Section 2(d) refusal reversed due to different trade channels and customers

United States of America

In 1973 the US Court of Customs and Patent Appeals (now the US Court of Appeals for the Federal Circuit) decided the In re EI DuPont de Nemours & Co case. In that opinion, the court discussed 13 factors relevant to a determination of likelihood of confusion in application proceedings. Likelihood of confusion under the Lanham Act is always a legal determination based on factual underpinnings. The US Patent and Trademark Office thereafter followed that ruling. All new examiners were taught the examination 'rule of thumb' regarding the proper application of the DuPont test for likelihood of confusion, which was: if the applied for mark looked, sounded or had the same meaning as any registered mark, and if the goods were the same or closely related, then, and only then, would the examiner issue a Section 2(d) likelihood of confusion refusal.

Under a subsequent extension of the rule of thumb, if the two marks created the same commercial impression, then the first part of the rule of thumb was met. However, not all 13 DuPont factors may be relevant to every case, and only those factors implicated by the evidence and the particular mark need to be considered.

The Trademark Trial and Appeal Board (TTAB) applied this rule in its precedential decision in In re HerbalScience Group LLC (Serial No 77519313, September 23 2010) by reversing a final refusal holding that likelihood of confusion existed between the trademark MINDPOWER for a variety of botanical extracts for use in the manufacture of end products, and the prior registered trademark MIND POWER X for dietary and nutritional supplements. While the two marks clearly meet the first part of the rule of thumb, the relatedness of the goods was disputed.

The applicant admitted that its goods and those listed in the cited registration could emanate from a single source under a single trademark, as the examining attorney had shown by the introduction of third-party registrations. Third-party registrations that cover a number of different goods have some probative value to the extent that they may serve to suggest that goods are of a type that may emanate from a single source, if the registrations are based on use in commerce. However, the applicant disputed the examining attorney's lack of proper consideration of the channels of trade and classes of purchasers for the registered and applied for goods. It is the goods identified in the application and cited registration that control in a proper ex parte examination of an application. The applicant argued that there could be no likelihood of confusion because the purchasers of dietary and nutritional supplements would never, under normal conditions, encounter its branded ingredient botanical extracts. Unlike the goods listed in the registration, which are sold in drug stores and health food stores, the applicant's identified goods are sold only to the manufacturers of medicinal, pharmaceutical, herbal and food products. Those different channels of trade and classes of purchasers are distinct such that likelihood of confusion will not arise.

The examining attorney countered by holding that, since the goods listed in the cited registration were not restricted in any way, they could be sold to the same herbal product manufacturers as the applicant's goods. The examining attorney cited to case law standing for the principle that, if an identification describes the goods without any limitation as to trade channels, it is presumed that the goods move in all normal channels of trade for those goods. There was nothing in this record to show that a normal channel of trade for dietary and nutritional supplements was that they were sold to the companies that would purchase the applicant’s identified goods.

The TTAB noted as follows:

As shown by the identification of the applicant’s goods, they are for use in the manufacture of pharmaceuticals, nutraceuticals, cosmetics and the like. Thus, because of the very nature of the identification, we must presume that the applicant’s goods will be sold to manufacturers of nutraceuticals, pharmaceuticals and the like.”

If the examining attorney wished to contend that the applicant's goods were purchased by the general public (persons in health and drug stores), she had the burden of proof of that fact. That burden was not met in this case. The TTAB went further and stated that the examining attorney could not require an applicant to provide evidence that its customers were manufacturers of medical, herbal, pharmaceutical and food products since that was a given by the application's identification.

As to the applicant's argument that its customers are "sophisticated purchasers" (a characterisation the examining attorney refuted), the TTAB concluded that purchasers of the applicant's branded goods must be assumed to be knowledgeable and careful purchasers. While the examining attorney was correct in concluding that the goods in the cited registration could be purchased by ordinary consumers on impulse, as those purchasers would have no knowledge of the applicant's branded goods and trademark, they would not choose the registrant's product because they had confused the source of the branded product with the applicant. The TTAB held that, "[b]ecause of the differences in the channels of trade and customers for the applicant’s and the registrant’s goods, there is virtually no opportunity for confusion to arise". The refusal was reversed.

Brian E Banner, H & A Intellectual Property Law PLLC, Alexandria

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