TTABlog Test: Are Gummy Vitamins Related to Personal Care Products Under Section 2(d)?
The USPTO refused to register the mark KUDO for "Gummy vitamins; Nutritional supplements in the form of gummies," finding confusion likely with the nearly identical mark KUDOS registered for "Hair shampoo, hair conditioner, soap for hands, face and body, skin/body moisturizer, skin/body lotion, shaving preparations, body/hand cream, skin cleansing cream, and bath gels/oil." Are the goods related? Do they travel through the same trade channels? How do you think this appeal came out? In re Salvation Nutraceuticals Inc., Serial No. 97015288 (March 8, 2024) [not precedential] (Opinion by Judge Mark Lebow).
Examining Attorney Yat Sye Lee submitted internet evidence that some eighteen different companies offer the goods of both applicant and registrant under the same mark (including SEPHORA, BATH & BODY WORKS, and PACIFICA), along with twenty use-based third-party registrations covering these goods. The Board therefore found the goods to be related.
Applicant Salvation contended that “[c]ompanies typically separate their topical goods from their consumable goods,” which “prevents consumers from believing that the consumable goods somehow contain similar ingredients or characteristics as the topical products, which can contain toxins or other undesirable ingredients to consume and allows the companies to market the products with different message." [sic].: According to applicant:
[The USPTO actually has a long and consistent practice of not finding dietary and nutritional supplements to be related or similar to skin care products. But recently, many marks are being rejected by presenting extrinsic evidence that improperly extends the rights of registrants in an ex parte proceeding based on being so-called substantially related. And the pendulum has swung too far.
However, evidentiary support for that assertion was lacking.
Salvation also complained that it “was not allowed to present extrinsic evidence of actual use by the registrant to show that the goods are not substantially related,' specifically, that Registrant is a manufacturer of guest amenities for hotels, which do not provide supplements and vitamins for their guests." The Board was not impressed, pointing out once again that:
“[the] likelihood of confusion determination must be made on the basis of the goods or services as identified in the application and the registration, rather than on the basis of what the evidence might show the applicant’s or registrant’s actual goods or services to be.” In re Trackmobile, 15 USPQ2d 1152, 1153 (1990)),
With regarding to the overlap in trade channels, the examining attorney relied on the same evidence discussed above regarding the relatedness of the goods, including the webpage evidence from retailers Avon, Honest, Pacifica, Tula, Ulta, Vegamour, Hello Bello, Love Beauty & Planet, Sephora, Blue Mercury, Bath & Body Works, Blu Atlas, Consult Beaute, Gimme, Love Wellness, New Nordic, Oase, and ZAS Naturals. "This evidence supports a finding that these goods are offered in at least one common channel of trade, that is, the websites operated by the third-party specialty retailers, often on the same page."
And so, the Board affirmed the refusal to register.
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TTABlogger comment: Does this one bother you? Would you rub a gummy vitamin on your skin?
Text Copyright John L. Welch 2024.