Archive for September, 2021


Wednesday, September 15th, 2021

In a 2021 nonprecedential case, the Trademark Trial and Appeal Board affirmed the refusal to register the mark GENRESTORE for dietary supplements and under §2(d) found it likely to cause confusion with the mark RESTOREGEN for dietary supplements, as well.

The Board began its analysis of the marks starting with the second and third DuPont factors, which look at the goods under the marks, the channels of trade and the classes of consumers. For the second factor, both GENRESTORE and RESTOREGEN cited “dietary supplements” as the goods. So, that factor weighed heavily in favor of finding a likelihood of confusion. Further, the Board found that since the listed goods were identical, the degree of similarity between the marks necessary to find a likelihood of confusion was lesser. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908(Fed. Cir. 2012). In regard to the third factor, the Board presumed that the trade channels and consumer classes would be similar, given that the listed goods were identical. Therefore, those factors weighed in favor of finding confusion likely. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same).

The Board then turned its attention to the first DuPont factor, which examines the similarity of the marks in their entireties as to their appearance, sound, connotation and commercial impression. It started the analysis by looking at the terms within each mark. First, the applied-for mark, GENRESTORE, combined GEN and RESTORE with no space in between, while the registered mark, RESTOREGEN, combined the same terms in the reverse order, still with no space between. The Board found that the similarities in the wording outweighed the differences. Moreover, it stated that that the terms GEN and RESTORE look and sound identical, regardless of the order reversal. It also found that the marks conveyed the same meaning when used in connection with identical goods, which in this case were dietary supplements. The Board stated, “While Applicant’s mark presents the terms in Registrant’s mark in reverse order, this difference is not sufficient to overcome the confusion which would arise out of Applicant and Registrant using identical terms for identical goods.” The Applicant attempted to argue that the marks conveyed “distinctively different commercial impressions” since the registered mark “refers to restoring (restore) a genetic (gen) response,” while the applied-for mark while “refers to generation (gen) and restore.” The Board did not deny some merit in the argument, but found the merit baseless, as the Applicant provided no supporting evidence. Further, the Applicant ultimately conceded that the overall commercial impression of both marks implied the listed goods offered under the marks would both “restore” something missing in the user’s body or diet. Thus, the Board found that the marks created similar commercial impressions.

On a final note in reference to the first DuPont factor, the Board stated that it must be kept in mind that (1) “the fallibility of memory over a period of time;” (2) that the “average” purchaser “normally retains a general rather than a specific impression of trademarks;” and (3) that Applicant’s and Registrant’s marks are comprised of the same terms and used in connection with identical goods.” See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Therefore, the first factor weighed heavily in favor of finding a likelihood of confusion.

Finally, the Board looked at the fourth DuPont factor, which looks at the consumers’ sophistication and the degree of care used in the purchase. It found that this factor weighed against a finding of a likelihood of confusion, as the target consumers were more likely to exercise a certain degree of care, as the listed goods were dietary supplements. Ultimately, the Board concluded that this factor was outweighed by the other relevant DuPont factors and affirmed the §2(d) refusal to register the applied-for mark GENRESTORE.

Is FAST DRINK Merely Descriptive?

Wednesday, September 15th, 2021

In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the §2(e)(1) refusal to register the mark FAST DRINK for “Nutritional meal replacement drinks adapted for medical use; herbal teas for medical treatments,” and found that the mark was not merely descriptive of its cited goods.

To begin, a mark is merely descriptive if it “consist[s] merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004). Further, when a mark consists of multiple terms, it does not automatically create a nondescriptive word or phrase. In re Associated Theater Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each term retains its merely descriptive significance, in relation to the cited goods or services, the combination of the terms results in a mark that is still overall merely descriptive. Oppedahl, 71 USPQ2d at 1371. However, a mark that is comprised of merely descriptive components, which ultimately create a nondescriptive meaning, or a meaning insignificant to the cited goods or services, the mark may still be registrable. Further, a mark may be considered suggestive, as opposed to merely descriptive, if when encountered with the cited goods, requires a certain degree of reasoning, imagination, thought or perception in order to determine the attributes of the cited goods. See, e.g., In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).

The Examining Attorney argued that the mark FAST DRINK was merely descriptive of a significant feature of the cited goods, specifically that the goods were “for use during periods when a consumer either completely abstains from food, instead consuming herbal teas or meal replacement drinks such as those described in applicant’s application or when a consumer greatly reduces the food for a certain period, instead consuming herbal teas or meal replacement drinks.” The Examining Attorney used dictionary definitions of the terms “fast” and “drink” to support the argument and pointed specifically to the following definitions: fast – “[t]he act or practice of abstaining from or eating very little food” and “drink” – “liquid suitable for swallowing especially to quench thirst or to provide nourishment or refreshment.”

The Board agreed that the terms retained their individual meaning, but it maintained that there was a lack of evidence to support that the term FAST DRINK, as a unitary mark, referred to a drink that was “consumed during, or in preparation for, a fast.” However, the Board stated that even if consumers were to perceive the mark in that manner, there were other ways to perceive it as well, given that the term “fast” is also defined as “acting, moving, or capable of acting or moving quickly; swift,” and “accomplished in relatively little time.” Because of these other viable definitions, the Board believed that consumers could also perceive FAST DRINK as a product that could be quickly prepared, used as quick snack or an on-the-go meal replacement, which could be used during fasting. The Board noted that precedent ruled that “marks which create a double entendre or double meaning are not merely descriptive.” See., e.g., In re Tea and Sympathy Inc., 88 USPQ2d 1062, 1064 (TTAB 2008).

Ultimately, the Board stated that since it found FAST DRINK equally as likely to be perceived as indicating a drink that could be used while fasting, a drink that could be made quickly or a drink that could be consumed quickly or as an on-the-go meal replacement, the mark was “at most, suggestive of the identified goods.” As such, the Board concluded that the mark FAST DRINK was a double entendre in connection with the listed goods and reversed the §2(e)(1) refusal to register.

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