IP Law Daily, TRADEMARK—TTAB: Board allows registration of nearly identical GAIA marks for nutritional supplements, (Sep 28, 2022)

By George Basharis, J.D.

Applicant’s prior registrations for substantially similar marks coexisted for more than five years with the cited marks.

The marks GAIA KIDS, GAIA HERBS, AND GAIA for nutritional, herbal, and dietary gummy supplements were not confusingly similar to the registered mark GAIA GREEN for mineral supplements, the Trademark Trial and Appeal Board has decided, reversing the Examining Attorney’s refusal to register the marks. The Board found that the marks were legally identical and that the associated goods were similar and likely to be sold through the same channels of trade to the same classes of consumer. However, the Board concluded that there was no likelihood of confusion because the applicant owned two prior registrations for the marks GAIAKIDS and GAIA HERBS for dietary and herbal capsule supplements that predated the registration of the cited GAIA GREEN mark (In re Gaia Herbs, Inc., September 26, 2022, Pologeorgis, G.).

Gaia Herbs, Inc. filed an application to register the standard-character marks GAIA KIDS and GAIA and the stylized and standard-character mark GAIA HERBS (disclaiming KIDS and HERBS) for nutritional, herbal, and dietary supplements in the form of gummies in International Class 5. Gaia Herbs claimed ownership in its application of three prior registrations for the standard-character mark GAIAKIDS for children’s dietary supplements and typeset and stylized marks GAIA HERBS for children’s herbal supplements in the form of capsules. Registration for the GAIAKIDS mark was issued in 2011, and the registrations for the GAIA HERBS marks were issued in 2000 and 2015. Consequently, the prior registrations coexisted with the registered GAIA GREEN mark for over five years and were not subject to challenge by the owner of the cited registration based on a Section 2(d) claim of likelihood of confusion.

The Examining Attorney refused registration of the proposed marks, finding a likelihood of confusion with the registered mark GAIA GREEN for “mineral supplements” in International Class 5. Registration for the GAIA GREEN mark was issued in 2020. The Examining Attorney considered Gaia Herb’s prior registrations and the “thirteenth” DuPont factor but rejected the argument that coexistence of the prior registrations and the cited mark for substantially the same products made confusion unlikely.

On appeal, the Board found that all the DuPont factors, except for the thirteenth factor, either favored Section 2(d) refusal or were neutral. The involved goods—nutritional, herbal, dietary, and mineral supplements—were legally identical or closely related. The Board refused to consider extrinsic evidence offered by Gaia Herbs to show that the registrant’s actual use of the cited mark was not for mineral supplements but instead for horticulture products used in part for commercial purposes. The Board explained that when analyzing goods for relatedness, the determination is based on the description of the goods stated in the applications and registrations at issue and not on extrinsic evidence of actual use. The Board also noted that even if the goods were not legally identical, there was ample evidence of third-party supplement manufacturers who offered both dietary or herbal supplements and mineral supplements under the same marks. Similarly, the parties’ products were offered to same class of consumers via online stores that specialized in health supplements.

Further, the applied-for marks and the cited mark each began the identical word “Gaia” and therefore, the similarity of the marks in appearance, sound, connotation, and commercial impression favored refusal. The Board noted that the first part of a mark was most likely to be impressed upon the minds of consumers when making purchasing decisions. In other words, the source-indicator for Gaia Herbs’ products was the GAIA portion of the applied-for marks, particularly because the descriptive (and disclaimed) wording KIDS and HERBS would not detract from the overall similarities between the proposed marks and GAIA GREEN mark. Moreover, GAIA did not have any meaning regarding supplements, and stylization of the GAIA HERBS mark was insufficient to distinguish it from the cited mark.

The Board rejected or gave little, if any, probative weight to Gaia Herbs’ unsupported claims that it was unaware of actual confusion in the marketplace. Likewise, the Board found Gaia Herbs’ argument that it had priority of use over the cited mark to be irrelevant in an “ex parte proceeding when registration has been refused under Section 2(d).”

The Board finally turned to the “rarely invoked” thirteenth DuPont factor. Gaia Herbs argued that confusion was unlikely because it owned substantially similar marks covering nearly identical goods, and its registered marks predated the cited mark. The Board agreed.

In In re Strategic Partners, the Board reversed the refusal to register a mark under Section 2(d) because the applicant’s previously registered mark was substantially similar to the applied-for mark for identical goods. Strategic Partners established three factors to consider: “(1) whether the applicant’s prior registered mark is the same as applicant’s mark or is otherwise not meaningfully different; (2) whether the identification of goods or services in the application and the applicant’s prior registration are identical or identical in relevant part; and (3) the length of time the applicant’s prior registration has coexisted with the registration being considered as the basis for the Section 2(d) refusal.”

Applying the Strategic Partners factors to this case, the Board found the thirteenth DuPont factor heavily favored reversal of the Examining Attorney. Gaia Herbs’ prior registrations were over five years old and impervious to a petition to cancel under Section 2(d). Importantly, the prior registered marks were nearly identical to the proposed marks and covered virtually the same goods. The Board gave weight to the fact that the examining attorney who had examined the cited registration did not refuse registration based on the likelihood of confusion with Gaia Herbs’ previously registered marks. Consequently, the Board found the thirteenth DuPont factor outweighed the other factors and reversed the refusals.

The case is Serial Nos. 90052133, 90052135, 90052144, and 90052150.

Attorneys: Janet W. Cho (Williams Mullen) for Gaia Herbs, Inc. Carlita Solano for the USPTO.

Companies: Gaia Herbs, Inc.

Cases: Trademark USPTO