throbber
Jon ., Sciiiim, IPOC, T” B
`
`3
`
`July 10> 2006
`
`DIRECT DIAL 703.385.8333
`
`VIA FIRST CLASS MAIL
`
`BOX: TTAB
`
`United States Patent and Trademark Office
`
`Commissioner for Trademarks
`
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`Re: Motion and Memorandum in Support of Summary Judgment for
`Serial No. 78/541,059; Opposition No. 91/169,267, Biofutura
`Pharma, S.P.A. V. Day Corporation
`
`Dear Sir:
`
`We enclose for filing Day Corporation’s Motion and Memorandum in Support of
`Summary Judgment in Opposition No. 91/169,267.
`
`1.
`
`2.
`
`3.
`
`4.
`
`Transmittal Letter (in duplicate);
`
`Motion for Summary'Judgment;
`
`Memorandum in Support of Summary Judgment with Exhibits 1-5;
`
`A postcard to evidence receipt of the Motion and Memorandum in Support of
`Summary Judgment.
`
`It is our understanding no fee is required for this filing. A duplicate copy of this
`transmittal letter is enclosed for billing purposes, if necessary.
`
`Please contact us if there are any questions.
`
`_,,,.V.e1=y-truly yours,
`
`.‘\\
`
`
`
`
`Jo A. Schiffrin
`
`//’r‘\\."“-—~.._
`
`Enclosures
`
`10617 Jones Street
`Suite 3o1—A
`Fairfax, Virginia 22030
`(703) 385-8333
`Fax: (703) 385-3731
`schiffrinlaw@aol.com
`www.schiffrinlaw.com
`
`

`
`Jon A. Schiffrin; P.C.
`
`tr
`
`July 10, 2006
`
`_
`
`DIRECT DIAL 703.385.8333
`
`VIA FIRST CLASS MAIL
`
`BOX: TTAB
`
`United States Patent and Trademark Office
`
`Commissioner for Trademarks
`P.O. Box 1451
`
`Alexandria, Virginia 22313-1451
`
`‘
`
`Re: Motion and Memorandum in Support of Summary Judgment for
`Serial No. 78/541,059; Opposition No. 91/169,267, Biofutura
`Pharma, S.P.A. v. Day Corporation
`
`Dear Sir:
`
`We enclose for filing Day Corporation’s Motion and Memorandum in Support of
`Summary Judgment in Opposition No. 91/169,267.
`
`1.
`
`2.
`
`3.
`
`4.
`
`Transmittal Letter (in duplicate);
`
`Motion for Summary'Judgment;
`
`Memorandum in Support of Summary Judgment with Exhibits 1-5;
`
`A postcard to evidence receipt of the Motion and Memorandum in Support of
`Summary Judgment.
`
`It is our understanding no fee is required for this filing. A duplicate copy of this
`transmittal letter is enclosed for billing purposes, if necessary.
`
`Please contact us if there are any questions.
`
`Enclosures
`
`.__4__,,..V.ery-truly yours,
`
`
` Jo A. Schiffrin
`
`10617 Jones Street
`Suite 301-A
`Fairfax, Virginia 22030
`(703) 385-8333
`Fm: (703) 385-3731
`schiffrinlaw@aol.com
`www.schiffrinlaw.com
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Biofiitura Pharma, S.P.A.,
`
`v.
`
`Day Corporation,
`
`Opposer,
`
`Opposition No. 91/169,267
`SefialTJo.78/541,059
`
`Applicant.
`
`
`
`MOTION FOR SUMMARY JUDGMNT
`
`Applicant, Day Corporation, hereby moves for an Order
`
`pursuant to Rule 56 of the Federal Rules of Civil Procedure,
`
`granting summary judgment in Applicant's favor, and granting
`
`registration of application Serial No. 78/541,059.
`
`The grounds for this Motion are set forth in detail in the
`
`Memorandum and Exhibits accompanying this Motion.
`
`Respectfully submitted,
`
`DAY CORPORATION
`
`Date:
`
`
`T)’;/, /0/2.906 4} T
`
`
`Jon
`
`Schiffrin
`
`Attorneys for Applicant
`Jon A. Schiffrin, P.C.
`
`10617 Jones Street, Suite 301—A
`
`Fairfax, Virginia 22030
`(703) 385—8333
`
`

`
`Opposition No. 91/169,267
`
`Motion for Summary Judgment
`
`CERTIFICATE OF SERVICE
`
`
`
`It is hereby certified that this Motion for Summary
`
`Judgment has been served upon Opposer, by mailing a copy thereof
`by prepaid first class mail
`to Angelo Notaro, Esq., Notaro &
`Michalos, P.C., 100 Dutch Hill Road, Suite 110, Orangeburg,
`
`New
`
`York 10962 this 4.) *’ day of 5:9 , 2006.
`
`o A. Sch
`
`frin
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Biofi1tura Pharma, S.P.A.,
`
`v.
`
`Day Corporation,
`
`Opposer,
`
`Opposition No. 91/1 69,267
`Serial No. 78/541 ,059
`
`
`
`MMORANDUM IN SUPPORT OF
`
`MOTION FOR SUMMARY JUDGMENT
`
`Applicant, Day Corporation, hereby moves for summary
`
`judgment in its favor, declaring its mark RESIVIT is entitled to
`
`registration, on grounds that there is no likelihood of
`
`confusion between Opposer Biofutura Pharma, S.P.A.’s
`
`(“Biofutura”) mark RESVIS XR, and Day Corporation's mark
`
`RESIVIT.
`
`I. BIOFUTURA’S MARK
`
`Biofutura is identified in its Notice of Opposition as the
`
`owner of RESVIS XR, a mark which is currently in use in Italy,
`
`and is the subject of an intent-to—use application in the United
`
`States under Serial No. 79/013,841. Biofutura’s application for
`
`RESVIS XR claims priority under the Paris Convention to a
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`November 12, 2004 Italian application for the mark, covering
`
`dietary supplements for medical use. Exhibit 1, Notice of
`
`Opposition, Paragraphs 2 and 5. Biofutura is not currently
`
`using the mark RESVIS XR in the United States. Exhibit 2,
`
`Biofutura’s Answers to Interrogatories, Response No. 6.
`
`II. DAY CORPORATION’S MARK AND APPLICATION
`
`On January 3, 2005, Day Corporation filed an intent-to—use
`
`application for the mark RESIVIT for dietary and nutritional
`
`supplements.
`
`The application for RESIVIT passed through
`
`examination without objection and was published on October 25,
`
`2005. Biofutura filed its Notice of Opposition on February 21,
`
`2006.
`
`III. SUMARY JUDGMNT
`
`Rule 56 of the Federal Rules of Civil Procedures states
`
`that summary judgment shall be granted “if the pleadings,
`depositions, answers to interrogatories, and admissions on file,
`
`together with the affidavits, if any,
`
`show that there is no
`
`genuine issue as to any material fact and that the moving party
`
`is entitled to a judgment as a matter of law.” This Rule
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`applies in trademark oppositions.
`
`37 C.F.R. § 2.l16(a); Turner
`
`Entertainment Co. V. Nelson, 38 USPQ2d 1942, 1944 (TTAB 1996).
`
`The Federal Circuit has found that summary judgment is
`
`appropriate for questions of likelihood of confusion. Keebler
`
`Co. v. Marie Bakery Products, Inc.,
`
`9 USPQ2d 1736 (Fed. Cir.
`
`1989).
`
`The disposition of this case by summary judgment will
`
`save the time and expense of a useless trial and is appropriate
`
`where, as here, more evidence than is already available in
`
`connection with Day Corporation's Motion for Summary Judgment
`
`could not change the result.
`
`gge, Turner Entertainment Co. v.
`
`Nelson, 38 USPQ2d 1942, 1944 (TTAB 1996). There is no issue as
`
`to priority based on Biofutura’s foreign filing date,
`
`so the
`
`only issue in this Motion is whether the shared use of the
`
`prefix “res” and nothing more is enough to find confusion
`
`between RESVIS XR and Day Corporation's mark RESIVIT.
`
`To
`
`counter a motion for summary judgment,
`
`the non—moVant may not
`
`rest on its conclusory pleadings, but must come forward with
`
`sufficient evidence in support of its allegations,
`
`identifying
`
`what specific facts could be offered at trial. More is required
`
`than the mere assertions of counsel.
`
`See, Horn Blower & Weeks
`
`Inc. V. Horn Blower & Week, 60 USPQ2d 1733, 1735 (TTAB 2001).
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`In the present case,
`
`the undisputable facts are that 1)
`
`the
`
`shared prefix term “res” in the underlying marks stands for the
`
`ingredient “resveratrol,” an antioxidant, 2)
`
`this prefix is not
`
`distinctive, and 3) “res” is commonly used as a component root
`
`word in other supplements containing resveratrol. Accordingly,
`
`these undisputable facts establish that there is no likelihood
`
`of confusion between Day Corporation's mark RESIVIT and
`
`Biofutura’s mark RESVIS XR merely based on the shared use of a
`
`commonly used and descriptive prefix in the dietary and
`
`nutritional supplement industry.
`
`IV.
`
`LIKELIHOOD OF CONFUSION-DU PONT FACTORS
`
`The Federal Circuit's predecessor,
`
`in In re E.I. DuPont de
`
`Nemours & Co., 177 USPQ 563 (CCPA 1973),
`
`listed thirteen factors
`
`to be considered in determining whether there is a likelihood of
`
`confusion between marks under Section 2(d) of the Trademark Act.
`
`The factors are:
`
`1.
`
`The similarity or dissimilarity of the marks in their
`
`entireties as to appearance, sound, connotation and
`
`commercial
`
`impression;
`
`2.
`
`The similarity or dissimilarity and nature of the goods
`
`

`
`Opposition No. 91/169,267
`Memorandum.in Support of Motion for
`Summary Judgment
`
`or services as described in an application or
`
`registration or in connection with which a prior mark
`
`is in use;
`
`The similarity or dissimilarity of established,
`
`likely
`
`to continue trade channels;
`
`The conditions under which and the buyers to whom
`
`sales are made, “impulse” vs. careful, sophisticated
`
`purchasing;
`
`The fame of the prior mark (sales, advertising,
`
`length
`
`of use);
`
`The number and nature of similar marks in use on
`
`similar goods;
`
`The nature and extent of any actual confusion;
`
`The length of time during and conditions under which
`
`there has been concurrent use without evidence of
`
`actual confusion;
`
`The variety of goods on which the mark is or is not
`
`used (house mark, “family” mark, product mark);
`
`10.
`
`The market interface between Applicant and the owner
`
`of a prior mark:
`
`a)
`
`a mere “consent” to register or use,
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`b)
`
`agreement provisions designed to preclude
`
`confusion,
`
`i.e.
`
`limitations on continued use of
`
`the marks by each party,
`
`C)
`
`assignment of mark, application,
`
`registration and goodwill of the related
`
`business,
`
`d)
`
`the laches and estoppel attributable to
`
`owner of prior mark and indicative of lack of
`
`confusion;
`
`ll.
`
`The extent to which Applicant has a right to exclude
`
`others from use of its mark on its goods;
`
`12.
`
`The extents of potential confusion,
`
`i.e.
`
`, whether de
`
`minimis or substantial; and
`
`13.
`
`Any other established fact probative of the effect of
`
`use.
`
`In determining whether there is a likelihood of confusion
`
`between marks,
`
`the Board need only consider those DuPont factors
`
`where there is relevant evidence of record relating to the
`
`particular factor.
`
`Cunningham v. Laser Golf Corp., 55 USPQ2d
`
`1842, 1845
`
`(Fed. Cir. 2000). Further,
`
`the Board may focus on
`
`dispositive factors, such as similarity of the marks and
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`
`relatedness of the goods or services. Hun Beauty Inc. v.
`
`Alberto Co., 57 USPQ2d 1557, 1559 (Fed. Cir. 2001).
`
`In fact,
`
`the similarity of the marks and relatedness of the goods or
`
`services tend to be the two key determinants of likelihood of
`
`confusion.
`
`geg, Federated Foods Inc. V. Fort Howard Paper Co.,
`
`192 USPQ 24, 29 (CCPA 1976). Accordingly, as the issue of this
`
`opposition sits squarely on the common and suggestive nature of
`
`the prefix “res,” standing for “resveratrol,” Day Corporation
`
`states that the dissimilarity of the marks is a key factor in
`
`determining that there is no likelihood of confusion.
`
`A. Factor 1: Similarity of the Marks
`
`Biofutura could only establish similarity between RESVIS XR
`
`and RESIVIT based on the shared use of the prefix component
`
`“res.” Biofutura has not specified the similarities of the
`
`marks which would be likely to lead to confusion, and has only
`
`alleged that the marks resemble each other. Exhibit 1, Notice
`
`of Opposition, Paragraph 12.
`
`The marks clearly differ in their
`
`suffix words, “vis XR” and “ivit,” in sound, appearance, and
`
`meaning.
`
`In fact, as to the meaning of the suffix terms,
`
`Biofutura has stated that “vis” connotes force, and “XR” refers
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`to extended release. Exhibit 2, Biofutura’s Answers to
`
`Interrogatories, Response No. 21. Conversely,
`
`the last three
`
`letters in RESIVIT refer to “vitis vinifra,” the European
`
`grapevine genus from which resveratrol is derived. Exhibit 3,
`
`Affidavit of Chaille Garcia, Paragraph 6.
`
`The only shared component of RESIVIT and RESVIS XR is the
`
`initial letters “res,” which stand for “resveratrol,” an
`
`antioxidant found in the products identified under both marks.
`
`Exhibit 3, Affidavit of Chaille Garcia, Paragraphs 5 and 6;
`
`Exhibit 2, Biofutura’s Answers to Interrogatories, Response No.
`
`20.
`
`Day Corporation believes the differences in the marks are
`
`sufficient to create dissimilar commercial
`
`impressions,
`
`especially since “res” is a descriptive prefix referring to an
`
`ingredient, and that these first three letters are is used in
`
`other supplement marks,
`
`likely to also refer to resveratrol. As
`
`the prefix letters “res” describe goods containing resveratrol,
`
`and refer, as far as consumers are concerned,
`
`to the composition
`
`of the products rather than their commercial origin,
`
`the
`
`respective endings of the marks should be deemed the distinctive
`
`and dominant elements in evaluating likelihood of confusion.
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`The Federal Circuit has stated that “marks tend to be
`
`perceived in their entireties, and all components thereof must
`
`be given appropriate weight.
`
`In re Hearst Corp., 982 F.2d 493,
`
`25 USPQ2d 1238 (Fed. Cir. 1992).
`
`See Opryland USA Inc. V. Great
`
`American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
`
`Cir. 1992).” In addition,
`
`the Court has held that in
`
`articulating reasons for reaching a conclusion on the question
`
`of likelihood of confusion,
`
`there is nothing improper in stating
`
`that,
`
`for rational reasons, more or less weight has been given
`
`to a particular feature or portion of a mark. That is, one
`
`feature of a mark may have more significance than another.
`
`See Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d
`
`1560,
`
`4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re
`
`National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752
`
`(Fed. Cir. 1985).
`
`As stated by the Court of Appeals for the Federal
`
`Circuit,
`
`in In re National Data Corporation, supra: “Where
`
`consumers are faced with various usages of descriptive words,
`
`our experience tells that we and other consumers distinguish
`
`between these usages.” The mere fact that Day Corporation and
`
`Biofutura’s marks both include “res” is not enough for a finding
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`of likelihood of confusion, given the weakness and
`
`descriptiveness of “res” and the specific differences in the
`
`suffixes “IVIT” and “VIS XR,” as well as the differences in the
`
`overall marks. See also 2 J. Thomas McCarthy, McCarthy on
`
`Trademarks and Unfair Competition,§§ll:73 and 11:74 (4th ed.
`
`2000).
`
`In this case,
`
`the underlying marks are also dissimilar in
`
`sound, appearance and connotation, when considered in their
`
`entireties (as indicated by Biofutura’s interrogatory response
`
`referring to “resveratrol,” “strength,” and “extended release”)
`
`so to convey separate overall commercial
`
`impressions.
`
`There is no shortage of cases determining that the shared
`
`use of a weak, descriptive component
`
`term is not enough to lead
`
`to confusion.
`
`See General Mills Inc. v. Health Valley Foods, 24
`
`USPQ2d 1270 (TTAB 1992)
`
`(FIBER 7 FLAKES and FIBER ONE, both for
`
`ready to eat breakfast cereal, held not likely to cause
`
`confusion); Stouffer Corporation v. Health Valley Natural Foods
`
`InC.,
`
`1 USPQ2d 1900 (TTAB l986)
`
`(LEAN LIVING and LEAN CUISINE,
`
`both for food products, held not likely to cause confusion);
`
`Inc. v. Turbomag Corporation, 221
`Electronic Water Conditioners,
`_______________________________________________________________
`
`USPQ 162 (TTAB 1984)
`
`(TURBO—MAG and ELECTRO—MAG, both for water
`
`-10..
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`conditioning units for electromagnetically treating water and
`
`removing scale, held not likely to cause confusion); Burger Chef
`
`
`
`Systems, Inc. V. Sandwich Chef, Inc., 201 USPQ 611 (TTAB 1978),
`
`aff’d at 203 USPQ 733 (CCPA 1979)
`
`(SANDWICH CHEF and design and
`
`BURGER CHEF and design, both for restaurant services, held not
`
`likely to cause confusion); American Standard Inc. v. Scott
`
`& Fetzer Company, 200 USPQ 457 (TTAB 1978)
`
`(AQUA STREAM for
`
`faucets and AQUAMIX, AQUAMETER, and AQUARIAN II, all for
`
`faucets, as well as AQUASEAL for valves, et al., held not
`
`likely to cause confusion); and Fort Howard Paper Company V.
`
`Marcal Paper Mills, Inc., 189 USPQ 305 (TTAB 1975)
`
`(SOFPAC
`
`for toilet tissue and SOF—KNIT for paper towels and toilet
`
`tissue and SOFNAP for paper napkins held not likely to cause
`
`confusion).
`
`With regard to dietary supplements, see also In re Natural
`
`
`
`Answers, Incorporated, Ex Parte Appeal, Serial No. 75/865,497
`
`(TTAB 2/20/2002)
`
`(HERBA FUEL for dietary supplements not likely
`
`to cause confusion with HERBAL OCTANE for dietary supplements)
`
`and Nutramax Laboratories,
`
`Inc. V. Naturalmax, Inc., Opposition
`
`No. 91/110,801 (TTAB 9/14/2000)
`
`(NUTRAMAX LABORATORIES for
`
`_l]__
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`dietary food supplements not likely to cause confusion with
`
`NATURMAX for dietary supplements).
`
`As in Fort Howard Paper Company,
`
`the prefix term “res” has
`
`a specific connotation (as “sof” does for soft in Fort Howard
`
`Paper Company) referring to “resveratrol," and Day Corporation
`
`
`contends this shows the descriptive nature of this term and
`
`relative weakness of the component word as it relates to dietary
`
`supplements. As such, consumers are not likely to be confused
`
`as to the source of the goods identified under the respective
`
`marks just because “res” appears in RESIVIT and RESVIS XR.
`
`See
`
`In re Bed & Breakfast Registry, 791 F.2d 157 (Fed. Cir. 1986)
`
`[BED & BREAKFAST REGISTRY for making lodging reservations for
`
`others in private homes held not likely to be confused with BED
`
`& BREAKFAST INTERNATIONAL for room booking agency services];
`
`United States Shoe Corp. v. Chapman, 229 USPQ 74 (TTAB 1985)
`
`[COBBLER'S OUTLET for shoes held not likely to be confused with
`
`CALIFORNIA COBBLERS (stylized)
`
`for shoes];
`
`
`In re Istituto
`
`Sieroterapico E Vaccinogeno Toscano "SCLAVO" S.p.A., 226 USPQ
`
`1035 (TTAB 1985)
`
`[ASO QUANTUM (with "ASO" disclaimed)
`
`for
`
`laboratory reagents held not likely to be confused with QUANTUM
`
`1 for laboratory instrument for analyzing body fluids]. Also,
`
`_12_
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`
`see In re Agdata, Inc., 2001 TTAB LEXIS 817 (TTAB 2001)
`
`[MEDDATA
`
`for, among other things, providing an on-line database in the
`
`field of managed health care insurance coverage not found
`
`confusing with MEDDATA for "providing personal and medical
`
`information to medical professionals in emergency situations."]
`
`In Agdata,
`
`the Board specifically stated that "we consequently
`
`are constrained to agree with applicant that, if such third-
`
`party registrations could coexist with the cited registration,
`
`then applicant's highly suggestive MEDDATA mark for its various
`
`on—line database services in the field of managed health care
`
`coverage should also be registered inasmuch as confusion with
`
`the cited registrant's identical, and likewise weak, MEDDATA
`
`mark" Agdata, at *l7.
`
`Because of the very common use and registration of marks
`
`beginning with “res” in connection with supplements,
`
`these
`
`prefix letters should receive the narrowest of protection.
`
`See
`
`In re Agdata, Inc., supra;
`
`
`In re Flexible Resources, Inc., 2001
`
`TTAB LEXIS 761 (TTAB 2001)
`
`[FLEXIBLE PERSONNEL and FLEXIBLE
`
`RESOURCES not found confusing where services are conceded as
`
`similar];
`
`In re Broadway Chicken, 38 USPQ2d 1559 (TTAB 1996)
`
`["Evidence of widespread third-party use,
`
`in a particular field,
`
`_]_3._
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`of marks containing a certain shared term is competent to
`
`suggest that purchasers have been conditioned to look to the
`
`other elements of the marks as a means of distinguishing the
`
`source of goods or services in the field."]
`
`Day Corporation notes that there are other coexisting
`
`registrations using “res” in connection with health products,
`
`all in the name of different entities, such as:
`
`*
`
`RESVERA-GOLD, Registration No. 2,664,462, covering
`
`dietary supplements;
`
`RESVERAVINE, Registration No. 2,648,819, covering,
`*
`botanical extract for use as a dietary supplement and
`botanical extract for use in the manufacture of dietary
`
`supplements;
`
`RESPHORA, Registration No. 2,256,984, covering, non-
`*
`prescription dietary supplements;
`
`RESVERATROL-FORTE, Registration No. 2,173,909,
`*
`covering, dietary supplement and antioxidant;
`
`RESVERIN, Registration No. 2,360,558, covering, a
`*
`dietary/nutritional supplement;
`
`E-RESVERATROL, Published Application Serial No.
`*
`78/324,051, covering, a nutritional supplement; and
`
`RESVERACARN, Published Application Serial No.
`*
`76/634,187, covering, nutritional supplements.
`
`Exhibit 4, Printouts from the USPTO’s TESS database.
`
`Although these registrations and applications feature the
`
`prefix term “res,” the PTO has allowed these marks to coexist,
`_l4_
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`even though they are all identified in connection with
`
`nutritional, dietary and health products, as is the case with
`
`RESVIS XR and RESIVIT.
`
`In fact,
`
`the marks identified in Exhibit
`
`4 all begin with RESV (or the phonetically similar RESPH)
`
`like
`
`RESVIS XR, and marks such as RESVERIN and RESPHORA look and
`
`sound more similar to RESVIS XR than does RESIVIT.
`
`Since there are coexisting registrations and published
`
`applications using “res” for supplements and related products,
`
`the Trademark Trial and Appeal Board should consider the extent
`
`to which dilution may indicate that there is no likelihood of
`
`confusion.
`
`TMEP Section l207.01(d)(x). These registrations
`
`show the diluted nature of these first three letters in that all
`
`of these marks coexist on the Principal Register, even with the
`
`shared use of “res.”
`
`Accordingly, consumers should be familiar with the use of
`
`“res” and,
`
`therefore,
`
`this portion of the underlying marks ought
`
`to be given a narrow scope of protection.
`
`TMEP Section
`
`l207.0l(c)(iv).
`
`Further,
`
`these third-party registrations are
`
`relevant to show that “res” expresses a connotation relating to
`
`an ingredient and is so commonly used that the public will look
`
`to other elements to distinguish the source of the goods,
`
`_l5_
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`including, but not limited to,
`
`the other different letters that
`
`compose RESVIS XR and RESIVIT.
`
`TMEP Section 1207(d)(iii).
`
`In fact, with regard to dietary supplements, it is very
`
`common for marks to coexist sharing similar prefixes where those
`
`prefix terms refer to an ingredient in the product.
`
`For example:
`
`Related Goods and Services
`
`
`
`
`
`* GINCOSAN,
`
`Registration No.
`
`2,615,321
`
`
`“Pharmaceutical preparations for the
`improvement of peripheric blood
`circulation; dietary supplements.”
`
`
`“Dietary supplements.”
`
` * GINKALERT,
`Registration No.
`2,359,103
`
`
`
`
`Among other things, dietetic
`supplements.
`
`
`
`*
`
`GINKOBA,
`
`Registration No.
`2,075,082
`
`
`
`*
`
`Among other things, nutritional
`
`GINKGOMIN,
`supplements containing ginkgo extracts.
`Registration No.
`
`1,879,040
`
`
`
`* GINKAI,
`
`
`“Dietary herbal supplements.”
`
`Registration No.
`2,033,044
`
`(Referring to gingko
`
`
`_l6_.
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`
`Related Goods and Services (continued)
`“Dietary supplements in tablet,
`capsule, powder and liquid form.”
`
`
`
`
`
`Marks
`(continued)
`* GINSA GOLD,
`
`Registration No.
`
`2,402,540
`
`“Vitamins and nutritional dietary
`supplements.”
`
`
`
`
`
`
`
`
`
`
`* GINSUN,
`Registration No.
`1,537,189
`(Referring to
`
`ginseng)
`
`
`“Nutritional supplements.”
`*
`KAVAZEN,
`
`
`Registration No.
`2,499,171
`
`*
`
`KAVALERT,
`
`Among other things, nutritional and
`
`dietary supplements.
`Registration No.
`
`2,402,616
`
`
`
`
`*
`
`KAVACARE,
`
`“Dietary supplements.”
`
`
`
`
`Registration No.
`2,470,118
`
`
`
`
`
`*
`KAVASSURE,
`Registration No.
`
`2,307,983
`
`“Dietary supplements.”
`
`
`
`
`Among other things, dietary supplements
`and nutritional supplements.
`
`
`
`*
`
`KAVACIN,
`
`Registration No.
`2,294,077
`
`
`
`(Referring to kava
`
`
`_l'7_
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`
`
`
`Related Goods and Services (continued)
`Among other things, dietary food
`supplements.
`
`
`
`
`
`(continued)
`
`Marks
`
`
`
`
`*
`
`ECHIPURE,
`
`Registration No.
`2,720,225
`
`Among other things, vitamin and mineral
`supplements.
`
`
`
`
`
`*
`
`Registration No.
`2,813,236
`
`ECHINAMIDE,
`
`*
`
`“Dietary supplement containing herbal
`
`ECHINOSHA,
`extract blended with Echinacea root,”
`Registration No.
`
`2,183,679
`
`“Dietary food supplement in liquid or
`tablet form.”
`
`
`
`*
`
`ECHINACE,
`
`Registration No.
`1,498,256
`
`
`
`
`
`Among other things, dietary and
`nutritional supplements.
`
`
`
`*
`
`GLUCOSENSE,
`
`Registration No.
`3,084,401
`
`
`
`
`
`
`
`
`
`
`
`(Referring to
`
`echinacea)
` “Dietary supplements.”
`* GLUCOSULIN,
`Registration No.
`3,105,279
`
`*
`
`GLUCOSURE,
`
`Among other things, nutritional and
`
`dietary supplements.
`
`*
`GLUCOSET,
`
`
`Registration No.
`2,402,790
`
`
`
`“Nutritional supplements.”
`
`
`
`
`
`* GLUCOZIN,
`Registration No.
`
`2,316,541
`
`“Nutritional dietary supplements
`
`containing zinc.”
`
`
`
`
`
`“Dietary supplements.”
` * GLUCOSIM,
`Registration No.
`2,195,834
`(Referring to glucose
`
`
`
`
`
`
`
`
`
`._l8_
`
`
`Registration No.
`
`2,788,034
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`or glucosamine)
`*
`LYCIN,
`
`Registration No.
`2,884,290
`
`Among other things, vitamins and
`minerals for medical purposes.
`
`
`
`
`
`*
`
`
`
`“Dietary supplement.”
`LYCORICH,
`
`Registration No.
`2,765,815
`
`Among other things, vitamins and
`minerals supplements for humans.
`
`
`
`*
`
`LYC-RATH,
`
`Registration No.
`2,697,058
`
`*
`
`LYCOVIT,
`
`
`
`
`
`
`
`
`Registration No.
`2,784,720
`
`
`
`
`
`Among other things, nutritional
`supplements.
`
`
`
`“Herbal extract-based dietary
`
`supplement.”
`
`“Dietary supplements containing
`melatonin and vitamins.”
`
`
`
`Registration No.
`2,441,371
`
`(Referring to
`
`lycopene)
`* MELLINOL,
`
`
`
`* MELATONICIN,
`
`Registration No.
`2,130,184
`
`“Nutritional supplements, vitamins and
`minerals containing the ingredient
`melatonin."
`
` * MELAPURE,
`Registration No.
`2,046,687
`
`
`
`
`
`* MELATONEX,
`
`“Dietary supplements.”
`
`
`
`
`
`Registration No.
`2,065,823
`
`(Referring to
`melatonin)
`
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`
`Related Goods and Services (continued)
`“Dietary and nutritional supplements.”
`
`
`
`
`
`
`
`(continued)
`Marks
`*
`RIBOFORCE,
`
`
`
`
`Registration No.
`2,477,654
`
`
`
`
`
`“Meal replacement powder and dietary
`supplements.”
`
`
`* RIBO-TEIN,
`Registration No.
`
`2,742,648
`
`
`
`*
`
`
`
`RIBOMAX,
`
`
`“Dietary supplements.”
`
`
`Registration No.
`2,574,114
`
`
`
`
`
`
`
`“Ribose sold as an integral component
`of dietary supplements.”
`
`
`
`
`“Dietary supplements.”
`
`
`* RIBOLIFE,
`Registration No.
`
`2,487,824
`(Referring to ribose
`or riboflavin)
`
`*
`CREAGEN,
`
`Registration No.
`
`3,109,279
`
`“Nutritional supplements.”
` *
`
`CREALEAN,
`Registration No.
`2,949,716
`
`
`
`
`
`
`
`
`*
`
`
`CREATAIN,
`
`Registration No.
`2,605,926
`
`“Nutritional and dietary supplements
`and meal replacement drinks.”
`
`
`
`(Referring to
`creatine)
`
`
`Exhibit 5, Printouts from the USPTO’s TESS database.
`
`As exemplified by the registrations listed above, Day
`
`Corporation believes consumers are accustomed to seeing dietary
`
`and nutritional products incorporating the ingredient’s name as
`
`a component
`
`term in a trademark and would not be confused as to
`_.20...
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`source in light of the differences in the marks as a whole.
`
`The Board commented on this issue in Polaroid Corporation
`
`v. Oculens, Ltd., 196 USPQ 836 (TTAB 1977) where it found no
`
`confusing similarity between POLAROID and FILTEROID for glasses,
`
`even though POLAROID was a famous mark.
`
`The Board stated that
`
`the only similarity between the marks was the common suffix
`
`“oid,” which had a meaning of “likeness,” and which appeared in
`
`a number of third party registrations, as is the case in this
`
`opposition where “res” refers to “resveratrol,” and appears in
`
`other marks in related fields.
`
`Accordingly, as the facts indicate “res” is a diluted and
`
`descriptive prefix, and the law determines that the shared use
`
`of such a term is not enough to lead to confusion,
`
`this factor
`
`strongly favors Day Corporation.
`
`B. Factors 2 and 3: Similarity of the Goods and Trade
`
`Channels
`
`Day Corporation concedes that the products under both marks
`
`are intended for use in connection with dietary supplements.
`
`However, as it is clear that the common term in both marks
`
`actually refers to the product itself, and that many other
`
`_2]__
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Summary Judgment
`
`companies use “res” for “resveratrol” based supplements,
`
`Biofutura cannot exercise dominion over the “res” prefix for all
`
`products containing “resveratrol." Therefore, Day Corporation
`
`believes this factor should hold less weight in the likelihood
`
`of confusion analysis because several companies use “res” for
`
`“resveratrol” based products, and others should be able to use
`
`this prefix to refer to supplements containing this ingredient.
`
`Day Corporation acknowledges the similarity of goods and
`
`channels of trade, but contends that it is one of many marks
`
`using “res” for products in this field and that other DuPont
`
`factors are more relevant in the likelihood of confusion
`
`analysis.
`
`C. Factor 4: Sophistication of Purchasers
`
`There is no specific evidence submitted in this matter
`
`regarding the sophistication of purchasers with regard to
`
`dietary supplements. However, Day Corporation contends that
`
`this factor is of minimal
`
`importance based on the differences in
`
`the marks. Day Corporation references cases with marks
`
`containing descriptive components for food products, generally
`
`an impulse buy,
`
`to show the insignificance of sophisticated
`
`-22-
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`purchasers with marks such as RESVIS XR and RESIVIT.
`
`In Keebler Company v. Murray Bakery Products, 866 F.2d 1386
`
`(CAFC 1989),
`
`the Federal Circuit affirmed the Board's dismissal
`
`on Summary Judgment of an opposition by the owner of PECAN
`
`SANDIES to an application for registration for PECAN SHORTEES,
`
`even though both marks were used on cookies, products which
`
`generally are not purchased after careful deliberation.
`
`The
`
`Court acknowledged that both words contain the first letter “s”
`
`and have an “ees” suffix sound, but that the marks were
`
`different in appearance, pronunciation and meaning. As RESVIS
`
`XR refers to “resveratrol,” “force” and “extended release,” this
`
`connotation is similarly unrelated to the meaning of RESIVIT,
`
`which refers to the European grapevine containing resveratrol.
`
`See also Quaker Oats Co. v. General Mills, Inc., 134 F.2d
`
`429 (7% Cir. 1943)
`
`(OATIES not confusingly similar to the famous
`
`mark WHEATIES;
`
`the owner of WHEATIES could not appropriate the
`
`suffix “ies,” which was already used by other makers of similar
`
`products).
`
`Obviously Quaker Oats applies here because the common
`
`element “res” is also being used by other makers of similar
`
`products and cannot be monopolized by Biofutura in its RESVIS XR
`
`...23_
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`mark.
`
`In Quaker Oats,
`
`the Court did not find confusion between
`
`marks associated with cereal, a product that also likely does
`
`not need careful deliberation before purchase.
`
`Accordingly, factor 4 is a factor of minimal
`
`importance
`
`when compared to other DuPont factors.
`
`D. Factor 5:
`
`Fame or Strength of Mark
`
`Biofutura has made no contention that RESVIS XR is famous,
`
`and as it has admitted that the mark is not in use in the United
`
`States, it could not be stated that the mark has any brand
`
`recognition in this country.
`
`Accordingly,
`
`this factor must favor Day Corporation.
`
`E. Factor 6: Number and Nature of Similar Marks on
`
`Similar Goods
`
`Day Corporation has introduced evidence showing a wide
`
`variety of marks which demonstrate use by third parties of marks
`
`for products similar to Biofutura, and Biofutura has junior use
`II
`
`to all of these marks containing the prefix term “res.
`
`In fact, of all of the marks submitted, none of these marks
`
`combine “res” with wording similar in sound, appearance and
`
`_24._
`
`

`
`Opposition No. 91/169,267
`Memorandum in Support of Motion for
`Sumary Judgment
`
`connotation to RESIVIT, and the Examining Attorney found no
`
`confusingly similar marks during examination. As stated

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