IP Law Daily, TRADEMARK—TTAB: Standard character mark that encompassed stylized mark was likely to cause confusion, (Mar 23, 2022)

By Kevin M. Finson, J.D.

The marks were legally identical and used on related goods—nutritional supplements and cosmetics.

The proposed standard character mark NUNC was likely to cause confusion with the registered stylized mark NUNC, because the standard character mark included the particular font and style of the registered mark and the applicant’s goods were related to the registrant’s goods, the Trademark Trial and Appeal Board has held. The record demonstrated that a single entity may provide nutritional supplements and beauty products under the same mark (In re Your Gummy Vitamins LLC, March 17, 2022, Pologeorgis, G.).

Your Gummy Vitamins, LLC (Vitamins) sought registration on the Principal Register of the standard character mark NUNC for use with “Dietary supplements and nutritional supplements for promoting nutrition and health, excluding tablets and powdered mixes used to make beverages or drinks and excluding formulations for beauty enhancement” in International Class 5. The Examining Attorney refused registration on the ground of likelihood of confusion with the registered stylized mark NUNC, registered for use with “Cosmetics and cosmetic preparations; aromatic oils; air fragrancing preparations; fragrances and perfumery; skin soap; dentifrice” in International Class 3. Vitamins appealed. After briefly noting that evidence Vitamins had attached to its brief but not included in the record below would not be considered, the Board considered the DuPont factors for which there was evidence of record.

Strength of the registered mark. There were no third-party registrations in the record showing similar marks, and no evidence of third-party use on similar goods, so this factor was neutral.

Similarity of marks. The marks were legally identical. Although the registered mark only claimed the word NUNC with one particular font and stylization, Vitamins’ application for a standard character mark of that same word necessarily included all depictions of its mark regardless of font, style, size, or color. As a result, the proposed mark could be displayed identically to the registered mark. This factor weighed heavily in favor of confusion.

Relatedness of goods. The Examining Attorney submitted evidence of 11 online retailers which showed that single entities commonly sold goods within both the applicant and the registrant’s lists of goods under the same mark. Vitamins argued that it had limited its goods to exclude beauty products, but the Board held that the goods did not need to be identical, only related, and the Examining Attorney’s evidence was sufficient to show that the goods were related. This factor supported a finding of confusion.

Channels of trade and classes of consumers. Vitamins argued that the registered mark was no longer in use in the United States, but the Board pointed out that collateral attacks on the validity of a registration are not permitted in an ex parte proceeding, but only in cancellation proceedings. Vitamins also argued that the trade channels were different because the registrant’s business focused on beauty salons in Japan. The Board noted that its decision was based on the full scope of the registration and rights, not how those rights were actually used. The Board found that based on the same evidence the Examining Attorney presented on the relatedness of the goods, the goods generally flowed through overlapping channels of trade to overlapping consumers.

Balancing the factors, the Board held that confusion was likely and affirmed the refusal to register.

The case is Serial No. 90007282.

Attorneys: Khanh M. Le for the USPTO. Roy D. Gross (The Roy Gross Law Firm, LLC) for Your Gummy Vitamins LLC.

Companies: Your Gummy Vitamins LLC

Cases: Trademark USPTO GCNNews