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The 6th Du Pont Factor Causes TTAB To Reverse A 2(d) Refusal

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the importance of du Pont factor number six; see In re Simpson Industries, Inc., Serial No. 87635385 (October 7, 2019) [not precedential].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.

The record showed that plants, chemicals and other materials derived from rainforests have medicinal benefits. There was an article discussing the fact that many medications include ingredients derived from the rainforest. Other articles emphasized that for hundreds of years, indigenous groups have exploited the materials contained in the rainforest to meet their health needs. This type of evidence demonstrates that consumers are aware of the suggestive or descriptive nature of the term RAINFOREST in relationship to health products.

In addition to market place use evidence, the applicant introduced use based registrations for dietary and nutritional supplements and food and beverage products. The Board followed the reasoning of  the court in Juice Generation, Inc. v. GS Enterprises LLC, stating that the third party registrations show that there is an understood and well recognized descriptive or suggestive meaning, leading to the conclusion that the term RAINFOREST for nutritional supplements is relatively weak. In other words, a sufficient amount of probative third party evidence shows that consumers have been educated to distinguish between minor differences in marks that share a common dominant element. The weaker a mark, the closer another similar mark can come without causing likelihood of confusion.

The use of RAINFOREST in a descriptive manner in connection with nutritional supplements is evidence that the mark is conceptually weak. The third party use and the third party registrations for RAINFOREST marks for nutritional supplements also shows the mark to be commercially weak. It should also be noted that similar to the CAFC’s comments made in Juice Generation, Inc. v. GS Enterprises LLC, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential], the Board in this case underscored the fact that the registrant in a prior prosecution acknowledged the shared dominant element of the mark RAINFOREST was weak for the identified goods. The CAFC has determined that statements made during a trademark prosecution are significant as “facts illuminative of shade and tone in the total picture confronting the decision maker” Id.

In the end, the Board adopted the reasoning of the Court in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015), which held that “[I]t seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks”. The Board reversed the refusal to register RAINFOREST NUTRITION stating “given the weakness of the term RAINFOREST, the marks are unlikely to be confused.” If you have questions concerning the strength of your trademark, please feel free to contact the firm for a courtesy consultation.