Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1226979
`
`Filing date:
`
`08/05/2022
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal -
`Serial No.
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`90389844
`
`Appellant
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`Better Life Nutritional Supplements, LLC
`
`Applied for mark
`
`WAKE-UP CALL
`
`Correspondence
`address
`
`Submission
`
`Attachments
`
`Appealed class
`
`DAVID L. OPPENHUIZEN
`OPPENHUIZEN LAW PLC
`5960 TAHOE DR SE
`STE 105
`GRAND RAPIDS, MI 49546
`UNITED STATES
`Primary email: docket@oppenhuizen.com
`616-242-9550
`
`Appeal brief
`
`Appeal Brief.pdf(215375 bytes )
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`Class 005.
`All goods and services in the class are appealed, namely: Dietary supplements;
`Nutritional supplements
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`David L. Oppenhuizen
`
`david@oppenhuizen.com
`
`/David L. Oppenhuizen/
`
`08/05/2022
`
`

`

`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal of:
`
`App. Ser. No.:
`
`90389844
`
`Mark:
`
`Applicant:
`
`
`
`
`
`WAKE-UP CALL
`
`Better Life Nutritional Supplements, LLC
`
`Examining Atty:
`
`Troy Knight
`
`File Reg.:
`
`
`
`BRO-101-T
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`
`
`
`
`
`
`
`
`BRIEF ON APPEAL
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`

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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .......................................................................................................... 2
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`INTRODUCTION .......................................................................................................................... 4
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`ARGUMENT .................................................................................................................................. 4
`
`1. Third Party Trademark Registrations................................................................................... 9
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`2. Third Party Trademark Usage ............................................................................................ 11
`
`CONCLUSION ............................................................................................................................. 15
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`1
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`

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`TABLE OF AUTHORITIES
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`CASES
`
`Alliance Mfg. Co. v. Allied Tel. Co., 182 U.S.P.Q. 237 (T.T.A.B. 1974) ....................................... 7
`
`Allstate Ins. Co. v. Allstate Inv. Corp., 328 F.2d 608, 141 U.S.P.Q. 280 (5th Cir. 1964) ............... 5
`
`Am. Optical Corp. v. Am. Olean Tile Co., 185 U.S.P.Q. 405 (S.D.N.Y. 1974) ............................. 5
`
`Beneficial Corp. v. Beneficial Capital Corp., 529 F. Supp. 445, 213 U.S.P.Q. 1091 (S.D.N.Y.
`1982) ............................................................................................................................................ 5
`
`Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002) .............. 8
`
`Cal. Fruit Growers Exch. v. Sunkist Baking Co., 166 F.2d 971, 76 U.S.P.Q. 85 (7th Cir. 1947) .. 7
`
`Consumers Petroleum Co. v. Consumers Co. of Ill., 169 F.2d 153, 78 U.S.P.Q. 227 (7th Cir.
`1948) ............................................................................................................................................ 6
`
`Cooper Indus., Inc. v. Repcoparts USA, Inc., 218 U.S.P.Q. 81, 84 (T.T.A.B. 1983) ..................... 8
`
`Exquisite Form Indus., Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183 U.S.P.Q. 666
`(S.D.N.Y. 1974) ........................................................................................................................... 6
`
`Fed. Tel. & Radio Corp. v. Fed. Television Corp., 180 F.2d 250, 84 U.S.P.Q. 394 (2d Cir. 1950)
` ..................................................................................................................................................... 6
`
`H. Lubovsky, Inc. v. Esprit de Corp., 627 F. Supp. 483, 228 U.S.P.Q. 814 (S.D.N.Y. 1986) ........ 6
`
`In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) ...................................................... 7
`
`In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) .......... 4
`
`In re St. Helena Hosp., 113 U.S.P.Q.2d 1082 (Fed. Cir. 2014) ...................................................... 9
`
`In re Thor Tech, Inc., 113 U.S.P.Q.2d 1546, 1549 (T.T.A.B. 2015) ............................................ 10
`
`In re White Rock Distilleries Inc.,92 USPQ2d 1282, 1285 (TTAB 2009) ..................................... 9
`
`Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 U.S.P.Q. 105 (C.C.P.A.
`1956) ............................................................................................................................................ 6
`
`Kingsford Prods. Co. v. Kingsfords, Inc., 715 F. Supp. 1013, 11 U.S.P.Q.2d 1350 (D. Kan. 1989)
` ..................................................................................................................................................... 6
`
`Lever Bros. Co. v. Am. Bakeries Co., 693 F.2d 251, 216 U.S.P.Q. 177 (2d Cir. 1982) ................. 5
`
`McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. 81 (2d Cir. 1979) ........... 6
`
`Modular Cinemas of Am., Inc. v. Mini Cinemas Corp., 348 F. Supp. 578, 175 U.S.P.Q. 355
`(S.D.N.Y. 1972) ........................................................................................................................... 7
`
`Pabst Brewing Co. v. Decatur Brewing Co., 284 F. 110 (7th Cir. 1922) ....................................... 5
`
`Pep Boys-Manny, Moe & Jack v. Edwin F. Guth Co., 197 F.2d 527, 94 U.S.P.Q. 158 (C.C.P.A.
`1952) ............................................................................................................................................ 5
`
`
`
`2
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`

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`Riva Boats Int’l Spa v. Yamaha Motor Corp., 223 U.S.P.Q. 183 (C.D. Cal. 1983) ....................... 7
`Schenley Distillers, Inc. v. General Cigar Co., 427 F.2d 783, 166 U.S.P.Q. 142 (C.C.P.A. 1970) 7
`Scott v. Mego Int’l, Inc., 519 F. Supp. 1118, 213 U.S.P.Q. 824 (D. Minn. 1981) .......................... 7
`Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969, 86 U.S.P.Q. 240 (9th Cir. 1950) ........... 7
`
`Trustees of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733, 43
`U.S.P.Q.2d 2 1083 (S.D.N.Y. 1997) ........................................................................................... 5
`
`Vital Pharmaceuticals, Inc. v. Conrad J. Kronholm, Jr., 99 U.S.P.Q.2d 1708, (T.T.A.B. 2011) 13
`
`Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 209 U.S.P.Q. 969 (2d Cir. 1981) ........................... 5
`
`TREATISES
`
`J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §
`24:62 at 24-177 (4th ed. 2017) .................................................................................................... 4
`
`
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`
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`
`3
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`

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`INTRODUCTION
`
`This appeal is taken in response to the Final Office Action issued on November 1, 2021,
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`as well as the denial of the Request for Reconsideration which was issued on June 7, 2022. In this
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`appeal, there is only one issue that need be addressed. That issue is whether or not dietary and
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`nutritional supplements are sufficiently related to skin care products in the nature of non-medicated
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`skin serums in order to support a finding of a likelihood of confusion.
`
`The Examining Attorney has refused registration of the Applicant’s mark under Trademark
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`Act Section 2(d) on the assertion of a likelihood of confusion between Applicant’s mark WAKE-
`
`UP CALL (Serial No. 90389844) and U.S. Registration No. 4590051 for WAKE UP CALL. The
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`goods listed in the Applicant’s application are “dietary supplements” and “nutritional
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`supplements,” and the goods in the cited registration are “skin care products, namely, non-
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`medicated skin serum.” The Applicant respectfully disagrees and requests that the rejection be
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`overturned in light of the following arguments.
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`ARGUMENT
`
`The Examining Attorney utilized two of the factors under In re E. I. du Pont de Nemours
`
`& Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) in finding a likelihood of confusion,
`
`namely, a comparison of the marks, and a comparison of the goods and services.
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`It is well established that both the Trademark Trial and Appeal Board and federal courts
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`have held that even identical marks can coexist without confusion if they are used in connection
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`with dissimilar or non-competing goods or services. See generally J. Thomas McCarthy,
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`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 24:62 at 24-177 (4th ed.
`
`2017). The Board and other courts have permitted trademark use on the same or similar goods or
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`services, even though the marks, in some cases, were identical or nearly identical, and the goods
`
`
`
`4
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`

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`or services shared a related feature or complementary function, demonstrating that there is no per
`
`se rule that even identical marks result in a likelihood of confusion. See TMEP § 1207.01(a)(iv).
`
`The following cases make clear that similar or even identical marks for similar or related
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`goods or services can also be registered concurrently:
`
`• Allstate Ins. Co. v. Allstate Inv. Corp., 328 F.2d 608, 141 U.S.P.Q. 280 (5th Cir.
`
`1964) (allowing registrations for both ALLSTATE for insurance and ALLSTATE
`
`for mortgage brokerage services);
`
`• Am. Optical Corp. v. Am. Olean Tile Co., 185 U.S.P.Q. 405 (S.D.N.Y. 1974)
`
`(allowing registrations for both AO for floor coating and AO for ceramic tile);
`
`• Lever Bros. Co. v. Am. Bakeries Co., 693 F.2d 251, 216 U.S.P.Q. 177 (2d Cir. 1982)
`
`(allowing registrations for both AUTUMN for margarine and AUTUMN GRAIN
`
`for bread);
`
`• Beneficial Corp. v. Beneficial Capital Corp., 529 F. Supp. 445, 213 U.S.P.Q. 1091
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`(S.D.N.Y. 1982) (allowing registrations for both BENEFICIAL for consumer loans
`
`and BENEFICIAL CAPITAL for business loans);
`
`• Pabst Brewing Co. v. Decatur Brewing Co., 284 F. 110 (7th Cir. 1922) (allowing
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`registrations for both BLUE RIBBON for beer and BLUE RIBBON for malt
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`extract);
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`• Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 209 U.S.P.Q. 969 (2d Cir. 1981)
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`(allowing registrations for both BRAVO’S for crackers and BRAVOS for tortilla
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`chips);
`
`
`
`5
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`

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`• Pep Boys-Manny, Moe & Jack v. Edwin F. Guth Co., 197 F.2d 527, 94 U.S.P.Q.
`
`158 (C.C.P.A. 1952) (allowing registrations for both CADET for storage batteries
`
`and CADET for lighting fixtures);
`
`• Trustees of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733,
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`43 U.S.P.Q.2d 2 1083 (S.D.N.Y. 1997) (allowing registrations for both
`
`COLUMBIA for university services and COLUMBIA for health care services);
`
`• Consumers Petroleum Co. v. Consumers Co. of Ill., 169 F.2d 153, 78 U.S.P.Q. 227
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`(7th Cir. 1948) (allowing registrations for both CONSUMERS for fuel oil and
`
`CONSUMERS for coal and wood fuel);
`
`• McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 202 U.S.P.Q. 81 (2d Cir.
`
`1979) (allowing registrations for both DRIZZLER for men’s golf jackets and
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`DRIZZLE for women’s overcoats and rain coats);
`
`• H. Lubovsky, Inc. v. Esprit de Corp., 627 F. Supp. 483, 228 U.S.P.Q. 814 (S.D.N.Y.
`
`1986) (allowing registrations for both ESPRIT for women’s shoes and ESPRIT for
`
`women’s clothing);
`
`• Exquisite Form Indus., Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 183
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`U.S.P.Q. 666 (S.D.N.Y. 1974) (allowing registrations for both EXQUISITE for
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`ladies’ undergarments and EXQUISITE for fabrics);
`
`• Fed. Tel. & Radio Corp. v. Fed. Television Corp., 180 F.2d 250, 84 U.S.P.Q. 394
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`(2d Cir. 1950) (allowing registrations for both FEDERAL for radio supplies and
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`FEDERAL for television sets);
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`
`
`6
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`• Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 236 F.2d 423, 111 U.S.P.Q. 105
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`(C.C.P.A. 1956) (allowing registrations for both HURRICANE for outboard
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`motors and HURRICANE for auto engines);
`
`• Kingsford Prods. Co. v. Kingsfords, Inc., 715 F. Supp. 1013, 11 U.S.P.Q.2d 1350
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`(D. Kan. 1989) (allowing registrations for both KINGSFORD for charcoal
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`briquettes and KINGSFORD for barbecue sauce);
`
`• Alliance Mfg. Co. v. Allied Tel. Co., 182 U.S.P.Q. 237 (T.T.A.B. 1974) (allowing
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`registrations for both LOGO DEVICE for telephone services and LOGO DEVICE
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`for antenna rotators);
`
`• Scott v. Mego Int’l, Inc., 519 F. Supp. 1118, 213 U.S.P.Q. 824 (D. Minn. 1981)
`
`(allowing registrations for both MICRONAUTS for toys and MICRO NAUTS for
`
`hobby items);
`
`• Modular Cinemas of Am., Inc. v. Mini Cinemas Corp., 348 F. Supp. 578, 175
`
`U.S.P.Q. 355 (S.D.N.Y. 1972) (allowing registrations for both MINI CINEMA for
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`family movie theaters and MINI CINEMA for erotic movie theatre);
`
`• Schenley Distillers, Inc. v. General Cigar Co., 427 F.2d 783, 166 U.S.P.Q. 142
`
`(C.C.P.A. 1970) (allowing registrations for both OLE for tequila and OLE for
`
`cigars);
`
`•
`
`In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) (allowing
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`registrations for both PLAYERS for shoes and PLAYERS for men’s underwear);
`
`• Riva Boats Int’l Spa v. Yamaha Motor Corp., 223 U.S.P.Q. 183 (C.D. Cal. 1983)
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`(allowing registrations for both RIVA for luxury power boats and RIVA for motor
`
`scooters);
`
`
`
`7
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`• Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969, 86 U.S.P.Q. 240 (9th Cir.
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`1950) (allowing registrations for both SUNBEAM for electric appliances and
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`SUNBEAM for fluorescent lamps); and
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`• Cal. Fruit Growers Exch. v. Sunkist Baking Co., 166 F.2d 971, 76 U.S.P.Q. 85 (7th
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`Cir. 1947) (allowing registrations for both SUNKIST for fruits and SUNKIST for
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`bakery products).
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`In looking at whether goods or services are related to each other, wholesale generalities are
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`consistently rejected by the Board and the courts, based on the rule that no monopoly right exists
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`to a mark. Thus, the fact that products or services are sold in the same field or industry does not
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`itself provide a basis for regarding them as related. For example, one could say that golf clubs and
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`fishing rods are both sporting goods, or that sugar and pizza are both foods, though these broad
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`categories do not necessarily infer that such products are related for the purposes of a likelihood
`
`of confusion analysis. See Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 63 U.S.P.Q.2d 1303
`
`(Fed. Cir. 2002) (a broad general market category [electronic sound products] is not a generally
`
`reliable test of relatedness of products); Cooper Indus., Inc. v. Repcoparts USA, Inc., 218 U.S.P.Q.
`
`81, 84 (T.T.A.B. 1983) (the mere fact that the products involved in this case (or any products with
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`significant differences in character) are sold in the same industry does not of itself provide an
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`adequate basis to find the required relatedness).
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`The goods in question here are not generally recognized as being related. The cited
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`registration’s goods are “skin care products, namely, non-medicated skin serum” in Class 3.
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`Applicant’s goods are “dietary supplements; nutritional supplements” in Class 5. As a preliminary
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`matter, the parties’ respective goods are in different international classes which is prima facie
`
`evidence that the goods were not seen as related by the drafters of the identification manual. The
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`8
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`

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`cited registration’s goods pertain to skin serums which are topically applied to a user. Furthermore,
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`they are non-medicated, which presumably means that they have no medical benefit. Conversely,
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`Applicant’s goods are for dietary and nutritional supplements which are ingested by a user to
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`provide a nutritional or health benefit. As such, it would be thought that consumers would rarely
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`encounter both products while shopping for one or the other. Skin serums would likely be
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`purchased in a department store (such as at a beauty product counter) or in the skin product aisle
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`of a pharmacy. Conversely, Applicant’s goods would likely be located near vitamins or other
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`ingestible supplements in a pharmacy, or alternatively at supplement stores like GNC or The
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`Vitamin Shoppe.
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`When the relatedness of the goods and services is not evident, well known, or generally
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`recognized, something more than the mere fact that the goods and services are used or sold together
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`must be shown. In re St. Helena Hosp., 113 U.S.P.Q.2d 1082 (Fed. Cir. 2014) (finding that
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`substantial evidence did not support relatedness of hospital-based residential weight and lifestyle
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`program and printed materials dealing with physical activity and fitness). The examining attorney
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`must provide evidence showing that the goods and services are related to support a finding of
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`likelihood of confusion. TMEP § 1207.01(a)(vi); See, e.g., In re White Rock Distilleries Inc.,92
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`USPQ2d 1282, 1285 (TTAB 2009)
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`1. Third Party Trademark Registrations
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`In the present application the Examining Attorney has submitted as evidence forty third-
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`party trademark registrations which include both the relevant goods in Classes 3 and 5. The
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`Applicant notes that two of these registrations (both for the mark “ZAO”) have been cancelled
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`with respect to the goods in Class 3, and therefore the Examining Attorney has actually submitted
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`9
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`thirty-eight trademark registrations owned by third parties for the purpose of demonstrating that
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`nutritional and dietary supplements are related goods to skin serums.
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`In response, the Applicant has located 157 pairs of active use-based registrations for
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`identical or highly similar marks, in which those paired registrations are: (1) not commonly owned;
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`and (2) in which one registration lists dietary or nutritional supplements, and the other paired
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`registration lists skin serums or highly similar goods. Many of these paired registrations are for
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`identical marks, several of them are for stylized design marks which have identical literal terms,
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`and the remaining marks are paired terms which differ only by disclaimed portions of the mark.
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`These 314 trademark registrations strongly suggest that consumers are aware that the relevant
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`goods are offered by different companies under the same or similar marks. In re Thor Tech, Inc.,
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`113 U.S.P.Q.2d 1546, 1549 (T.T.A.B. 2015). These paired registrations are shown in the table in
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`Exhibit A to the Applicant’s Request for Reconsideration (document dated May 2, 2022 in the
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`application file in TSDR). In addition, copies of the individual USPTO records for these 314
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`registrations can be found on the record as Exhibit B to the Applicant’s Request for
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`Reconsideration (document dated May 2, 2022 in the application file in TSDR).1
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`Simply put, these 157 pairs of registrations submitted by the Applicant far outweigh the 38
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`registrations cited by the Examining Attorney, and that argument can only be established by
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`actually submitting the 314 registrations on the record. The registrations cited by the Examining
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`Attorney demonstrate only that there are some instances in which nutritional or dietary
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`supplements are marketed under the same mark as skin serums. However, the evidence submitted
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`
`
`1 The Applicant acknowledges that that Board discourages the submission of voluminous amounts of
`evidence. However, in this application the amount of evidence either supporting or refuting the rejection
`has become relevant since evidence exists supporting each position. That being said, it is the
`disproportionate amount of evidence supporting a reversal of the rejection that warrants the large
`evidentiary submission.
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`10
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`by the Applicant demonstrates that the USPTO actually has a long and consistent practice of not
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`finding dietary and nutritional supplements to be related or similar to skin serums. Furthermore,
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`a number of the registrations submitted by the Applicant were registered only within the last 6-12
`
`months (as of May 2, 2022), and therefore the refusal of registration in this application is not the
`
`result of a policy shift or some other decision made outside the control of the Examining Attorney.
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`Refusing registration on the assertion that dietary and nutritional supplements are related to skin
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`serums would be a significant departure from the USPTO’s customary treatment of these goods
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`under a likelihood of confusion analysis. Furthermore, a decision by the Trademark Trial and
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`Appeal Board that these goods are related would cast serious doubt on the validity of hundreds of
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`other trademark registrations, including but not limited to those 314 registrations of record in this
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`matter.
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`Due to the substantial number of identical or similar active registrations owned by different
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`parties representing Applicant’s services and Registrant’s services, Applicant contends that
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`potential customers will not presume an affiliation or association between these distinct goods.
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`All of the registrations listed coexist in the marketplace without any potential for confusion. As
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`such, there is no likelihood of confusion between Applicant’s mark and the cited registration based
`
`on the similarity of the goods.
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`2. Third Party Trademark Usage
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`Turning back to the rejection, the Examining Attorney additionally has submitted third
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`party evidence located from the Internet for the purpose of demonstrating common trademark
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`usage for both nutritional and dietary supplements, on one hand, and for skin serums, on the other
`
`hand. The specific marks located by the Examining Attorney showing the relevant goods being
`
`marketed under the same mark consist of “doTERRA,” “Kora,” “Now,” “Paula’s Choice,”
`
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`11
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`“Perricone MD,” “Swanson,” “Honest,” “Pacifica,” “Jane Iredale,” “Young Living,” “Herbalife
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`Nutrition,” “Murad,” and “Gundy.” The Applicant respectfully contends that these thirteen
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`instances located by the Examining Attorney are merely anecdotal in nature, and that the relatively
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`modest numbers of third-party trademark usage located by the Examining Attorney are insufficient
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`to demonstrate that the goods here are related.
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`Conversely, the Applicant has submitted its own evidence of 25 pairs of coexisting third
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`party trademark uses in which the same or highly similar mark is being used to market dietary or
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`nutritional supplements, by a first entity, and skin serums or highly similar skin care products, by
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`a second entity. These 25 pairs of trademarks can be found on the record as Exhibit C to the
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`Applicant’s Request for Reconsideration (document dated May 2, 2022 in the application file in
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`TSDR). Each webpage includes the URL from which the screenshot was obtained, as well as the
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`date that it was obtained. The 25 pairs of marks include:
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`1. HERO for supplements and HERO for skin serums;
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`2. EVOLVE for supplements and EVOLVE for skin serums;
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`3. ALPHA for supplements and ALPHA for skin serums;
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`4. TREE OF LIFE for supplements and TREE OF LIFE for skin serums;
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`5. CAMP BOOST for supplements and BOOST CAMP for skin serums;
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`6. STAMINA for supplements and STAMINA for skin serums;
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`7. REDEMPTION for supplements and REDEMPTION for skin serums;
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`8. BOOM! for supplements and BOOM! for skin serums;
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`9. SECRET SAUCE for supplements and SECRET SAUCE for skin serums;
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`10. SLEEP IT OFF for supplements and SLEEP IT OFF for retinol masks;
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`11. PHENOM for supplements and PHENOMEN OIL for moisturizer oil;
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`
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`12
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`12. NATURELY for supplements and NATURELY for skin serums;
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`13. KYOKU for supplements and KYOKU for skin serums;
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`14. MARTIAN for supplements and MARTIAN for gel toner;
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`15. PURE NATURALS for supplements and PURE NATURALS for face cream;
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`16. WORKMAN’S RELIEF for supplements and WORKMAN’S FRIEND for skin cream;
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`17. CB for supplements and CB for skin serums;
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`18. VN for supplements and VN for skin serums;
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`19. BLOOM for supplements and BLOOM for mud masks;
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`20. VITALITY for supplements and VITALITY for skin serums;
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`21. SWANSON for supplements and SARAH SWANSON SKINCARE for sunscreen
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`infused with essential oils;
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`22. PEAK EPA for supplements and PEAK SCENTS for skin serums;
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`23. SUNSHINE NATURALS for supplements and SUNSHINE BOTANICALS for skin
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`serums;
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`24. CLARK’S NUTRITION for supplements and CLARK’S BOTANICALS for skin
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`creams and vital oils; and
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`25. HARMONIC INNERPRIZES for supplements and SKIN HARMONICS for skin
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`serums.
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`The Examining Attorney’s Internet evidence of actual trademark use may arguably indicate
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`that some (although not many) companies market dietary and nutritional supplements under the
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`same mark as skin serums. However, the volume of Internet evidence submitted by the Applicant
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`outweighs that submitted by the Examining Attorney, and the evidence submitted by the Applicant
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`demonstrates that the consuming public routinely encounters these relevant goods being marketed
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`under the same or similar mark by different sources. Consumers are accustomed to this, and
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`therefore they would not likely be confused as to the source of the Applicant’s dietary and
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`nutritional supplements sold under the mark WAKE-UP CALL in light of the registered mark for
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`WAKE UP CALL for skin serums.
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`Lastly, the Trademark Trial and Appeal Board was previously asked in an opposition
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`proceeding to determine whether nutritional supplements are related to cosmetics and perfumes.
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`The Board previously held that there is no likelihood of confusion between REDLINE for
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`nutritional supplements and REDLINE for cosmetics and perfumes. Vital Pharmaceuticals, Inc.
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`v. Conrad J. Kronholm, Jr., 99 U.S.P.Q.2d 1708, (T.T.A.B. 2011) (“[T]here is no evidence that
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`nutritional supplements and cosmetics, perfumes and fragrances would be sold in the same
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`department or be situated near each other; nor is there evidence that the goods are complementary
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`or would otherwise be purchased together, such that consumers would encounter both types of
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`products in the course of a single shopping trip.”) Although the goods in Vital Pharmaceuticals
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`are not completely identical to those in the present application, there is a close similarity to this
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`case since skin serums and cosmetics, perfumes, and fragrances are both sold in similar settings
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`and are both topical beauty products applied to a user’s skin.
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`The Examining Attorney has previously critiqued the Applicant’s reliance on Vital
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`Pharmaceuticals, Inc., asserting that it does not create a per se rule that the pertinent goods are not
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`related. (See Denial of Request for Reconsideration, dated June 7, 2022) The Examining Attorney
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`is correct in this regard because the ultimate determination in Vital Pharmaceuticals, Inc. was
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`heavily impacted by the opposer’s failure to properly admit and rely upon evidence of record,
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`rather than the decision being made on the merits based on a complete evidentiary record.
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`However, Vital Pharmaceuticals, Inc. does raise the important point that a determination of a
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`likelihood of confusion should rely upon evidence showing that the goods are sold in the same
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`department, be situated near one another, that the goods are complementary or are otherwise
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`purchased together “such that consumers would encounter both types of products in the course of
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`a single shopping trip.” In this case, the Examining Attorney’s evidence fails to prove any of those
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`situations to be true. Instead, the Examining Attorney’s evidence only purports to show that some
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`retailers sell both skin serums and dietary and nutritional supplements under a single house mark.
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`That alone fails to prove that the goods are related. And as demonstrated above, the Applicant has
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`located substantial evidence demonstrating just the opposite – that consumers routinely view these
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`goods being marketed under the same or similar marks by different sources, and also that the U.S.
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`Patent and Trademark Office has a long and established practice of granting federal registrations
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`to the same or highly similar marks for these specific goods. To refuse registration based on the
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`alleged relatedness of these goods would represent a divergence from the USPTO’s long and
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`consistent handling of these paired goods.
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`CONCLUSION
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`Based on these arguments and the disproportionate amount of evidence supporting each
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`position, the Applicant’s mark is not likely to be confused with U.S. Registration No. 4590051 for
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`WAKE UP CALL. Therefore, the Applicant respectfully requests the Board overturn the
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`Examining Attorney’s refusal on this basis and allow Applicant’s application to proceed to
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`publication and registration.
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`Respectfully Submitted,
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`/David L. Oppenhuizen/
`David L. Oppenhuizen (MI 70219)
`Oppenhuizen Law PLC
`5960 Tahoe Dr. SE, Ste. 105
`Grand Rapids, Michigan 49546
`david@oppenhuizen.com
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