of inflammatory disorders, listed in registrant’s identification of goods.
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`
`10 November 5, 2017 Office Action, TSDR 23.
`11 https://www.merriam-webster.com/dictionary/arthritis. We also take judicial notice of this
`definition.
`12 The identifications of goods contain no limitations so we assume that the channels include
`all normal channels of trade. Morton-Norwich Prods, Inc. v. N. Siperstein, Inc., 222 USPQ
`735, 736 (TTAB 1984) (“Since there is no limitation in applicant’s identification of goods, we
`must presume that applicant’s paints move in all channels of trade that would be normal for
`such goods, and that the goods would be purchased by all potential customers.”).
`13 November 10, 2017 Office Action, TSDR 8-16.
`14 Id. at TSDR 19-37.
`15 February 10, 2017 Specimen of Use.
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`Serial No. 87332368
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`Upon consideration of the foregoing and all of the other evidence in the record, we
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`find that the ultimate consumers of Applicant’s and registrant’s goods overlap,16 such
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`goods may be purchased in the same locations without prescriptions including drug
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`stores and their websites, such goods have the same objective (the alleviation of
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`edema and pain) through anti-inflammatory properties and such goods are
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`competitive with each another.
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`A second reason for finding the goods related, according to the Examining
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`Attorney, is because single entities manufacture “dietary supplements for the
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`alleviation of edema and pain” and “dietetic substances for medical use, namely, meal
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`replacement bars and meal replacement drink mixes” under the same mark. The
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`Examining Attorney made of record the following webpages from Internet retailers
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`demonstrating a commercial relationship between such goods:
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`joint
`Neuro Biologix – offering a dietary supplement for
`inflammation and pain relief and meal replacement drink mixes for
`promoting immune system and digestive health.17
`
`Naturade – offering dietary supplements for joint health, including
`reducing joint pain, and meal replacement mixes for weight loss or
`health goals.18
`
`Isagenix – offering joint support dietary supplements that “helps
`protect, rejuvenate, and soothe joints,” as well as meal replacement
`drink mixes “for healthy weight loss” and “to maintain good health.”19
`
`
`
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`16 Applicant agrees insofar as it states that the general public are buyers of dietary
`supplements. Applicant’s brief at 16, 11 TTABVUE 21.
`17 May 16, 2018 Office Action (“RFR Denial”), TSDR 3-8.
`18 Id., TSDR 9-14.
`19 Id., TSDR 60-71.
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`- 8 -
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`Serial No. 87332368
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`GNC – offering “GNC Total Lean Shake” (for maintaining weight,
`potentially a medical condition for some) and GNC TRIFLEX which
`“[s]upports improved joint comfort, flexibility and function, and the
`body’s natural anti-inflammatory response.”20
`
`Applicant argues that the goods differ substantially in nature and formulation
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`because registrant’s goods are “drugs” while Applicant’s goods are from “natural plant
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`materials and herbal formulations” that can be consumed without the processes,
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`approvals and restrictions required for pharmaceuticals. There are problems with
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`Applicant’s argument. First, not all of registrant’s goods are pharmaceuticals;
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`“dietetic substances for medical use, namely, meal replacement bars and meal
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`replacement drink mixes” are included within registrant’s identification of goods and
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`are not pharmaceuticals. (“Pharmaceutical” is defined as “a medicinal drug.”)21
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`Second, the proper inquiry is not whether the goods could be confused, but rather
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`whether the source of the goods could be confused. In re Rexel, Inc., 223 USPQ 830,
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`831 (TTAB 1984). Third, goods can be related in several ways, one of which is through
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`the circumstances surrounding their marketing (as stated above). The Examining
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`Attorney has submitted evidence that the goods bear a commercial relationship, that
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`the goods are of the type that come from a common source and Applicant’s specimen
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`indicates that its goods are an alternative to registrant’s goods.
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`The du Pont factors regarding the relatedness of the goods, trade channels and
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`classes of consumers all favor a finding of likelihood of confusion.
`
`
`20 Id., TSDR 35-51.
`21 https://www.merriam-webster.com/dictionary/pharmaceutical. We take judicial notice of
`this definition.
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`Serial No. 87332368
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`C. Conditions of Sale
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`The next du Pont factor we consider concerns the conditions of sale. Applicant
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`argues that doctors are effectively the buyers of pharmaceuticals in that they select
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`the goods.22 Registrant’s goods as identified are not limited to pharmaceuticals by
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`prescription but encompasses over-the-counter drugs which may be purchased
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`without a prescription. Its argument also does not account for patient involvement in
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`the selection of prescription drugs.
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`Applicant also argues that “[t]oday’s buyers are well aware of the possibility that
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`a good may come from a different identity or different source even when the
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`trademark is similar.”23 Applicant offers no evidence to support its argument and
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`hence it is not persuasive. Its citation to precedent involving unrelated goods such as
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`women’s wearing apparel, ladies undergarments and shoes, is not helpful.24
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`As for Applicant’s argument in its reply brief that buyers of the goods are
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`informed, and “[t]here is no possibility of whimsical or impulse buying,”25 we point
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`out that the standard of care for our analysis is that of the least sophisticated
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`purchaser. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).
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`There is nothing in the record to support a finding that the average purchasers of
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`dietary supplements, dietetic substances for medical use and over-the-counter
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`pharmaceuticals possess specialized knowledge. Cf. Miles Labs. Inc. v. Naturally
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`
`22 Applicant’s brief at 16, 11 TTABVUE 21.
`23 Id. at 17, 11 TTABVUE 22.
`24 Id. at 17, 11 TTABVUE 22.
`25 Reply brief at 9, 14 TTABVUE 10.
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`Serial No. 87332368
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`Vitamin Supplements Inc., 1 USPQ2d 1445, 1451 (TTAB 1986), (“[w]e agree with
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`applicant ... that purchasers of vitamins are likely to exercise special care in making
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`their product selections.”). While purchasers of dietary supplements may take greater
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`care purchasing goods of the type identified in registrant’s identification of goods, the
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`record does not support a finding that such care outweighs the other du Pont factors.
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`In any event, the fact Applicant's consumers may be sophisticated about dietary
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`supplements, dietetic substances for medical use and pharmaceuticals, does not mean
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`that they are sophisticated and knowledgeable about trademarks, or have such good
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`memories for the minimal differences between the marks at issue that they could
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`differentiate between respective marks or appreciate that similarity does not imply
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`some kind of business relationship or affiliation. See Hydrotechnic Corp. v. Hydrotech
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`Int’l, Inc., 196 USPQ 387, 392-393 (TTAB 1977); Refreshment Mach. Inc. v. Reed Ind.,
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`Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated purchaser does not
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`automatically eliminate the likelihood of confusion because “[i]t must also be shown
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`how the purchasers react to trademarks, how observant and discriminating they are
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`in practice, or that the decision to purchase involves such careful consideration over
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`a long period of time that even subtle differences are likely to result in recognition
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`that different marks are involved”).
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`D. Lack of Actual Confusion
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`Applicant argues that there has been concurrent use of the marks for over five
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`years without any confusion. However, it is not necessary to show actual confusion in
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`order to establish likelihood of confusion. See Weiss Assocs. Inc. v. HRL Assocs. Inc.,
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`- 11 -
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`Serial No. 87332368
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`902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). An applicant’s assertion of the
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`absence of actual confusion in an ex parte proceeding, is of little probative value in
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`our determination on the issue of likelihood of confusion because the Board cannot
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`readily determine whether there has been a significant opportunity for actual
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`confusion to have occurred, such that the absence of confusion is meaningful. See In
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`re Opus One Inc., 60 USPQ2d 1812, 1817-1818 (TTAB 2001); In re Jeep Corp., 222
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`USPQ 333, 337 (TTAB 1984).
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`E. Conclusion
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`We have considered all of the evidence of record and all of the Examining
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`Attorney’s and Applicant’s arguments, including arguments not specifically
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`addressed in this decision. The similarity of the marks and goods, the identical classes
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`of consumers and the overlapping trade channels, favor a finding of likelihood of
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`confusion. Further, Applicant has not demonstrated any weakness in registrant’s
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`mark and we have found registrant’s mark to be an arbitrary mark. An arbitrary
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`mark is considered to be an inherently strong mark. See In re Opus One Inc., 60
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`USPQ2d 1812, 1813-14 (TTAB 2001) (arbitrary mark is considered strong and
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`entitled to a “broad scope of protection”). In view thereof, we find that Applicant’s
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`mark for “dietary supplements for the alleviation of edema and pain” is likely to be
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`confused with registrant’s mark for goods including “pharmaceutical products for the
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`treatment of inflammatory disorders”; “medical products, namely, pharmaceutical
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`preparations for use in the treatment of inflammatory disorders”; and “dietetic
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`Serial No. 87332368
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`substances for medical use, namely, meal replacement bars and meal replacement
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`drink mixes.”
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`Decision: The refusal to register is affirmed.
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`
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