Monday, October 22, 2012

Test Your TTAB Judge-Ability: Is DUB for Dietary Supplements Confusable With DUB for Energy Drinks?

Here we go again! If you're not still staggering after last Friday's JOTS/TOTT'S test, try your luck/skill on this one. The PTO refused registration of the mark DUB for dietary supplements on the ground of likely confusion with the identical mark registered for non-alcoholic energy drinks. Applicant appealed. How do you think this came out? In re Dub Nutrition, LLC, Serial No. 77752113 (October 3, 2012) [not precedential].

The fact that the marks are identical weighed "heavily" against the Applicant. Moreover, there was no evidence of any third-party use of DUB for energy drinks or supplements, and the mark appeared to be arbitrary for energy drinks. The Board therefore considered the cited mark to be a strong mark entitled to a broad scope of protection.

But what about the goods? Not to worry. The Examining Attorney provided a half-dozen third-party registrations that cover both dietary supplements and energy drinks. "Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)."

Applicant attempted to distinguish the goods by arguing that dietary supplements are healthy and energy drinks are not. But the Examining Attorney submitted website evidence that some energy drinks may appeal to health-conscious consumers.

Applicant asserted the channels of trade differ because its supplements are sold via a direct sales network of individuals/distributors working out of their homes. The Board pointed out, however, that there was no such restriction in the opposed application, and therefore it must assume that Applicant's goods "are sold in all channels of trade appropriate for dietary supplements, including retail stores such as supermarkets and pharmacies, where energy drinks are sold."

Applicant next contended that its customers use care in their purchases, but the Board was unmoved. Although some consumers of supplements may exercise care, others may not: for example, purchasers of daily multi-vitamins, "which may be purchased by the public at large simply because they have heard that it is a good idea to take these vitamins." Moreover, when the marks are identical, even careful purchasers may be confused as to source. And if, as Applicant asserted, energy drinks are impulse items, "there is a likelihood of reverse confusion, because a consumer who is familiar with applicant’s DUB dietary supplements might well buy a DUB energy drink without any thought, merely assuming because of the identical mark that the goods emanate from the same source."

Finally, Applicant asserted that it was not aware of any incidents of actual confusion. The Board observed, however, that the opposed application was based on intent-to-use, and there was no evidence as to when Applicant began using its mark or the extent of that use. In any case, such an assertion by an Applicant in an ex parte context is of little import, since the registrant has no opportunity to rebut the contention.

Considering the relevant duPont factors, the Board found that the PTO had met its Section 2(d) burden, and it affirmed the refusal.

TTABlog comment: Well? Can we say that there is a de facto per se rule that dietary supplements and energy drinks are related for Section 2(d) purposes? The de facto qualifier applies because it's up to the Examining Attorney to put in the third-party registration evidence.

Text Copyright John L. Welch 2012.


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