Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1195306
`
`Filing date:
`
`03/08/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex parte appeal
`no.
`
`88732121
`
`Appellant
`
`Mark Leitgeb
`
`Applied for mark
`
`PROCELLER8
`
`Correspondence
`address
`
`Submission
`
`Attachments
`
`Appealed class
`
`KEVIN P HARTLEY
`TRUST TREE LEGAL PC
`798 BERRY ROAD #41400
`NASHVILLE, TN 37204
`UNITED STATES
`Primary email: kevin@trust-tree.com
`Secondary email(s): docket@trust-tree.com
`615-469-0451
`
`Appeal brief
`
`PROCELLER8 Appeal Brief.pdf(223807 bytes )
`
`Class 005.
`All goods and services in the class are appealed, namely: Dietary supplements;
`Herbal supplements; Mineral supplements; Nutritional supplements; Protein sup-
`plements; Vitamin supplements; Weight management supplements;all the fore-
`going excluding anti-inflammatories and sold exclusively through network mar-
`keting
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Kevin P. Hartley
`
`kevin@trusttree.com, docket@trusttree.com
`
`/Kevin P. Hartley/
`
`03/08/2022
`
`
`
`ESTTA Tracking number:
`
`ESTTA1195306
`
`Filing date:
`
`03/08/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex parte appeal
`no.
`
`88732121
`
`Appellant
`
`Mark Leitgeb
`
`Applied for mark
`
`PROCELLER8
`
`Correspondence
`address
`
`Submission
`
`Attachments
`
`Appealed class
`
`KEVIN P HARTLEY
`TRUST TREE LEGAL PC
`798 BERRY ROAD #41400
`NASHVILLE, TN 37204
`UNITED STATES
`Primary email: kevin@trust-tree.com
`Secondary email(s): docket@trust-tree.com
`615-469-0451
`
`Appeal brief
`
`PROCELLER8 Appeal Brief.pdf(223807 bytes )
`
`Class 005.
`All goods and services in the class are appealed, namely: Dietary supplements;
`Herbal supplements; Mineral supplements; Nutritional supplements; Protein sup-
`plements; Vitamin supplements; Weight management supplements;all the fore-
`going excluding anti-inflammatories and sold exclusively through network mar-
`keting
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Kevin P. Hartley
`
`kevin@trusttree.com, docket@trusttree.com
`
`/Kevin P. Hartley/
`
`03/08/2022
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Serial No.:
`
`Mark:
`
`Applicant:
`
`
`
`
`
`
`
`
`
`
`
`88/732,121
`
`PROCELLER8
`
`Mark Leitgeb
`
`Examining Attorney:
`
`
`
`
`
`
`Carl A Konschak
`Law Office 126
`
`
`
`EX PARTE APPEAL
`APPLICANT’S BRIEF
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I. PROSECUTION HISTORY ...........................................................................3
`
`II. BACKGROUND ...............................................................................................4
`
`III. ARGUMENT ....................................................................................................5
`
`A. Considered as a whole, Applicant’s Mark and the Cited Marks are not
`confusingly similar. ................................................................................................5
`B. Applicant’s Goods differ from Registrant’s Goods. .....................................12
`C. The parties target a discrete subset of customers through distinct market
`channels. ...............................................................................................................17
`D. There is no evidence of confusion between Applicant’s Mark and the Cited
`Marks. ..................................................................................................................20
`
`IV. CONCLUSION ...............................................................................................21
`
` i
`
`
`
`Applicant Mark Leitgeb (“Applicant”) appeals the Examiner’s refusal to
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`register the standard character mark PROCELLER8 (“Applicant’s Mark”) for use
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`in connection with “Dietary supplements; Herbal supplements; Mineral
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`supplements; Nutritional supplements; Protein supplements; Vitamin supplements;
`
`Weight management supplements; all the foregoing excluding anti-inflammatories
`
`and sold exclusively through network marketing,” as amended, in International
`
`Class 5 (“Applicant’s Goods”).
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`The Examiner’s refusal is based on a perceived likelihood of confusion with
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`the following marks owned by Vomaris Innovations, Inc. (“Registrant”):
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`PROCELLERA (Reg. No. 4,444,012) and PROCELLERA HELIX (Reg. No.
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`4,851,446)1 (together, the “Cited Marks”)2 for “Adhesive bandages; Adhesive for
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`bandages for skin wounds; Analgesics; Anesthetics for non-surgical use; Anti-
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`dermoinfectives; Anti-infectives; Anti-inflammatories; Antibacterial substances for
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`medical purposes; Antimicrobial coatings to treat the growth of mold, mildew,
`
`
`1 The initial deadline to maintain the PROCELLERA HELIX registration was
`November 10, 2021. Registrant did not file submit a maintenance filing before that
`date and has not submitted a maintenance filing as of the filing of this Appeal
`Brief. The grace period deadline for Registrant to maintain the registration is May
`10, 2022.
`
` 2
`
` The Examiner also cited the registration for PROCELLERA HELIX POST-OP
`(Reg. No. 4,727,806) as grounds for refusal. That registration was cancelled due to
`Registrant’s failure to file a declaration under Section 8. As such, it’s no longer an
`obstacle to registration.
`
` 1
`
`
`
`bacteria and fungus on various surfaces; Antimicrobials for dermatologic use;
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`Antivirals; Bandages for dressings; Bandages for skin wounds; Burn dressings;
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`Dermatologicals; Dressings for wounds, burns and surgery; Surgical bandages;
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`Surgical dressings; Topical analgesics; Wound dressings; Anti-inflammatory and
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`antipyretic preparations for the treatment of wounds and skin disorders; Athletes'
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`foot preparations; Bacteriostats for medicinal, dental and veterinary use;
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`Preparation for the relief of pain for the treatment of wounds and skin disorders;
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`Topical preparations for destroying parasites; Self adhesive dressings; Veterinary
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`preparations, namely, pain relief medication for the treatment of wounds and skin
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`disorders” in International Class 5 (“Registrant’s Goods”).
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`In refusing Applicant’s Mark, the Examiner focused on the shared letter-
`
`string “PROCELLER” in isolation, failing to properly consider the differences
`
`between Applicant’s Mark and the Cited Marks. When Applicant’s Mark and the
`
`Cited Marks are compared in their entireties, the differences are more than
`
`sufficient to prevent consumer confusion. Furthermore, Applicant’s Goods are
`
`entirely distinct from Registrant’s Goods. Additionally, Applicant and Registrant
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`target discrete subsets of customers through distinct market channels further
`
`eliminating any likelihood of confusion. Finally, there is no evidence of confusion
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`between Applicant’s Mark and the Cited Marks. Accordingly, Applicant’s Mark is
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`entitled to registration on the Principal Register.
`
` 2
`
`
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`I. PROSECUTION HISTORY
`
`On December 18, 2019, Applicant filed Application Number 88/732,121 (the
`
`“Application”) seeking to register Applicant’s Mark for “Dietary supplements;
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`Herbal supplements; Mineral supplements; Nutritional supplements; Protein
`
`supplements; Vitamin supplements; Weight management supplements; all the
`
`foregoing excluding anti-inflammatories and sold exclusively through network
`
`marketing,” as amended, in International Class 5 (“Applicant’s Goods”).
`
`Applicant’s Mark was initially refused registration in Class 5 through a non-
`
`final office action dated March 18, 2020 (the “Non-Final Office Action”). The
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`Examiner’s refusal was based on a perceived likelihood of confusion between
`
`Applicant’s Mark and the Cited Marks. Applicant filed a response to the Non-Final
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`Office Action on September 18, 2020 (the “Response to Office Action”).
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`Following the Applicant’s response, the Examiner issued another Non-Final
`
`Action, dated November 12, 2020, which maintained the likelihood of confusion
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`refusal (the “Second Office Action”). Applicant filed a response on May 12, 2021
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`(the “Response to Second Office Action”).
`
`The Examiner finalized the likelihood-of-confusion refusal with a Final
`
`Office Action dated June 23, 2021 (the “Final Office Action”). Following the Final
`
`Office Action, Applicant filed a Request for Reconsideration on December 23,
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` 3
`
`
`
`2021 (the “Request for Reconsideration”), which was denied by letter dated
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`January 5, 2022 (the “Reconsideration Letter”).
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`II. BACKGROUND
`
`Applicant offers a variety of dietary supplements, exclusively through
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`network marketing, that help wellness-minded individuals with energy and focus.
`
`See Response to Office Action, Exhibit A. Applicant does not market anti-
`
`inflammatories or other medical preparations nor does Applicant market bandages
`
`or other medical products. As the Food and Drug Administration (FDA) expressly
`
`recognizes, dietary supplements are not medicines. Dietary supplements are not
`
`intended to treat, diagnose, cure, or alleviate the effects of diseases. See, e.g.,
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`Response to Office Action, Exhibit B. Accordingly, the FDA regulates
`
`supplements differently than medical products. See id.
`
`Registrant is a corporation that sells products that serve a medical purpose—
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`bandages and other wound dressings, together with related medical preparation
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`used to treat wounds, prevent infection, and/or relieve pain. This is consistent with
`
`Registrant’s website for its PROCELLERA line, which explains that “Procellera
`
`Antimicrobial Wound Dressing is indicated for superficial wounds such as minor
`
`cuts, scrapes, irritations, abrasions, and blisters.” See Response to Office Action,
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`Exhibit C. The full line of available PROCELLERA goods consists of wound
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` 4
`
`
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`dressings and wound-treating hydrogels. See Response to Office Action, Exhibit D.
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`Significantly, neither of the Cited Marks is registered for supplements.
`
`III. ARGUMENT
`
`The likelihood-of-confusion analysis is guided by a number of factors set
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`forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
`
`(CCPA 1973). In the present case, the relevant factors include the similarity or
`
`dissimilarity of the marks in their entireties, the similarity or dissimilarity of
`
`established, likely-to-continue trade channels, the nature and extent of any actual
`
`confusion, and the length of time during and the conditions under which there has
`
`been concurrent use without evidence of actual confusion. Id. When the marks are
`
`analyzed in their entireties, Applicant’s Mark creates a distinct commercial
`
`impression from the Cited Marks and is not likely to create consumer confusion.
`
`A. Considered as a whole, Applicant’s Mark and the Cited Marks
`are not confusingly similar.
`
`Neither Applicant’s Mark nor the Cited Marks are comprised solely of the
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`shared letter-string “proceller.” Nonetheless, the Examiner focuses on the letter-
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`string “proceller.” But “proceller” is not a mark unto itself. In the Cited Marks, the
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`vowel “a” is added to the letter-string “proceller.” One of the Cited Marks also
`
`includes the additional element “helix.” In Applicant’s Mark, the numeral “8” is
`
`added to the letter string “proceller” to create the invented portmanteau
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`“PROCELLER8.” These components of the Cited Marks and of Applicant’s Mark
`
` 5
`
`
`
`are essential to the sight, sound, and commercial impression that each mark
`
`creates. When considered in their entireties, confusion between Applicant’s Mark
`
`and the Cited Marks is unlikely.
`
`The mere identification of common elements between two marks does not
`
`mean that a likelihood of confusion exists. See Source Srv. Corp. v. Chicagoland
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`JobSource Inc., 1 U.S.P.Q.2d 1048 (N.D. Ill. 1986). When comparing marks, the
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`Examining Attorney must observe the “Anti-Dissection Rule.” The Anti-
`
`Dissection Rule holds that, in the likelihood-of-confusion of analysis, marks are
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`not to be dissected, but rather are to be considered as a whole. See TMEP §
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`1207.01 (citing In re National Data Corp., 224 U.S.P.Q. 749, 750-51 (Fed. Cir.
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`1985)). It has been held to be a violation of the Anti-Dissection Rule to focus on
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`the “prominent” features of a mark and decide likelihood of confusion solely on
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`those features, effectively ignoring other elements of the mark. See Massey Junior
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`College, Inc. v. Fashion Institute of Technology, 181 U.S.P.Q. 277 (C.C.P.A.
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`1974). Here, the Office Action violates the Anti-Dissection Rule by focusing
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`exclusively on the shared letter-string “proceller” at the expense of the other
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`elements that readily distinguish Applicant’s Mark from the Cited Marks.
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`For example, the Federal Circuit in In re Hearst Corp., in reversing a
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`decision of the TTAB, found “VARGAS” and “VARGA GIRL,” both for
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`calendars, to be sufficiently different to negate any likelihood of confusion. 25
`
` 6
`
`
`
`U.S.P.Q.2d 1238 (Fed. Cir. 1992). The TTAB, in analyzing the marks for
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`confusing similarity, had found that “VARGA” was the dominant element of the
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`VARGA GIRL mark, and that “GIRL” was merely descriptive and thus could not
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`be afforded substantial weight in comparing VARGA GIRL with VARGAS. Id.
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`The Federal Circuit determined that the Board had erred in its analytic approach
`
`stating:
`
`Although undoubtedly “VARGA” and “VARGAS” are similar, the marks
`must be considered in the way they are used and perceived. Marks tend to be
`perceived in their entireties, and all components thereof must be given
`appropriate weight. The appearance, sound, sight, and commercial
`impression of VARGA GIRL derive significant contribution from the
`component “GIRL.” By stressing the portion “VARGA” and diminishing the
`portion “GIRL,” the Board inappropriately changed the mark.
`
`Id. at 1239.
`
`Marks tend to be perceived in their entirety, and the appearance, sound,
`
`sight, and commercial impression of Applicant’s “PROCELLER8” mark derive
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`significant contribution from the numeral “8.” See id. Indeed, the “8” is the key to
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`the sound of Applicant’s Mark, which is pronounced “PROCELLEREIGHT.” This
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`intuitive pronunciation unlocks the meaning of Applicant’s Mark: an invented
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`portmanteau, “PROCELLERATE,” which combines “pro” (as in professional) and
`
`“accelerate.” This mark brings to consumer’s minds the idea of driven
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`professionals who want to get the most out of their days. Moreover, the use of the
`
`“8” at the end of “PROCELLER8” visually underscores this commercial
`
` 7
`
`
`
`impression. Because of the visual similarity to the infinity symbol, the “8” evokes
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`infinite possibility in the mind of the marks’ viewers: with energy and focus,
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`Applicant’s customers can achieve anything.
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`The appearance, sight, sound, and commercial impression of Applicant’s
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`Mark differ significantly from the Cited Marks. With respect to appearance, the
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`“8” jumps out to consumers as a distinguishing feature for several reasons. First, it
`
`is the last character in the word and therefore is especially important to the mark’s
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`appearance and the impression left in consumers’ memories. Indeed, psychological
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`research demonstrates that the final letters of words are especially important in
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`language processing. See K. Rayner, S.J. White, R.L. Johnson, & S.P. Liversedge,
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`Raeding wrods with jubmled lettres: There is a cost, 17 Psych. Science 192 (2006).
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`Second, the “8” is the sole number in Applicant’s Mark, and therefore commands
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`attention in the context of the mark as a whole. Third, the “8” visually calls to
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`mind the infinity symbol, as noted above.
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`All of this distinguishes Applicant’s Mark from Registration No. 4,444,012
`
`for PROCELLERA (and the other Cited Marks which include PROCELLERA plus
`
`additional elements), which does not feature any numbers and does not invoke an
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`infinity symbol, and therefore does not register with consumers in the same way.
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`Importantly, the phonetic difference between PROCELLER8 and PROCELLERA
`
`is substantial. The Office Action seems to assume that consumers will pronounce
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` 8
`
`
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`PROCELLERA as if it ends with a long “a” sound, as in “stay” or “day.” (Office
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`Action at 5 (“Substituting the numeral 8 for the letter A in PROCELLERA
`
`therefore produces, at most, only a slight difference in how the marks sound . . .
`
`.”)). Applicant respectfully submits this analysis is mistaken. Consumers will not
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`read “PROCELLERA” as ending with a long “a” because, in American English,
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`words that end with “RA” end with a short “a” sound. Consider the last three
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`letters of “PROCELLERA”—the word “era.” Era ends with a short “a” sound; it is
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`not pronounced “eray.” Similarly, consider extra, zebra, cobra, fedora, and okra,
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`just to name a few. “RA” signifies a short “a” sound.
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`This point is crucial because the difference in sound creates a stark
`
`difference in connotation and commercial impressions. As noted above,
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`Applicant’s Mark plays on the invented portmanteau “procellerate,” combining
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`“pro” and “accelerate” (and bringing to consumers’ minds a driven professional
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`trying to accomplish as much as possible). In the Second Office Action, the
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`Examiner claims that Applicant’s Mark “is similar to the [Cited Marks] because
`
`they all contain or comprise a portmanteau that combines the term ‘pro’ with a
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`variation of the term ‘accelerate.’” The Examiner’s claim is not supported by any
`
`evidence.
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`To the contrary, the element PROCELLERA in the Cited Marks appears to
`
`be a combination of the elements “pro,” “cell,” and “era,” not the elements “pro”
`
` 9
`
`
`
`and “accelerate.” Indeed, the PROCELLERA line of products are built around
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`patented technology that incorporates embedded microcell batteries to work on a
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`cellular level. See Response to Second Office Action, Exhibit B. The use of the
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`element “cell” in the Cited Marks is not derived from the word “accelerate,” but
`
`stands on its own as the word “cell.” See id. Furthermore, the use of the element
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`“Pro” in the Cited Marks appears to work on several levels, as the Registrant touts
`
`that the PROCELLERA products “Provide an Optimal Environment for Wound
`
`Healing” and “Promote Healing.” See id. (emphasis added). At a minimum, there
`
`is no evidence that the element “PROCELLERA” is a portmanteau of the words
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`“pro” and “accelerate,” while there is evidence that the elements “Pro,” “cell,” and
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`“era” stand on their own.
`
`The Cited Marks may be a play on a different invented word, but they do not
`
`evoke the “procellerate” portmanteau or invoke this meaning, because they do not
`
`sound like “accelerate.” The Cited Marks rhyme more nearly with “etcetera” than
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`“accelerate.” Moreover, the use of the element “CELL” in the Cited Marks relates
`
`directly to how Registrant’s Goods promote healing in human cells. See, e.g.,
`
`Exhibit E. It does not in any way relate to the word accelerate. Furthermore, a
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`consumer is unlikely to work from the appearance or sound of the Cited Marks to
`
`the concept of acceleration, and therefore will draw distinct commercial
`
`impressions from the Cited Marks than from Applicant’s Mark.
`
` 10
`
`
`
`In sum, Applicant’s Mark differs from the Cited Mark in sight, sound,
`
`connotation, and commercial impression. Under the VARGAS analysis, there is no
`
`reason why PROCELLER8 cannot register. Indeed, Applicant notes the USPTO
`
`has allowed a number of other marks to register based on differences in the last
`
`letter of marks, even where the difference was letter versus letter (rather than letter
`
`versus number), and even where the goods or services at issue were more similar
`
`than those in the present case.
`
`• EPIC in Class 42 for providing a website featuring non-downloadable
`
`software (Reg. No. 4,164,249) and EPIK in Class 42 for computer and
`
`online services (Reg. No. 3,958,035);
`
`• MAGNETIC in Class 42 for computer services (Reg. No. 4,827,102) and
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`MAGNETIK in Class 42 for computer software consulting and design
`
`services (Reg. No. 4,136,578);
`
`• CENTRIC in Class 9 for computer software and Class 42 for Design and
`
`creation of proprietary computer databases (Reg. No. 5,102,666) and
`
`CENTRIK in Class 9 for computer software and Class 42 for providing on-
`
`line non-downloadable software (Reg. No. 4,622,535); and
`
`• FABRIC in Class 42 for software as a service (Reg. No. 4,726,520) and
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`FABRIK in Class 42 for providing on-line non-downloadable software (Reg.
`
`No. 3,917,364).
`
` 11
`
`
`
`Copies of printouts from the USPTO’s Trademark Database for the following pairs
`
`of registrations are attached as Collective Exhibit F to the Response to Office
`
`Action.
`
`Here, again, the marks are differentiated not only by one letter versus
`
`another but by a letter versus a number, and in a way that directly shapes the
`
`marks’ sounds, meanings, and commercial impressions. Thus, Applicant’s Mark is
`
`more than sufficiently distinct from the PROCELLERA mark to prevent consumer
`
`confusion—particularly given that the marks deal with distinct goods sold through
`
`distinct trade channels. Because Applicant’s Mark is sufficiently distinct from the
`
`PROCELLERA mark (Reg. No. 4,444,012), it follows that it is also sufficiently
`
`distinct from the PROCELLERA HELIX mark (Reg. No. 4,851,446), which
`
`contain additional distinguishing word elements in addition to the term
`
`PROCELLERA.
`
`
`
`In sum, Applicant respectfully submits that the Examiner did not give proper
`
`weight to the substantial effect the above-referenced differences have on the sight,
`
`sound, meaning, and commercial impressions of the marks. These important
`
`differences between the marks make confusion unlikely. Accordingly, Applicant’s
`
`Mark should be approved.
`
`B. Applicant’s Goods differ from Registrant’s Goods.
`
`The marks are not confusingly similar because there are clear differences
`
` 12
`
`
`
`between Applicant’s Goods and Registrant’s Goods. The court in du Pont
`
`considered the “nature of the goods or services as described in an application or
`
`registration” when determining whether there was a likelihood of confusion. Id. at
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`1361. The registration of a trademark grants its owner the exclusive right to use the
`
`mark only for the “goods or services specified in the certificate,” 15 U.S.C. §
`
`1115(a), and does not carry any presumption of an exclusive right for non-
`
`competing goods. See Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607 (2d Cir.
`
`1960), cert. den. 364 U.S. 909 (finding no likelihood of confusion between
`
`HAYMAKERS for women’s shoes and HAYMAKER for women’s clothing);
`
`Viacom International Inc. v. Komm, 46 USPQ2d 1233, 1239 (TTAB 1998)
`
`(software products and gaming products with the cartoon character MIGHTY
`
`MOUSE not likely to be confused with a computer mouse software program under
`
`MY-T-MOUSE).
`
`Here, Applicant’s Mark is for supplements, rather than medical products or
`
`preparations. Moreover, Applicant’s supplements are not in any way related to
`
`wound dressing or healing, and they are only available through network marketing
`
`(i.e., Applicant’s Goods are not sold through stores, but through a network of
`
`private distributors), as discussed further below. In contrast, the Cited Marks are
`
`registered for certain medical products and preparations, and not supplements.
`
`Registrant’s Goods are related to wound dressing and healing, and they are
`
` 13
`
`
`
`marketed through general channels, but there is no evidence that Registrant’s
`
`Goods are sold through network marketing.
`
`Applicant’s Goods and Registrant’s Goods do not overlap or compete. In
`
`finding a relationship between Applicant’s Goods and Registrant’s Goods, the
`
`Office Action focused on two entries in the long list of wound and skin-related
`
`medical products—“anti-inflammatories” and “anti-inflammatory and antipyretic
`
`preparations”—and concluded that these “broad” terms “presumably encompass all
`
`goods of these types.” (Office Action at 4.) The Office Action then asserted that
`
`the broad category of “anti-inflammatories” includes supplements such as
`
`Applicant’s supplements. (Id.)
`
`But Applicant’s supplements are not anti-inflammatories or anti-
`
`inflammatory preparations. The distinction between the categories of goods was
`
`clarified by the amendments to the Application, which specifically exclude “anti-
`
`inflammatories and all other medical preparations” from Applicant’s Goods.
`
`Applicant does not (and does not intend to) use Applicant’s Mark for any
`
`purposes related to the distinct industry in which Registrant does business, as
`
`discussed in the first response. The Second Office Action argues that “evidence
`
`from HealthLine.com, MedicalNewsToday.com, BodyBuilding.com,
`
`NatureMade.com, NowFoods.com, Bayer.com, and FlintstonesVitamins.com
`
`shows that ‘dietary supplements’, ‘herbal supplements’, ‘mineral supplements’,
`
` 14
`
`
`
`‘nutritional supplements’, ‘protein supplements’, ‘vitamin supplements’, ‘weight
`
`management supplements’ are commonly marketed and sold from the same
`
`sources, under the same brands or marks, as ‘anti-inflammatories’ and ‘anti-
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`inflammatory…preparations.’”
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`Applicant respectfully submits that, insofar as the Office Action refuses
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`registration on this basis, the Office Action is in error. The relevant inquiry is not
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`whether there may be companies somewhere in the world that offer a combination
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`of supplements and anti-inflammatories. Rather, it is whether members of the
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`consuming public are reasonably likely to believe that the services associated with
`
`one mark emanate from the same source as the other. See TEMP § 1207.01(a)(1)
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`(the question is whether “services of the applicant and the registrant are related in
`
`some manner or that the conditions surrounding their marketing are such that they
`
`are likely to be encountered by the same persons under circumstances that, because
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`of the marks used in connection therewith, would lead to the mistaken belief that
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`they originate from the same source.”).
`
`The TTAB’s recent opinion in In re Sérgio Tsugumiti Kobayashi is
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`instructive (copy attached as Exhibit C). In that matter, the TTAB reversed the
`
`refusal of a mark related to a variety of drinkware based on two prior registrations,
`
`one for a variety of paper goods and another for a variety of clothing products. See
`
`id. at 1-2. In that matter, the Examining Attorney cited evidence from a number of
`
` 15
`
`
`
`third-party retailers showing that they sold a combination of drinkware as well as
`
`paper products or clothing. See id. at 8-9. The TTAB found that this “evidence
`
`[did] not support the relatedness of Applicant’s drinking vessels and insulated
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`containers and Registrants’ clothing and stationery goods.” Id. at 11. The TTAB
`
`noted that it “has long recognized that ‘[n]ot everything that is sold by a large retail
`
`establishment selling a plethora of otherwise unrelated goods is necessarily
`
`connected, within the meaning of § 2(d) of the Act, to every other product that
`
`happens to be displayed or offered under the same roof,’ and that principle applies
`
`with equal force to online retailers.” Id. (quoting Sheller-Globe Corp. v. Scott
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`Paper Co., 204 USPQ 329, 335 (TTAB 1979)). The TTAB concluded, “The mere
`
`fact that some of the goods identified in the application and registration are
`
`available through common online channels of trade in which a host of other goods
`
`are also sold does not show that the identified goods are related.” Id. (citing In re
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`St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1087-88 (Fed. Cir. 2014)
`
`(“The PTO goes too far ... in claiming that because both [applicant’s] services and
`
`the registrant’s goods are promoted through websites, the channels of trade are
`
`similar. Advertising on the Internet is ubiquitous and ‘proves little, if anything,
`
`about the likelihood that consumers will confuse similar marks used on such goods
`
`or services.’”).
`
`By concluding, based on a small sample of examples, that consumers in
`
` 16
`
`
`
`general are reasonably likely to be confused, the Second Office Action effectively
`
`affords the registrant of the Cited Marks much broader protections than those to
`
`which it is entitled. Under this logic, for example, any trademarks that Netflix
`
`holds in relation to its digital streaming services could prevent the registration of a
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`small mom-and-pop shoe store’s marks, because there are companies out there—
`
`like Amazon—that offer both digital streaming services and retail shoe sales.
`
`In sum, Applicant’s Goods differ from the goods associated with the Cited
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`Marks in their nature and function. The Cited Marks do not afford the Registrant
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`any presumption of an exclusive right for non-competing goods, such as
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`Applicant’s dietary supplements. See Avon Shoe Co., 279 F.2d 607. As clarified in
`
`the amended Application, Applicant’s Goods and Registrant’s Goods are distinct
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`categories. Because the goods are neither overlapping nor competing, confusion is
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`unlikely.
`
`C. The parties target a discrete subset of customers through distinct
`market channels.
`
`In addition to the differences outlined above, Applicant and Registrant also
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`target discrete subsets of consumers through distinct marketing channels.
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`A key factor reducing the likelihood of consumer confusion between two
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`marks is the method of marketing used and the selection process of customers for
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`purchases. du Pont, 476 F.2d at 1361. If one party’s goods are sold to one class of
`
`buyers in a different marketing channel than the goods of another seller, the
`
` 17
`
`
`
`likelihood that a single group of buyers will be confused by the trademarks is less
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`than if both parties sold their goods through the same channel of distribution.
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`Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §24:41. Put
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`another way, if the parties are not competing, consumers are not likely to encounter
`
`either parties’ goods or services together in the marketplace. See McCarthy, at
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`§24:51; see also Harlem Wizards Entertainment Basketball, Inc. v. NBA
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`Properties, Inc., 925 F. Supp. 1095 (D.N.J. 1997) (HARLEM WIZARDS for
`
`showcase basketball team and WASHINGTON WIZ for professional basketball
`
`team not likely to be confused).
`
`Applicant’s Mark is also unlikely to be confused with the Cited Marks
`
`because Applicant’s products are targeted at a discrete subset of customers through
`
`distinct marketing channels. See, e.g., In re E.I. DuPont de Nemours & Co., USPQ
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`563 (1973). If one party’s products are sold to one class of buyers in a different
`
`marketing channel than the products of another seller, the likelihood that a single
`
`group of buyers will be confused by the trademarks is less than if both parties sold
`
`their services through the same channel of distribution. Thomas McCarthy,
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`McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §24:41. Put
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`another way, if the parties are not competing, consumers are not likely to encounter
`
`either parties’ goods or services together in the marketplace. See McCarthy, at
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`§24:51; see also Harlem Wizards Entertainment Basketball, Inc. v. NBA
`
` 18
`
`
`
`Properties, Inc., 925 F. Supp. 1095 (D.N.J. 1997) (HARLEM WIZARDS for
`
`showcase basketball team and WASHINGTON WIZ for professional basketball
`
`team not likely to be confused).
`
`Here, Applicant’s products are sold exclusively through Applicant’s website,
`
`< https://www.proceller8.com>. See Response to Office Action, Exhibit A.
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`Applicant markets to its customers through its social media pages, namely
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`Facebook, Instagram, and Twitter, where users must specifically “Join Group” or
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`“follow” Applicant. In contrast, Registrant’s products are sold through a variety of
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`retailers both traditional and online, such as Vomaris or Vitality Medical. See
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`Second Response to Office Action, Exhibits C and D. Because Applicant’s
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`products are only sold on its website (and marketed directly to its social media
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`followers) and not at any retail store or website where Registrant’s products are
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`sold, Applicant targets a discrete subset of customers through distinct market
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`channels from the Registrant.
`
`As mentioned above, the parties occupy different markets. Specifically,
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`Applicant provides dietary supplements used to assist consumers in weight loss as
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`well as muscle building. The Cited Marks are specifically used for various types of
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`medical bandages and medical preparations to treat wounds and injuries.
`
`Applicant does not (and does not intend to) use Applicant’s Mark for any
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`purposes related to the distinct industry in which Registrant does business. In the
`
` 19
`
`
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`Second Office Action, the Examiner argues that “evidence from HealthLine.com,
`
`MedicalNewsToday.com, BodyBuilding.com, NatureMade.com, NowFoods.com,
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`Bayer.com, and FlintstonesVitamins.com shows that ‘dietary supplements’, ‘herbal
`
`supplements’, ‘mineral supplements’, ‘nutritional supplements’, ‘protein
`
`supplements’, ‘vitamin supplements’, ‘weight management supplements’ are
`
`commonly marketed and sold from the same sources, under the same brands or
`
`marks, as ‘anti-inflammatories’ and ‘anti-inflammatory…preparations.’”
`
`Applicant and Registrant are not in competition. The parties sell different
`
`products and target different classes of consumers for different purposes through
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`different channels of trade. These differences make confusion unlikely.
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`Specifically, it is unlikely that a gym goer or someone looking to lose weight
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`would be confused into purchasing bandages. And, conversely, a medical
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`professional or hospital interested in the restocking bandages is unlikely to be
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`confused into obtaining a dietary supplement.
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`In sum, Applicant and Registrants are not in competition. The parties target
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`different classes of consumers for different purposes. The differences b
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