In a recent reversal by the Board, emphasis was placed on the importance of du Pont factor number six; see In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential]. This likelihood of confusion factor, the number and nature of similar marks in use on similar goods, has been growing in importance since the decision in Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential]. A number of cases have followed this precedential case and subsequent cases have bolstered the support for the “crowded field argument”. In the most recent case of In re Simpson Industries, Inc., there were 13 uses and five third party registrations submitted in the record. In this case, the applicant was seeking to register RAINFOREST NUTRITION in standard characters for dietary and nutritional supplements. The Examining Attorney refused the applicant’s mark based on the registered mark RAINFOREST ANIMALZ, in standard characters for nutritional supplements. After the final refusal, the applicant appealed to the Board.
The goods were in part identical; therefore the Board presumed that the channels of trade and the classes of purchasers were the same for the applicant and the registrant. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011). The identity in part of the goods and the overlapping trade channels weighed heavily in favor of finding a likelihood of confusion. Moreover, since the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a 2(d) refusal. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Here, the marks are similar because they share the term RAINFOREST. However, because the applicant was able to prove that the shared term RAINFOREST was conceptually and commercially weak for nutritional supplements, the Board determined confusion was not likely.
The applicant demonstrated that the term RAINFOREST is widely used by third parties for both branding, and as a descriptive term for nutritional supplements, including foods and beverages. The applicant offered evidence to show that retail stores commonly used the term RAINFOREST to sell nutritional supplements, such as “Rainforest Pharmacy,” “Rainforest Nutritionals,” “Organic Rainforest Company” and “Rainforest Foods”. In addition, the applicant submitted evidence of certain teas that used the term RAINFOREST for branding, while advertising that the teas promote health benefits. The Board found this evidence probative since it considered teas to be related goods, even though the goods did not come in a pill or capsule form.