Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA650051
`ESTTA Tracking number:
`01/14/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214329
`Defendant
`Kevin Alan Tussy
`RYAN GILE
`WEIDE & MILLER LTD
`7251 W LAKE MEAD BLVD, STE 530
`LAS VEGAS, NV 89128-8373
`UNITED STATES
`rGile@WeideMiller.com, caustin@weidemiller.com, BBrown@WeideMiller.com,
`WeideMiller@Gmail.com
`Other Motions/Papers
`Ryan Gile
`RGile@WeideMiller.com, CAustin@WeideMiller.com,
`BBrown@WeideMiller.com, WeideMillerLaw@gmail.com
`/Ryan Gile/
`01/14/2015
`SEEDCP.0022T - Applicant's Opposition to Traditional Medicinals Motion for
`Summary Judgment (Brief Only).pdf(112289 bytes )
`SEEDCP.0022T - Applicant's Opposition to Traditional Medicinals Motion for
`Summary Judgment (Declarations).pdf(5932991 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
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`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`In the Matter of Trademark Application No.: 85/694,743
`Mark: WEIGHTLESS WATER
`Filed on: August 3, 2012
`Published for Opposition: September 20, 2013
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`
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`Opposition Number: 91214329
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`APPLICANT’S OPPOSITION TO
`OPPOSER’S MOTION FOR
`SUMMARY JUDGMENT
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`TRADITIONAL MEDICINALS INC.
` Opposer,
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` vs.
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`KEVIN ALAN TUSSY
`Applicant.
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`Applicant Kevin Alan Tussy (the “Applicant”) by and through his attorneys, Weide and
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`Miller Ltd., submits this opposition to the motion for summary judgment (the “Motion”) filed
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`by the Opposer Traditional Medicinals Inc. (the “Opposer”) on the basis that genuine issues of
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`material fact exist which preclude the grant of Opposer’s Motion. This Opposition is based on
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`and supported by the following memorandum of law, the papers on file in this matter, the
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`attached declarations of Kevin Alan Tussy and Ryan Gile and the exhibits attached thereto, and
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`any oral argument allowed by the Board.
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`I.
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`INTRODUCTION
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`Applicant filed an intent-to-use application for the registration of the trademark
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`“Weightless Water” (the “Proposed Mark”) on August 3, 2012. The Examining Attorney who
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`examined Applicant’s application for the Proposed Mark noted a possible likelihood of
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`confusion with Opposer’s mark, “Weightless” (“Opposer’s Mark”). However, after the
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`Examining Attorney considered the arguments in Applicant’s Response to Office Action and
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`worked directly with Applicant to revise the description of goods for the Proposed Mark,
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`namely “bottled water and flavored bottled water, excluding teas, that is not nutritionally
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`fortified with vitamin and mineral nutritional supplements” (the “Proposed Goods”), to
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`specifically avoid an overlap with Opposer’s Mark, the Examining Attorney allowed the
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`Proposed Mark to proceed to publication. On September 10, 2013, Opposer filed a request for
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`extension of time to file an opposition, which request was granted until January 8, 2014.
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`Opposer filed its opposition to Applicant’s trademark on January 7, 2014. After the close of
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`discovery, Opposer filed its Motion on October 21, 2014.
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`The opposition procedure is intended to remedy oversight or error in the examination
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`process. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §
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`20.01[1] (3d ed. 1992) (opposition proceedings provide “a backstop to purely ex parte
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`examination of trademark applications”). With regard to the Proposed Mark, the Examining
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`Attorney has made no error in determining that there is no likelihood of confusion between the
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`Proposed Mark and Opposer’s Mark. Opposer includes many of the same arguments in its
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`Motion as the Examining Attorney did in her Office Action. However, what Opposer has not
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`done in its Motion is meet its burden of establishing that there are no disputed issues of material
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`fact in this action. In its Motion, the Opposer makes misleading and self-serving statements
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`and attempts to muddy the waters by presenting those statements as undisputed facts.1 Even if
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`the Applicant were to concede that the Proposed Mark is substantially similar to the Opposer’s
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`mark (which Applicant does not), there are still issues of material fact in dispute that relate
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`directly to the determination of a likelihood of confusion between the Proposed Mark and
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`Opposer’s Mark, specifically, the alleged strength and fame of the Opposer’s Mark, relatedness
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`of the goods, dissimilarity of packaging, and dissimilarity of trade channels.
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`II. APPLICANT’S RESPONSE TO OPPOSER’ STATEMENT OF FACTS
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`Applicant hereby responds to Opposer’s statement of facts as follows:
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`1.
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`Opposer states: TradMed, one of the largest US manufacturers of herbal teas,
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`TradMed owns and sells herbal tea and related products under a number of trademarks.
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`                                                            
`1See, e.g., page 8 of the Motion (“Under the undisputable facts, TradMed’s use and Applicant’s identified goods
`are related within the meaning of the Trademark Act.”); page 6 of the Motion (“There is no real dispute that
`Applicant’s WEIGHTLESS WATER mark is substantially identical to TradMed’s WEIGHTLESS trademarks.”).
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`Applicant’s response: Applicant does not dispute that Opposer is a manufacturer of
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`herbal teas. Applicant does not have sufficient information to know if Opposer is one of the
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`largest such manufacturers in the United States, and therefore disputes that fact. Applicant
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`further disputes that Opposer’s status as a large manufacturer of herbal teas, even if true, is
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`entirely irrelevant where Opposer has failed to provide evidence establishing that its market
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`size has any impact on the strength or fame of the specific mark at issue in this Opposition.
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`Applicant does not dispute that Opposer owns and sells herbal tea and related products
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`under a number of trademarks.
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`2.
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`Opposer states: Since at least as early as 1979, TradMed continuously has used
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`the trademark WEIGHTLESS in connection with herbal tea and related products.
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`Applicant’s response: Applicant does not have sufficient information to know if
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`Opposer has been using the Opposer’s Mark since 1979 or to know with what “related”
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`products on which Opposer has been using Opposer’s Mark, and therefore disputes those facts.
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`Moreover, Applicant has not provided any documentary evidence showing such continuous
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`usage since 1979.
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`3.
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`Opposer states: As of this proceeding, TradMed is the only entity to use
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`WEIGHTLESS for any type of beverage, and there has been no evidence produced of any
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`significant third party use, advertising or sales of any beverages under the WEIGHTLESS
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`designation of source, of course, other than TradMed.
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`Applicant’s response: Applicant disputes this. TradMed is not using WEIGHTLESS
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`in connection with a beverage, but rather in connection with tea bags sold in a box and
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`advertised and promoted as a diuretic weight loss aid. Moreover, at least in the past (during
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`the same time as TradMed was purportedly using the WEIGHTLESS mark for its dietary herbal
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`tea supplement and while TradMed had one existing registration for the WEIGHTLESS
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`trademark), there was at least one other company that obtained a trademark registration (and
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`thus established some degree of use) for the exact mark WEIGHTLESS for among other things,
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`with milk and yogurt based food beverages. See U.S. Trademark Registration number
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`1,856,865, WEIGHTLESS. This registration was cancelled in 2001. See Declaration of Ryan
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`Gile (the “Gile Declaration”) ¶ 3 and Exhibit A thereto.
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`4.
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`Opposer states: For over three decades, TradMed’s WEIGHTLESS tea
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`products have been sold in retail stores and by online retailers throughout the United States,
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`including in national retail chains such as Whole Foods, Target, Kroger, Safeway and
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`Amazon.com.
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`Applicant’s response: Applicant disputes this statement to the extent that Opposer
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`refers to products in the plural and to the extent that TradMed has not provided any
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`documentary support in this case of sales for WEIGHTLESS teas going back three decades nor
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`shown to whom such teas were sold. Only one product is currently for sale on the Opposer’s
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`website which uses the Opposer’s Mark and evidence indicates that at most the same product
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`(diuretic herbal weight loss tea bags) may have been sold under two flavour varieties at one
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`point (regular Weightless and Weightless Cranberry) and are the only products to have been
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`sold under the Opposer’s Mark. See Gile Declaration, ¶4 and Exhibit B thereto (Opposer’s
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`Response to RFA ¶ 40); Gile Declaration, ¶5 and Exhibit C thereto (KAT000229-
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`KAT000239); and Gile Declaration, ¶6 and Exhibit D thereto (recent screenshots from
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`Opposer’s website).
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`5.
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`Opposer states: Typical packaging for its tea prominently features TradMed’s
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`WEIGHTLESS mark.
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`Applicant’s response: Undisputed to the extent that Opposer is referring to the diuretic
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`herbal weight loss tea bags that TradMed markets using the Opposer’s Mark.
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`6.
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`Opposer states: Presently, TradMed’s WEIGHTLESS products are generally
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`offered and sold to retail consumers for approximately $5.49 per carton of 16 teabags, using
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`the typical packaging that prominently displays the WEIGHTLESS brand.
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`Applicant’s response: Applicant disputes this statement to the extent that Opposer
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`refers to products in the plural. Opposer currently markets only one product under the
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`Opposer’s Mark. See Gile Declaration, ¶6 and Exhibit D thereto.
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`7.
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`Opposer states: Despite TradMed’s long extensive, exclusive, and ongoing use
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`of the WEIGHTLESS trademark for beverages, Applicant submitted a trademark application
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`for WEIGHTLESS WATER (Serial 85694743) on August 3, 2012 for “bottled water and
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`flavored bottled water, excluding teas, that is not nutritionally fortified with vitamin and
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`mineral nutritional supplements” as an intent-to-use application.
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`Applicant’s response: Applicant disputes that the Opposer’s Mark is used in
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`connection with beverages as well as TradMed’s conclusory statements that any such use has
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`been “extensive, exclusive, and ongoing.” Opposer’s Mark is registered for use with “dietary
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`and nutritional supplements, diuretic herb teas and herb teas for use in weight loss and weight
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`control” and the evidence of record supports that this is the extent of Opposer’s use of
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`Opposer’s Mark. See Gile Declaration, ¶5 and Exhibit C thereto. Applicant does not dispute
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`that its application for the Proposed Mark is for “bottled water and flavored bottled water,
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`excluding teas, that is not nutritionally fortified with vitamin and mineral nutritional
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`supplements.”
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`8.
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`Opposer states: Applicant’s application was published for Opposition on
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`September 10, 2013.
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`Applicant’s response: Undisputed.
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`9.
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`Opposer states: TradMed timely filed its Opposition on January 7, 2014.
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`Applicant’s response: Undisputed.
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`III. APPLICANT’S STATEMENT OF UNDISPUTED FACTS
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`Applicant submits the following statement of facts relevant to this matter that are not
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`in dispute:
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`1.
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`At the time of Applicant’s filing of this Opposition to the Motion, Opposer lists
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`only one product on its website using Opposer’s Mark. This is a box of sixteen tea bags
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`marketed as a diuretic weight loss tea, categorized under “Women’s Tea” and reflected on
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`Opposer’s website as “Weightless Cranberry.” See Gile Declaration, ¶6 and Exhibit D thereto.
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`2.
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`In June 2013, when Opposer responded to Applicant’s Request for Admissions,
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`Opposer was selling two flavour variations of its diuretic herbal weight loss tea bags marketed
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`under the Opposer’s Mark. See Gile Declaration, ¶4 and Exhibit B thereto (Opposer’s Response
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`to RFA, ¶ 40); see also Gile Declaration, ¶5 and Exhibit C thereto (KAT000229-KAT000239).
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`3.
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`Opposer does not and has never marketed bottled water or flavored water as one
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`of its products under the Opposer’s Mark. See Opposer’s Response to RFA, ¶ 18. Moreover,
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`Opposer’s own trademark registrations for Opposer’s Mark do not indicate that the goods sold
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`under Opposer’s Mark have ever included or extended to such goods. See Gile Declaration,
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`¶12 and Exhibit I thereto (Exhibits A and B of Opposer’s Notice of Opposition).
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`4.
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`Both of the products once sold under the Opposer’s Mark are marketed towards
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`women as is evidenced by the online category in which the teas are placed on the website
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`(under “Women’s Teas”), the label reading “Women’s Teas” on the packaging, and the pinkish
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`color of the packaging. See Gile Declaration, ¶4 and Exhibit B thereto (Opposer’s Response to
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`RFA, ¶¶ 37 & 38); Gile Declaration, ¶5 and Exhibit C thereto; and Gile Declaration, ¶6 and
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`Exhibit D thereto
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`5.
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`All of Opposer’s products, including the one product currently sold under the
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`Opposer’s Mark, also prominently display the Opposer’s name, Traditional Medicinals, on the
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`packaging. See Gile Declaration, ¶7; see also Exhibits C, D, and H thereto.
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`6.
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`Applicant, in addition to expressly excluding “teas” from the description of its
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`goods in its application, also placed the limitation on the goods that the water sold under the
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`Proposed Mark would not be “nutritionally fortified with vitamin and mineral nutritional
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`supplements,” because Applicant intends to market only bottled water and flavored bottled
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`water under the Proposed Mark. See Declaration of Kevin Alan Tussy (the “Tussy
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`Declaration”) ¶ 3 and Exhibit 1 thereto.
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`7.
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`The normal trade channels for the Proposed Goods would be mini-marts and the
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`liquid beverage section of general retail grocery stores where the goods would be placed
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`alongside other bottled water products and other carbonated and non-carbonated beverage
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`products, as well as at gyms and yoga studios which often have bottled water available for sale,
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`typically through vending machines which sell bottled water products alongside other bottled
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`beverages. See Tussy Declaration, ¶4.
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`8.
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`The word WEIGHTLESS is commonly used as a trademark for a variety of
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`goods and services. See Gile Declaration, ¶8 and Exhibit E thereto.
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`9.
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`A narrow online search for “best teas for weight loss” and “weight loss herbal
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`tea” reveals no mentions of either the Opposer’s Mark or the Opposer’s goods. See Gile
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`Declaration, ¶9 and Exhibit F thereto.
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`IV. STANDARD FOR SUMMARY JUDGMENT
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`Summary judgment is only appropriate where there are no genuine issues of material fact
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`in dispute, thus leaving the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The
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`Board does not resolve issues of fact on summary judgment; it only determines whether a genuine
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`issue exists. Meyers v. Brooks Shoe Inc., 912 F.2d 1459, 1461, 16 U.S.P.Q.2d 1055, 1056 (Fed.
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`Cir. 1990), overruled on other grounds by A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960
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`F.2d 1020, 1038-39, 22 U.S.P.Q.2d 1321, 1333 (Fed. Cir. 1992).
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`Opposer, as the party moving for summary judgment, has the burden of demonstrating the
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`absence of any genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-
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`37 (1986). To prevail on its Motion, Opposer must establish that there is no genuine issue of
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`fact regarding the issues at hand by clear and convincing evidence. See H. Marvin Ginn Corp. v.
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`Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986).
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`Opposer is held to a “stringent standard,” for summary judgment is “not a substitute for the trial
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`of disputed issues of fact.” Walters Gardens, Inc. v. Pride Of Place Plants, Inc., Opp’n No.
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`91153755 at p. 14, 2004 WL 1149499 at *6 (T.T.A.B. May 4, 2004) (nonprecedential) (a copy
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`of which is attached as Exhibit G to Gile Declaration, ¶ 10).
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`For its part, in order to have the opportunity to submit proof at trial, Applicant need only
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`show that, on the evidence of record, a reasonable fact finder could resolve the matter in its favor.
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`See Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 850, 23 U.S.P.Q.2d 1471,
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`1472-73 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 202, 22
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`U.S.P.Q.2d 1542, 1544 (Fed. Cir. 1992); see also Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc.,220
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`U.S.P.Q. 740, 742 (T.T.A.B. 1983) (on a summary judgment motion, “nonmoving party is not
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`required to adduce evidence sufficient to prove its case . . . “; it need only show “that there is a
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`genuine issue as to a material fact and that, therefore, there is a need for a trial”). The evidence
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`should be viewed in a light most favorable to the Applicant as the nonmovant, and all justifiable
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`inferences should be drawn in the Applicant’s favor. See Lloyd’s Food Prods. Inc. v. Eli’s Inc.,
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`987 F.2d 766, 767, 25 U.S.P.Q.2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 970 F.2d at
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`850, 23 U.S.P.Q.2d at 1472.
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`However, even given all of the above, because the likelihood of confusion analysis is a
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`particularly fact-intensive one, resolving this issue on summary judgment would be disfavoured
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`in most courts. Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55, 66 (1st Cir. 2013).
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`V. ARGUMENT
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`A.
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`STANDING TO OPPOSE AND INCONTESTIBLITY
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`Opposer is correct in stating that there are two elements of standing in a TTAB
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`Opposition, and Applicant does not dispute that Opposer’s Mark is a valid trademark entitled
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`to protection. However, Opposer’s mere belief that it will be injured by the registration of, and
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`Applicant’s use of, the Proposed Mark may, arguably, grant Opposer standing, but does not
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`make any perceived injury real.
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`Additionally, although the Opposer’s Mark is valid, it is not a fanciful or arbitrary mark,
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`but rather a suggestive mark. Suggestive marks are at the lower end of the scale of
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`distinctiveness that actually allows a device such as a word or logo to function as a trademark.
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`Nautilus Grp., Inc. v. ICON Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed. Cir. 2004)
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`(“‘[U]nlike arbitrary or fanciful marks which are typically strong, suggestive marks are
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`presumptively weak,’ Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036,
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`1058 (9th Cir. 1999).”
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`It is unclear why Opposer refers to and argues its mark’s incontestable status. Applicant
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`is not contesting the validity of Opposer’s mark, which, in fact, the Opposer says in its Motion.2
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`Apparently, the Opposer believes that such statements are somehow relevant to its argument
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`that the Proposed Mark should not be registered, although this is simply not true. Safer, Inc.,
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`94 U.S.P.Q.2d 1031 (P.T.O. Feb. 23, 2010) (“[T]he fact that opposer’s federally-registered
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`trademark has achieved incontestable status means that it is conclusively considered to be valid,
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`but it does not dictate that the mark is “strong” for purposes of determining likelihood of
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`2See Motion at p.4 (“No such challenge has been made in this proceeding.”).
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`confusion. McCarthy On Trademark and Unfair Competition §§11:82 and 32:155 (4th ed.
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`2009)”).
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`The strength or weakness of the Opposer’s Mark is a question of fact precluding
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`summary judgment on this matter. The Opposer has offered no evidence that effectively
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`overcomes this question. Accordingly, Opposer’s Motion properly should be denied.
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`B.
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`THERE
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`IS NO LIKELIHOOD OF CONFUSION BETWEEN
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`OPPOSER’S MARK AND THE PROPOSED MARK
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`The factors set forth in In Re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177
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`U.S.P.Q. 563 (CCPA 1973) must be considered in determining whether there is a likelihood of
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`confusion between two marks. It should be noted, however, that likelihood of confusion
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`requires that confusion be probable, not simply possible. See HMH Publishing Co. v. Brincat,
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`183 U.S.P.Q. 141, 144 (9th Cir. 1974); Fleishmann Distilling Corp. v. Maier Brewing Co., 136
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`U.S.P.Q. 508, 518 (9th Cir. 1963); J.B. Williams Co. v. Le Conte Cosmetics, Inc., 186 U.S.P.Q.
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`317, 319 (9th Cir. 1975).
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`While it’s true that some factors may play a dominant role depending upon the case,
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`there is “no warrant, in the statute or elsewhere, for discarding any evidence bearing on the
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`question of likelihood of confusion.” See DuPont at 1362 (emphasis in original). When all of
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`the relevant DuPont factors are considered, the balance of the factors weigh in favor of a
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`finding of no likelihood of confusion between the Proposed Mark and Opposer’s Mark.
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`1. The Marks are Dissimilar in their Entireties
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`When the Proposed Mark and Opposer’s Mark are considered in their entireties, they
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`are very dissimilar. As the Court in DuPont makes clear, it is the “marks in their entireties”
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`which are to be considered and not just a dissected portion of a mark. DuPont, 177 U.S.P.Q.
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`567. The comparison of the marks requires consideration of “[t]he marks in their entireties as
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`to appearance, sound, connotation, and commercial impression.”Stone Lion Capital Partners,
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`L.P. v. Lion Capital LLP, 746 F.3d 1317, 1321 (Fed. Cir. 2014) (internal citation omitted).
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`It is well settled that “[t]he use of identical, even dominant, words in common does not
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`automatically mean that two marks are similar.” Sensient Techs. Corp. v. SensoryEffects Flavor
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`Co., 613 F.3d 754, 764 (8th Cir.2010) (citations omitted), cert. denied, 131 S.Ct. 1603 (2011)
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`(internal citation omitted) (where the court found that the marks “Sensient Flavors” and
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`“Sensory Effects Flavor Systems” were not sufficiently similar in assessing whether a
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`likelihood of confusion existed). “Rather than consider the similarities between the component
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`parts of the marks, we must evaluate the impression that each mark in its entirety is likely to
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`have on a purchaser exercising the attention usually given by purchasers of such products.” Id.
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`(citing Duluth News-Tribune, a Div. of Nw. Publ'n, Inc. v. Mesabi Pub. Co., 84 F.3d 1093,
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`1097 (8th Cir. 1996)). Even if an element of a mark is dominant, this does not mean that other
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`elements may simply be ignored in the likelihood of confusion analysis. See In re Electrolyte
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`Labs., Inc., 929 F.2d 645, 647 (Fed. Cir. 1990). Moreover, “similarity of marks in one
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`respect—sight, sound or meaning—will not automatically result in a finding of likelihood of
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`confusion, even if the goods are identical or closely related.” TMEP § 1207.01(b)(i) (citing In
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`re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009)). Furthermore, the addition or
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`deletion of a word or words to a mark may avoid likelihood of consumer confusion between
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`otherwise confusingly similar marks where the marks in their entireties convey significantly
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`different commercial impressions. See TMEP §1207.01(b)(iii).
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`For these reasons, a proper comparison of the marks requires consideration of “the two
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`marks in their entireties” in order to analyze “similarities in appearance, sound, and
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`connotation,” and “the overall commercial impression.” Hainline v. Vanity Fair, Inc., 301 F.
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`App’x 949, 953 (Fed. Cir. 2008) (internal citations omitted).
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`Additionally, Opposer argues that because Applicant disclaims the word “water” in its
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`application, it is no longer a significant part of the mark. Opposer erroneously cites In Re
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`Cynosure, Inc., 90 U.S.P.Q.2d 1644 (P.T.O. May 8, 2009) in support of this contention;
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`however, the court in Cynosure did not disregard a part of the mark in question in that case
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`merely because it was disclaimed in the trademark application. In fact, the TTAB and the
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`Federal Circuit have held just the opposite: “the filing of a disclaimer with the Patent and
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`Trademark Office does not remove the disclaimed matter from the purview of determination
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`of likelihood of confusion. See In re National Data Corp., 753 F.2d 1056, 1058–59, 224 USPQ
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`749, 750–51 (Fed. Cir.1985) (“The technicality of a disclaimer . . . has no legal effect on the
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`issue of likelihood of confusion.”).” In re Shell Oil Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993)
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`(“The Board correctly held that the filing of a disclaimer with the Patent and Trademark Office
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`does not remove the disclaimed matter from the purview of determination of likelihood of
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`confusion.”) (citing In re National Data Corp., 753 F.2d 1056, 1058-59, 224 USPQ 749, 750-
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`51 (Fed. Cir.1985)).
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`Under the overall impression analysis, there is no rule that confusion is automatically
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`likely if a junior user has a mark that contains in part the whole of another’s mark. McCarthy
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`on Trademarks and Unfair Competition at § 23:41 at 23-132 (Fourth Edition 2005). There are
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`numerous cases in which it has been found that an applicant’s mark may contain a registered
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`mark without likelihood of confusion resulting, even when it is registered in connection with
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`goods or services within the same realm Colgate-Palmolive Co. v. Carter-Wallace, Inc., 432
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`F.2d 1400, 167 USPQ 529 (CCPA 1970) (PEAK PERIOD not confusingly similar to PEAK);
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`Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (ALL CLEAR
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`not confusingly similar to ALL); In re Ferrero, 479 F.2d 1395, 178 USPQ 167 (CCPA 1973)
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`(TIC TAC not confusingly similar to TIC TAC TOE); Conde Nast Publications, Inc. v. Miss
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`Quality, Inc., 507 F.2d 1404, 184 USPQ 422 (CCPA 1975) (COUNTRY VOGUES not
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`confusingly similar to VOGUE); In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB
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`1974) (MMI MENSWEAR not confusingly similar to MEN’S WEAR); Plus Products v.
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`General Mills, Inc., 188 USPQ 520 (TTAB 1975) (PROTEIN PLUS and PLUS not confusingly
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`similar); Standard Brands, Inc. v. Peters, 191 USPQ 168 (TTAB 1975) (CORN-ROYAL for
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`butter not likely to cause confusion with ROYAL marks on other food products); Citigroup
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`Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349 (Fed. Cir. 2011) (substantial evidence
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`supported the TTAB’s factual finding that CCB’s marks, Capital City Bank, Capital City Bank
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`Investments, Capital City Bank Growing Business, and Capital City Banc Investments, are not
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`similar to Citigroup’s marks including, CITIBANK); Shen Mfg. Co. v. Ritz Hotel, Ltd., 393
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`F.3d 1238 (Fed. Cir. 2004) (upholding TTAB’s registration of “Putting on the Ritz,” “Ritz
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`Hotel/Ritz Paris” and “The Ritz Kids” marks against opponent’s use of the mark, “Ritz”); In
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`re Coors Brewing Co., 343 F.3d 1340, 1342-43 (Fed. Cir. 2003) (court found that the
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`relationship between restaurants and beer is not sufficient to lead consumers to assume, without
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`more, that the registrant’s restaurant, “Blue Moon and Design,” was the source of the
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`applicant’s beer, “Blue Moon”).
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`Again, one must consider the similarity or dissimilarity of the marks in their entireties
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`as to appearance, sound, connotation and commercial impression. The existence of a
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`WEIGHTLESS mark currently registered with the PTO should not automatically preclude the
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`registration of other marks sharing such term, such as the Proposed Mark. Lever Brothers
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`Company v. The Barcolene Company, 174 U.S.P.Q. 392 (C.C.P.A. 1972) (trademark owner’s
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`rights in the term ALL do not preclude subsequent registration of marks comprising the term
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`ALL).
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`Although Opposer’s Mark and the Proposed Mark contain the common term
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`“WEIGHTLESS,” there are several important differences which lend themselves to the marks
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`giving off clearly distinct appearances and different commercial impressions. First, Opposer’s
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`Mark references just the word WEIGHTLESS on its own. In contrast, the Proposed Mark
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`contains the additional word “WATER.” This alone makes the marks appear different in sound
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`and appearance. While Applicant acknowledges that the term WATER is descriptive in
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`connection with Applicant’s goods, the term must still be considered in the overall likelihood
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`of confusion analysis. See In re Good Sports, Inc., 2009 TTAB LEXIS 78 (TTAB 2009)(not
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`precedential) (“While descriptive terms are typically weak, and entitled to little weight in a
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`likely of confusion analysis, they must still be considered part of the mark.”); see alsoIn re
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`Electrolyte Labs., Inc., 929 F.2d 645, 647 (Fed. Cir. 1990); In re Shell Oil Co., 992 F.2d 1204,
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`1206 (Fed. Cir. 1993). Applicant submits that a consumer seeing and hearing Opposer’s Mark
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`and the Proposed Mark would immediately detect the dissimilarity between the pronunciation
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`of “Weightless” and “Weightless Water.”
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`Conflicting marks are to be compared by looking at them as a whole given that the
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`commercial impression of a composite trademark on an ordinary prospective buyer is created
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`by the mark as a whole, not by its component parts. Cantine Mezzacorona S.C.A.R.L. v. Mignel
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`Torres, S.A., 135 F.3d 774 (Fed. Cir. 1997) (“the Board may not improperly dissect competing
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`marks to ascertain the level of confusing similarity but must consider the similarities of the
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`marks taken as a whole”); General Mills, Inc. v. Kellogg Co., 824 F.2d 622,3 USPQ2d 1442,
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`1445 (8th Cir. 1987) (“[I]n analyzing the similarities of sight, sound and meaning between two
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`marks, a court must look to the overall impression created by the marks and not merely compare
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`individual features.”). Verscene Inc. v. HNI Corp., 2012 WL 1971142, at *3 (D. Minn. June 1,
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`2012) (“Rather than consider the similarities between the component parts of the marks, we
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`must evaluate the impression that each mark in its entirety is likely to have on a purchaser
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`exercising the attention usually given by purchasers of such products.” (internal citation
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`omitted)). It has been held to be a violation of the anti-dissection rule to focus upon the
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`prominent feature of a mark and decide likely confusion solely upon that feature, ignoring all
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`other elements of the mark. See E & J Gallo v. Proximo Spirits, Inc., , 2012 WL 947187, at *5
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`(E.D. Cal. Mar. 20, 2012) (“According to the anti-dissection rule....the critical inquiry focuses
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`on the overall appearance of the mark as it is used in the marketplace”).
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`Although Opposer’s Mark and the Proposed Mark contain the common noun
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`“weightless,” there are several important differences when viewing the marks in their entirety,
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`including the goods in connection with which the respective marks are used, which lend
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`themselves to the marks giving off clearly different and distinct commercial impressions.
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`When Opposer’s Mark is considered in connection with the Opposer’s goods (dietary
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`supplements in the nature of diuretic herbal tea bags used to steep a tea that is supposed to
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`promote weight loss), the commercial impression of “Weightless” is suggestive of a feature of
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`the goods, namely helping a person lose weight – a play on the verbiage “less weight”. In
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`contrast, the commercial impression of “Weightless” as it appears in the Proposed Mark (which
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`contains the term “Water”) is that of the word “light” (i.e. low calorie) water drink product that
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`will not put on any weight to the person drinking it because it contains few if any calories in
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`contrast to other water products in the marketplace that are known to contain a high amount of
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`calories (e.g., Propel). Indeed, manufacturers will often use separate marks to designate the
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`“light” (low calorie) nature of their water products (e.g., Propel ZERO).
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`Given the different connotations that the word WEIGHTLESS can have to consumers
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`– combined with the fact that the Proposed Mark also includes the term WATER and the
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`dissimilarity between the parties respective goods (discussed further herein) – Applicant
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`maintains that the Proposed Mark does not does not “convey the same idea” or “stimulate the
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`same mental reaction” as Opposer’s Mark. Accordingly, Applicant maintains that the Proposed
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`Mark has a significantly different overall commercial impression distinct from Opposer’s
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`Mark.
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`In summary, Applicant submits that when the Proposed Mark and Opposer’s Mark are
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`considered in their entireties, the differences in appearance, sound, and connotation give rise
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`to a different and distinct commercial impression such that there is no real probability of
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`consumer confusion.
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`At a minimum, Applicant’s arguments showing the dissimilarity of the marks in sight,
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