IP Law Daily, TRADEMARK—TTAB: Registration for NATURE MADE was rejected as too similar to existing MADE IN NATURE mark, (Jun 21, 2022)

By Robert B. Barnett Jr., J.D.

The key factors in rejecting the NATURE MADE application for fruit-based food were the extreme similarities to opposer’s MADE IN NATURE mark for fruit-based food.

Registration of the mark NATURE MADE for food bars containing dried fruits, soy-based food bars, and beauty beverages was denied because of a likelihood of confusion with the opposer’s existing mark MADE IN NATURE for fresh fruit, dried fruit and vegetables, and chocolate-covered fruit, the Trademark Trial and Appeal Board has ruled in a precedential decision. Confusion would likely result from the similarities between the marks (they were “similar in appearance, sound, meaning, and commercial impression”) and the similarities between the goods and services (“identical in part…and otherwise similar and related”), two key DuPont factors. The two product groups were also to be sold in the same trade channels to similar consumers (Made in Nature, LLC v. Pharmavite LLC, June 15, 2022, Hudis, J.).

Background. Pharmavite LLC sought registration for the mark NATURE MADE for three product categories: (1) cereal bars, cereal-based energy bars, and grain-based energy bars containing fruits, dried fruits, and other ingredients, (2) soy-based food bars, soy-based snack bars, and fruit-based meal replacement bars, and (3) beauty beverages, which includes energy drinks containing nutritional supplements. Prior to this application, Pharmavite has been selling NATURE MADE vitamins and supplements for more than 40 years.

The application was opposed by Made in Nature, LLC, which owns the trademark MADE IN NATURE for fresh fruit, dried fruit and vegetables, and chocolate-covered fruit. Its products have been offered since 1989.

Likelihood of confusion between the two marks would be analyzed, as always, by the factors established in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

Morehouse defense. Before the Board addressed the likelihood-of-confusion analysis, it addressed Pharmavite’s “Morehouse defense” to Made in Nature’s opposition. The Morehouse defense (based on Morehouse MFG. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969)) is an equitable defense that argues that the petitioner should be allowed its registration because no further injury could occur, given that an injurious registration already exists. The injurious registration that Pharmavite cited was its prior registrations for NATURE MADE vitamins and vitamin supplements.

The Board rejected the defense for two reasons. First, it was not tried by the party’s express consent. Pharmavite raised it for the first time in its brief, to which Made in Nature immediately objected. Thus, no consent existed. Second, even if it were tried with consent, the defense had no application to this case. The NATURE MADE vitamins and vitamin supplements were not identical to, or even substantially the same as, the food and drink product registrations now being sought. Thus, the Morehouse defense did not apply.

Strength of opposer’s marks. Turning to the DuPont factors for likelihood of confusion, the Board concluded that Made in Nature’s MADE IN NATURE trademark was highly suggestive of what was contained in the products “because they bring to mind a quality of the goods for which the marks are registered—all natural without man-made ingredients.” Furthermore, the Board noted, the marks were entitled to presumptions because they were registered. Thus, even if the mark were deemed to be inherently weak, that finding was not fatal to a finding of likelihood of confusion because of the protections afforded by the Trademark Act. In addition, Pharmavite never demonstrated that the marks were commercially weak. Made in Nature’s annual net revenues were in the mid- to high- tens of millions of dollars, with annual advertising expenditures in the multiple millions of dollars. The Board concluded ultimately that the marks were of moderate commercial strength for those goods.

Similarity of marks. Obviously, NATURE MADE was simply a transposition of MADE IN NATURE, which makes them quite similar. “Where transposed marks convey similar commercial impressions,” the Board reasoned, “likelihood of confusion is ordinarily found.” Furthermore, the Board added, the presence of the word “IN” did not distinguish MADE IN NATURE from NATURE MADE for likelihood-of-confusion purposes. The Board then concluded that the two marks were “similar in appearance, sound, meaning, and commercial impression.” Because the two marks were so “highly similar,” confusion was likely to result.

Similarity of goods. As for the similarity of goods, the general rule is that the greater the degree of similarity of the marks, the lesser the degree of similarity is required of the products. In that situation, the Board said, it was enough that the goods were related “in some manner.” In this case, however, the goods identified in two of Pharmavite’s three classes of goods were “identical to, or (at the very least) are encompassed by, the goods identified in Opposer’s MADE IN NATURE registrations.” This relatedness, the Board concluded, went “a number of steps further” than was required for a finding of likelihood of confusion. Thus, this DuPont factor also strongly supported a finding of likelihood of confusion.

Similar trade channels/classes of consumers. The Board concluded that the channels of trade overlapped and that the products were directed to the same classes of consumers—potential purchasers of good and beverage products, i.e., the general public.

Pharmavite argued that its buyers were sophisticated enough to distinguish between products. The Board noted, however, that the goods were low-cost items often purchased on impulse. Some of the products cost as little as $1.99 for a single-serve package. The Board rejected the argument that greater care would be taken simply because some of the goods contained the word “organic” on the package. The average customer of these products was the ordinary consumer, the Board concluded. Thus, two more factors involving trade channels, classes of consumers, purchasing conditions, and consumer sophistication weighed in favor of likely confusion.

Absence of actual confusion. The absence-of-actual-confusion factor is relevant only if a meaningful record of continuous use existed. In this case, no actual confusion existed because products had not yet been sold under the NATURE MADE mark. This factor was neutral.

Likelihood of confusion. For all of the reasons outlined above, the Board concluded that a likelihood of confusion would result, especially on the basis of the similarity of the marks and the similarity of the goods.

The Board, therefore, sustained the opposition to registration filed by Made in Nature.

The Case is Opposition Nos. 91223352, 91223683, and 91227387.

Attorneys: Frank G. Long (Dickinson Wright PLLC) for Made in Nature, LLC. Peter Bromaghim (Womble Bond Dickinson US LLP) for Pharmavite LLC.

Companies: Made in Nature, LLC; Pharmavite LLC

Cases: Trademark USPTO