TTAB - Trademark Trial and Appeal Board - *1 APPROVED PHARMACEUTICAL CORP. v. P. LEINER NUTRITIONAL PRODUCTS, INC. Cancellation No. 16,173 September 25, 1987

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)





Cancellation No. 16,173

September 25, 1987


By the Board:



J.E. Rice, G.D. Krugman and R.F. Cissel






 A petition has been filed by Approved Pharmaceutical Corp. to cancel registration of the mark HEALTHY LIFE for vitamins and dietary food supplements [FN1] on the ground that respondent's mark so resembles petitioner's previously used mark HEALTH FOR LIFE for, inter alia, vitamin tablets and capsules and dietary food supplements as to be likely, when applied to respondent's goods, to cause confusion, mistake or to deceive. Petitioner further alleges that it applied to register its mark but was refused registration in view of the existence of respondent's registered mark; that petitioner then obtained from respondent a consent to use and registration but that registration was, nevertheless, again refused.



 Respondent, in its answer to the petition for cancellation, has admitted that its date of first use of the registered mark was March 28, 1983 and has admitted that it gave petitioner a consent to use and registration of petitioner's mark upon petitioner's representation that there was no likelihood of confusion.



 This case now comes up on respondent's motion for summary judgment and petitioner's cross motion for summary judgment. Both motions have been fully briefed by the parties.



 It is respondent's position, in support of its motion, that this cancellation proceeding was instituted solely as a result of the refusal to register petitioner's trademark; that prior to the commencement of this proceeding, petitioner requested that respondent consent to the use and registration of petitioner's mark based on petitioner's belief that no confusion was likely from the contemporaneous use of the respective marks; that respondent executed the consent to use and registration, confirming petitioner's belief that confusion was unlikely; that the Examining Attorney's continued refusal to withdraw the refusal of registration is improper, in view of the recent decision of the U.S. Court of Appeals for the Federal Circuit in Bongrain Int'l (American) Corp. v. Delice de France, Inc. 811 F.2d 1479, 1 USPQ 2d 1775 (Fed. Cir. 1987) and that while it is conceded that petitioner is entitled to registration of its mark, the preferable solution is to dismiss the petition for cancellation based on a finding of no likelihood of confusion and to instruct the Examining Attorney to withdraw the refusal of registration in connection with petitioner's pending application and allow petitioner's mark. [FN2]



 In support of respondent's motion, respondent has submitted a declaration of its vice president of marketing attesting to the present limitations of respondent's trade channels and classes of customers, and further attesting to the lack of any knowledge of instances of actual confusion. The declaration also sets out the circumstances resulting in respondent's execution of two agreements consenting to use and registration of petitioner's mark. Copies of the agreements have been submitted.



  *2 Petitioner, in opposition to respondent's motion for summary judgment and in support of its own cross motion for summary judgment, asserts that it has continuously used the HEALTH FOR LIFE trademark in connection with vitamins, dietary food supplements and the like since mid-1981, a date prior to the date of first use alleged in respondent's registration; that this proceeding was commenced in view of petitioner's priority of use in its mark and the continued refusal of the Office to allow petitioner's mark based on the existence of respondent's registration and that since petitioner is the prior user, if it is determined that there is likelihood of confusion from the contemporaneous use of the marks, petitioner is entitled to summary judgment and to have respondent's registration cancelled and its own mark registered. Petitioner further asserts that if respondent's motion for summary judgment is granted, petitioner's ex parte appeal, in connection with its finally refused application, must be sustained as a matter of law and the refusal of registration reversed.



 Petitioner has supported its position with an affidavit of its counsel, an affidavit of its president as well as a number of supporting documentary exhibits verifying its use of its mark since 1981.



 We agree with the parties that there do not appear to be any genuine issues of material fact in dispute sufficient to warrant going to trial in this case. Petitioner's prior use of its mark HEALTH FOR LIFE for, inter alia, vitamins and dietary supplements has been established prima facie and has not been disputed by respondent. The ultimate question of likelihood of confusion under Section 2(d) is one of law. See Bongrain, supra. We believe, after reviewing the respective marks, goods and all of the agreements and evidentiary material of record herein, that confusion as to source or sponsorship arising from the contemporaneous use of the marks, while possible, is not likely. While it appears that respondent presently markets its vitamins and dietary supplements as a private label product line to one supermarket chain with retail outlets located in the southeastern United States, respondent's registration is not so limited and, for purposes of making the Section 2(d) determination in a proceeding such a this, we must treat the respective goods as identical. See: Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ 2d 1813 (Fed. Cir. 1987). However, notwithstanding the identity of the goods, taking the situation as a whole, based on the 'duPont' factors set forth in the case of In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), we conclude that confusion is unlikely in this case. We note that while the respective marks are somewhat similar in appearance, we think HEALTHY LIFE and HEALTH FOR LIFE do not have the same meaning or connotation and engender different commercial impressions. Moreover, we note the suggestive character of the words 'health,' 'healthy' and 'life' in the vitamin and dietary food supplement field. We also accord substantial weight to the views of the parties as set forth in the record in connection with the consent by respondent to use and registration of petitioner's mark and the subsequent agreement entered into by both parties. These agreements set forth the reasons for the parties' belief that no likelihood of confusion exists herein and they represent the views of parties in the marketplace in a better position to know the real life situation relating to likelihood of confusion. See: In re Leonard S.A., 2 USPQ 2d 1800 (TTAB 1987) citing Bongrain, supra, and In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985).



  *3 We should note that we do not believe that the decision in Bongrain requires us automatically to find no likelihood of confusion where a petition to cancel is filed by a prior user solely to cancel a registered mark which is the basis of a refusal to register the petitioner's mark and where the parties agree that no confusion is likely. To extend the logic of that rationale would, in effect, strip the Board of its responsibility to determine the question of likelihood of confusion based on analyzing all relevant factors. We can easily envision situations where likelihood of confusion would be found based on weighing the various relevant factors, notwithstanding the parties' belief to the contrary. However, in the present case, taking the relevant factors into consideration, including the differences in the marks and the agreement entered into by the parties, we conclude that likelihood of confusion does not exist herein.



 Accordingly, respondent's motion for summary judgment is granted; petitioner's cross motion for summary judgment is denied and the petition for cancellation is dismissed. Petitioner should promptly file a paper in connection with its pending appeal regarding its application requesting that action on said appeal be resumed and that appropriate steps be taken to terminate said appeal in view of the holding in this cancellation proceeding.



J. E. Rice



G. D. Krugman



R. F. Cissel



Members, Trademark Trial and Appeal Board



FN1. Registration No. 1,310,734 issued December 25, 1984.



FN2. Petitioner has appealed from the final refusal of registration of its mark (application Serial No. 511,674). Action on the appeal has been suspended pending disposition of this proceeding.


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