IP Law Daily, TRADEMARK—TTAB: Proposed ENDURELITE mark did not endure likelihood of confusion scrutiny, despite ‘catch-all’ consideration, (Nov 22, 2024)

By Justin Marcus Smith, J.D.

The applicant’s own pre-existing composite mark was not sufficiently similar to its proposed standard character mark to outweigh the likelihood of confusion with another registrant’s nearly identical standard character mark.

The marks ENDURELITE and ENDUROLETE were “extremely similar” and would be encountered on identical goods, in the same consumer trade situations, posing a likelihood of confusion, affirmed the Trademark and Trial and Appeal Board (T.T.A.B.) in a non-precedential opinion. The T.T.A.B. reached this holding despite the thirteenth “catch-all” DuPont factor weighing slightly against a finding of likelihood of confusion. The T.T.A.B accordingly affirmed the examiner’s Trademark Act Section 2(d) refusal (In re Endurelite Supplements, LLC, No. 90708132 (T.T.A.B. Nov. 15, 2024)).

Background. Endurelite Supplements, LLC (applicant) sought to register the mark ENDURELITE, in standard character format, on the Principal Register for dietary supplements, as specified at length, in International Class 5.

The examiner refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the mark resembled the standard character mark for ENDUROLETE for “dietary and nutritional supplements” in International Class 5. The USPTO denied reconsideration, and the applicant appealed to the T.T.A.B.

Evidentiary issue. On appeal to the T.T.A.B., the applicant claimed ownership of five related registrations, including one for the mark ENDURELITE FUELING; however, the T.T.A.B. said the applicant merely listed these registrations without submitting copies, prior to appeal, to perfect them of record. The T.T.A.B. stated it does not ordinarily take judicial notice of third-party registrations, including applicant-owned registrations. However, the examining attorney discussed the registrations without advising that merely listing them would leave them out of the record. Accordingly, the T.T.A.B. elected to treat them as stipulated into the record.

Likelihood of confusion. Applying the DuPont factors where there was evidence and argument to do so, the T.T.A.B. affirmed there was a likelihood of confusion because the marks ENDURELITE and ENDUROLETE were extremely similar and would be encountered by the same classes of consumers, in the same trade channels, on identical goods. The T.T.A.B. said it arrived at this holding despite the existence of the applicant’s prior registration, which, under the thirteenth DuPont factor, weighed slightly against a finding of confusion.

On the second DuPont factor, consuming public perception, the same goods listed in the cited registration were identified in the application. The goods were identical in part. This factor weighed “heavily” in favor of likelihood of confusion.

On the third DuPont factor, similarity in likely trade channels, the goods were legally identical in part, so the T.T.A.B. presumed the channels of trade and classes of purchasers to be the same. This factor also weighed “heavily” in favor of likelihood of confusion.

Turning to the first DuPont factor, involving similar or dissimilar appearance, sound, connotation, and commercial impression, the court initially noted that each mark, ENDURELITE and ENDUROLETE, consisted of 10 letters forming four syllables with substantial character overlap. The marks were “extremely similar” “to the eye” where the sole difference was in embedded vowels. Pronunciation might vary, but the T.T.A.B. adjudged it was likely to be similar given identical consonant placements.

The applicant stressed here that ELITE was a suffix used in the role of the applicant’s own house mark, hence it would have a different commercial impression from the other registrant’s mark. On this line of reasoning, consumers would perceive the products as originating from the applicant, and not the other registrant, due to pervasive use of the ELITE house mark as the distinctive portion of the ENDURELITE mark. However, the T.T.A.B. said this argument did not persuade that the marks were dissimilar. The T.T.A.B. cited it could only consider the mark as set forth in the application, and whether or not the mark was used with an associated house mark would not control. There was also no evidence of consumer recognition of ELITE as a house mark for applicant’s goods.

The T.T.A.B. similarly disagreed that the prefix ENDUR element, common to both marks, should have a minor role in assessing similarity. In each case, it was likely to suggest an “endurance” improvement quality for both marks. Again, the connotations would be similar. There was also no evidence that the ENDUR prefix was “commercially or conceptually weak.”

The differences between the marks were minimal, so the proper test for similarity was not a side-by-side comparison, but rather whether they were sufficiently similar in commercial impression that people encountering them would assume a connection between them. In sum, the first DuPont factor weighed in favor of likelihood of confusion.

Existing registration. Turning to the thirteenth or “catch all” DuPont factor, any other established fact probative of effect of use, the court concluded the applicant and examining attorney were both correct in their baseline observations about the applicant’s prior registration. As in Strategic Partners, the prior registration was more than five years old and not subject to priority or likelihood of confusion attack. See In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012). The prior registration contained the same literal term ENDURELITE.

However, other circumstances differed from those in Strategic Partners. The instant applicant was presently seeking registration of the standard character mark ENDURELITE, but the prior registration was for a composite mark including the stylized term ENDURELITE, a design, with the additional wording FUELING FAST. The mark applied for now and the applicant’s earlier mark were not substantially similar, so this situation differed from Strategic Partners.

Another important difference was that the applicant was seeking to register the mark ENDURLITE for goods including “dietary and nutritional supplements” representing a “significant expansion” on the more specifically -described nutritional supplements listed in the applicant’s existing prior registration. The respective goods in Strategic Partners, in contrast, were identical.

The T.T.A.B. concluded the thirteenth catch-all factor only weighed slightly in favor of finding confusion unlikely. And, given differences relative to Strategic Partners, this factor could not outweigh the other factors.

The Case is Serial No. 90708132.

Judge: Wellington, T.

Attorneys: Joseph P. Schilleci, Jr. (Schilleci & Tortorici, PC) for Endurelite Supplements, LLC. Kevin Flebbe for the USPTO.

Companies: Endurelite Supplements, LLC

Cases: Trademark USPTO