IP Law Daily, TRADEMARK—TTAB: ISATORI BIO-GRO for supplements too similar to BIOGROW for identical goods, (Apr 20, 2017)

By Cheryl Beise, J.D.

A trademark examining attorney’s refusal to register the mark ISATORI BIO-GRO for nutritional supplements on the ground of likelihood of confusion with the registered marks BIOGROW, BIOGROWN, and BIOGROWTH, owned by a single entity for identical goods, has been affirmed by the Trademark Trial and Appeal Board. Given the prominence of the highly similar BIO-GRO portion of the applicant’s mark, as depicted in its product label specimen, the addition of the house mark "iSatori" in smaller font actually could exacerbate rather than dispel confusion (In re iSatori, Inc., April 18, 2017, Adlin, M.).

Applicant iSatori, Inc. sought registration on the Principal Register of ISATORI BIO-GRO, in standard characters, for "dietary and nutritional supplements." The examining attorney refused registration under Section 2(d) of the Trademark Act on the ground of likelihood of confusion with the commonly-owned registered marks BIOGROWN, BIOGROW and BIOGROWTH (each in standard characters) for "nutritional supplements." The applicant appealed.

During oral hearing before the Board, the applicant conceded that the goods were in-part identical and, as such, had to be presumed to travel in the same channels of trade and be offered to the same classes of consumers. In addition, the legal identity of the goods reduced the degree of similarity between the marks necessary to find a likelihood of confusion.

The Board found that the marks, considered in their entireties, were highly similar in appearance, sound, connotation and commercial impression. "In fact, the BIO-GRO portion of Applicant’s mark looks and sounds so similar to each of the cited marks, and conveys such a similar meaning, that it may very well be perceived as another variation of Registrant’s BIOGROW/BIOGROWN/BIOGROWTH marks," the Board said.

The applicant argued that the addition of its house mark, "iSatori," to its mark was sufficient to distinguish its mark from the registrant’s marks. The Board disagreed. While the first word of a mark often is considered its most important and dominant feature, and the addition of a house mark can sometimes dispel confusion, the presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical, the Board noted.

In this case, the Board suggested that adding the house mark iSatori to BIO-GRO "may in fact exacerbate confusion." The Board pointed to the applicant’s specimen of use, displaying a label on one of the applicant’s products, featured the BIO-GRO portion by itself, and in significantly larger letters than "Satori." The Board determined that the facts of this this case were more analogous to previous decisions where the Board found that the addition of a house mark or other term to the beginning of a mark was in essence, an "aggravation rather than a justification."

The fact that the applicant’s and the cited marks were all "somewhat suggestive of nutritional supplements" did not sway the Board, in view of the fact that the registrant owned "three obviously similar marks, all of which are variations of each other, and all of which combine the terms ‘bio’ and ‘grow’ or forms thereof." The Board found that the applicant’s ISATORI BIO-GRO products would be perceived as originating from the source of BIOGROWN, BIOGROW and BIOGROWTH nutritional supplements.

Even accepting the applicant’s assertion that consumers exercise a heightened level of care in purchasing nutritional supplements, the purchaser sophistication factor was "easily outweighed" by the identical goods, overlapping channels of trade, and the similar marks, "especially because Applicant’s mark may be assumed to be a fourth variation of Registrant’s BIOGROW/BIOGROWTH/BIOGROWN marks for identical goods." The refusal to register was affirmed.

The case is Serial No. 86397344.

Attorneys: Tracy L. Deutmeyer (McGrath North Mullin & Kratz PC LLO) for iSatori, Inc. Cassondra Anderson, Trademark Examining Attorney, USPTO.

Companies: iSatori, Inc.

Cases: Trademark USPTO