The Sunrider Corp.v.Mineral Works

Trademark Trial and Appeal Board

Aug 12, 2002

No. 91117420 (T.T.A.B. Aug. 12, 2002)

Hearing: Mailed: August 12, 2002
July 16, 2002 Paper No. 27
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
The Sunrider Corporation dba Sunrider International
v.
Mineral Works
_____
Opposition No. 117,420
against Application No. 75/380,221,
filed October 27, 1997
_____
Richard M. Johnson of Ladas & Parry for The Sunrider
Corporation dba Sunrider International.
David J. Haenel, P.C. for Mineral Works.
______
Before Simms, Hairston and Bottorff, Administrative
Trademark Judges:
Opinion by Simms:
The Sunrider Corporation dba Sunrider International
(opposer), a Utah corporation, has opposed the application
of Mineral Works (applicant), an Idaho limited liability
company, to register the mark VITALIZE for mineral-vitamin
THIS DISPOSITION IS NOT
CITABLE PRECEDENT OF
THE TTAB
Opposition No. 117,420
2
health supplements.1 Both parties have taken testimony and
submitted other evidence. The parties have filed briefs
and an oral argument was held.2
We sustain the opposition.
As grounds for opposition, opposer asserts that it has
sold nutritional products under the mark VITALITE since
1985; that it owns Registration No. 1,884,547, for this
mark for nutritional supplements in all forms, including
tablets, capsules, liquids and powders, food supplements,
dietary food supplements, herbs, herbal juices, teas,
protein used as a food additive, vegetable extracts and
dried and processed fruits and vegetables; that its mark
has achieved substantial and valuable goodwill and
recognition; that opposer has priority of use; and that
applicant’s mark VITALIZE so resembles opposer’s mark
VITALITE as to be likely to cause confusion, to cause
mistake or to deceive. In its answer applicant has denied
these allegations. Pursuant to stipulation approved by the

1 Application Serial No. 75/380,221, filed October 27, 1997, based upon
allegations of use since August 13, 1997.
2 Opposer submitted various exhibits including applicant’s discovery
responses with its trial brief. It appears that this material was
submitted in support of opposer’s evidentiary objections to applicant’s
record and not as a part of its trial record. We have considered this
material in this light--that is, only to show that applicant has
allegedly not fully answered opposer’s discovery requests.
Opposer has moved to strike applicant’s brief because, although it
was due March 14, 2002, it was not filed until March 15. Because
applicant’s brief was just one day late, we exercise our discretion and
accept applicant’s brief. Accordingly, opposer’s motion to strike is
denied.
Opposition No. 117,420
3
Board on August 3, 2001, the Board struck various
affirmative defenses set forth in applicant’s answer.
Evidentiary Objections
We deal first with opposer’s evidentiary objections
raised in its brief. On the basis of the following facts,
opposer asks us to exclude evidence of any facts withheld
by applicant during discovery, and to exclude any opinion
testimony of applicant’s witness because he was not
identified as an expert witness during discovery, as
required by Fed.R.Civ.P. 26(a)(2). Opposer’s
interrogatories Nos. 20-22 asked applicant to describe
“fully the factual basis on which Applicant relied in
asserting the affirmative defense” that there is no
likelihood of confusion.3 Applicant responded that it had
not determined the complete factual basis for this
“affirmative defense” and that, as additional facts become
available, applicant would supplement its response. A
supplemental response was provided, which merely referred
to other discovery responses. No third-party registrations
were identified by applicant as a reason or reasons for
applicant’s belief that there was no likelihood of
confusion.

3 While in its answer applicant has labeled its denial of likelihood of
confusion as an “affirmative defense,” strictly speaking we do not view
such a denial as an affirmative defense. Affirmative defenses include
such matters as estoppel, laches and acquiescence.
Opposition No. 117,420
4
It is applicant’s position that all evidence was
disclosed during discovery. In any event, applicant
maintains that a party need not, in advance of trial,
specify in detail all the evidence it intends to present or
to identify its witnesses (except expert witnesses).
One of the factors used in determining likelihood of
confusion is the number and nature of similar marks in use
on similar goods. See In re E.I. duPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). Opposer has
not cited any authority for the proposition that a
defendant must specifically plead that there is no
likelihood of confusion because of the issuance of third-
party registrations. Moreover, applicant is correct that,
under established Board precedent, a party is not obligated
to specify in advance of trial all of the evidence it
intends to present. See Charrette Corp. v. Bowater
Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989) and
TBMP §419(7). Finally, opposer’s president was not called
as an “expert witness” but only to testify concerning
applicant’s use of its mark. Any opinions expressed during
his testimony were not those of a trademark expert but only
those of the president of a manufacturer of nutritional
supplements. Accordingly, we overrule opposer’s objections
and have considered the third-party registrations which
Opposition No. 117,420
5
applicant submitted by notice of reliance, as well as the
testimony submitted by applicant.
Opposer’s Record
Opposer took the testimony of Dr. Oi-Lin Chen,
opposer’s president. She testified that opposer has been
using the mark VITALITE for weight management nutritional
supplements since 1985. Chen dep., 14. Opposer now sells
a variety of products including nutritional supplements,
vitamin supplements with minerals, herbal supplements,
herbal drinks and meal replacement products. For many of
these products, opposer uses the mark VITALITE as a house
mark with different product marks (for example, Fortune
Delight, Action Caps, Sunbars, etc.). Dr. Chen testified
that opposer owns pleaded Registration No. 1,884,547
(issued March 21, 1995, Sections 8 and 15 affidavit or
declaration accepted and acknowledged) for the mark
VITALITE.
Opposer sells its nutritional products to distributors
and directly to consumers. Dr. Chen testified that some of
opposer’s distributors are also herbal shop owners. Chen
dep., 50. Opposer currently has over 100,000 distributors
in this country.
Opposer promotes its goods by a variety of means
including distributor kits, catalogs for distributors as
Opposition No. 117,420
6
well as ultimate customers, brochures, monthly newsletters
and magazines to distributors and customers (about 10,000
per month), its Web site, and at periodic conventions of
distributors. Opposer’s sales in the year 2000 exceeded
$11 million, with total sales of over $60 million over the
last seven years. Chen dep., 72. (Opposer submitted no
evidence with respect to its advertising expenditures.)
Dr. Chen testified that opposer’s products are widely
distributed and that opposer’s mark is recognized
throughout the United States. Chen dep., 59.
Dr. Chen further stated that applicant’s nutritional
product is similar to some of opposer’s products, and that
applicant’s trade dress is also similar to opposer’s, both
depicting active and energetic people.
Applicant’s Record
Applicant’s president and director of marketing, Mr.
T. Darwin Porter, testified concerning applicant’s VITALIZE
liquid nutritional supplement. Sold in 32-ounce bottles,
this is a full-spectrum liquid nutritional product
containing 93 nutrients--15 vitamins, major minerals, 11
antioxidants and 70 trace minerals. Applicant also sells a
VITALIZE product in one-ounce packets, to be mixed with
water. Since 1999, applicant has sold VITALIZE G3
Opposition No. 117,420
7
nutritional supplements, similar to the original product
but with three additional herbal extracts.
While opposer’s products are sold through multi-level
or network marketing, applicant’s president testified that
applicant sells its products in health food stores in 13
states, by direct mail throughout the United States and
over the Internet.
Mr. Porter, while indicating that applicant’s trade
dress depicts adults who look young, vibrant and energetic,
stated that the size, weight and use or purpose of the
respective products are different, and expressed the
opinion that the trade dress of the respective products are
different.
Applicant has also relied upon various third-party
registrations of marks beginning with the prefix “VITA-”,
the most pertinent of which is Registration No. 1,214,642,
issued November 2, 1982 (renewed), for the mark VITALINE
for dietary supplements, and Registration No. 1,817,037,
issued January 18, 1994 (Sections 8 and 15 accepted and
acknowledged), for the mark VITALITE for frozen yogurt and
ice milk. Finally, Mr. Porter testified, at 88, that there
have been no instances of actual confusion.
Opposition No. 117,420
8
Arguments of the Parties
Opposer argues that it has proved priority (by
testimony and its registration). With respect to the issue
of likelihood of confusion, opposer argues that the
respective marks are similar in sound, appearance and
meaning, and that the goods in its registration and in
applicant’s application are identically described. In this
regard, we note that opposer relies exclusively on its
Class 5 goods (nutritional supplements, food supplements,
herbs, herbal juices and teas), and not its Class 29 goods.
Appeal brief, 5, 12, 13 and 14. Further, opposer notes
that there are no restrictions on channels of trade in its
registration or applicant’s application. Any registration
which applicant may obtain will not be limited, opposer
contends, with respect to channels of trade, and applicant
will be entitled to offer its goods bearing its mark in any
channel of trade, not just the one presently being used by
applicant (retail health food stores). Moreover, opposer
argues that its own goods have been sold in some “herbal
shops” as well.
Opposer also argues that the mark VITALITE has
achieved fame. Finally, opposer contends that the absence
of bad faith on the part of applicant does not diminish the
likelihood of confusion.
Opposition No. 117,420
9
While acknowledging that there is no issue with
respect to priority in this case (appeal brief, 1 and 14),
applicant maintains that the marks are different and that
the parties’ goods are different and travel in different
channels of trade. In particular, applicant argues that
the shared prefix “VITA-”, meaning “life,” is a weak
element and not sufficient to support a finding of
likelihood of confusion. Applicant notes the third-party
registrations of record, including that for the mark
VITALINE for dietary supplements and for VITALITE for
frozen yogurt and ice milk. Not surprisingly, applicant
focuses on the suffixes of the parties’ marks, arguing that
they look and sound differently. Applicant argues that
opposer’s mark VITALITE connotes lightness and possible
weight loss while its mark VITALIZE connotes action and
energy. Applicant also notes that opposer’s mark is
usually used as a house mark with other product marks.
Concerning the goods, applicant maintains that they
are specifically different food supplements with different
compositions, opposer’s product being an herb-based dietary
food supplement focused on weight management while
applicant’s goods are a liquid nutritional vitamin and
energy supplement. Further, applicant points to opposer’s
multi-level marketing while applicant sells its goods in
Opposition No. 117,420
10
retail stores in 13 states and otherwise through direct
retail mail companies and the Internet.
While applicant concedes (brief, 14) that opposer’s
mark may be famous “within the societal subculture of
network marketing,” applicant insists that the record does
not establish fame beyond that specific marketing channel.
Finally, applicant notes the evidence with respect to the
lack of actual confusion as well as the fact that there is
no evidence of any bad faith on applicant’s part.
Opinion and Decision
First, opposer’s testimony and evidence clearly
establish its prior use. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Further, applicant has admitted opposer’s
priority.
Turning to the issue of likelihood of confusion, the
determination under Section 2(d) is based on an analysis of
all of the probative facts in evidence that are relevant to
the likelihood-of-confusion factors set forth in duPont,
supra. In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Opposition No. 117,420
11
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976). See also In re Azteca Restaurant Enterprises, Inc.,
50 USPQ2d 1209 (TTAB 1999) and cases cited therein.
Considering first the marks, the test is not whether
they can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
We consider the marks’ sound, appearance and meaning.
Both marks, while not identical in sound, are pronounced in
a similar manner, with the same prefix and a long “i” sound
in last syllable. Except for the next to last letter in
both marks, they are identical in appearance. In
connotation or meaning, the marks do have differences in
meaning, opposer’s mark ending in a suffix suggesting
lightness or possibly fewer calories, while applicant’s
mark is a word suggesting vitality or vigor.
Furthermore, while opposer often uses the mark
VITALITE with other product marks, opposer nevertheless
Opposition No. 117,420
12
owns a registration of the mark VITALITE per se, and this
is the mark which we must compare to the mark applicant
seeks to register. On balance, therefore, the similarities
of the marks place this factor on the side of opposer.
See, for example, Floralife, Inc. v. Floraline
International, Inc., 225 USPQ 683 (TTAB 1984)(likelihood of
confusion found between FLORALIFE and FLORALINE).
Although we cannot agree with opposer that its mark
has achieved the status of a famous mark in the field of
nutritional supplements, we believe that the long use
(nearly 17 years) and substantial sales of its products
(over $60 million) has resulted in substantial recognition
by at least some of the relevant consuming public.
Turning to the goods of the parties, it has been
repeatedly held that, in determining the registrability of
a mark, this Board is constrained to compare the goods
and/or services as identified in the application with the
goods and/or services as identified in the registration.
See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997); Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); and Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). In this regard, we note that
Opposition No. 117,420
13
opposer’s nutritional and dietary food supplements are, in
essence, identical to applicant’s mineral-vitamin health
supplements. Also, there is no restriction in the channels
of trade or classes of purchasers of the parties’ Class 5
nutritional supplements.4 We must assume, therefore, that
those goods can and do travel in the same channels of trade
to the same classes of purchasers. We conclude that
opposer’s nutritional supplements in all forms are
substantially identical to applicant’s vitamin and mineral
health supplements. This factor, too, is in opposer’s
favor.
A further factor in opposer’s favor is the fact that
these nutritional supplements are relatively inexpensive.
These goods may be purchased without a great deal of care
in the purchasing decision.
While we have considered the third-party registrations
made of record by applicant, there is only one which is
similar to that of the parties (VITALINE for dietary
supplements), but there is no evidence of record concerning
the use of that mark or any recognition by the relevant
class of purchasers. Third-party registrations are not
evidence that the marks therein are in use in commerce or

4 We do note that, with respect to opposer’s Class 29 products (protein
used as a food additive, vegetable extracts, dried and processed fruits
and vegetables), the registration indicates that these goods are sold
directly to consumers and not through retail outlets.
Opposition No. 117,420
14
that the public is familiar with them. See Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed.
Cir. 1992).
The fact that there have been no instances of actual
confusion may be explained by the fact that the current
channels of trade are largely different (multi-level
marketing through distributors vs. retail health food
stores). This factor is of little weight in view of the
manner in which we must analyze the issue of likelihood of
confusion (the descriptions of goods in the registration
and application, which lack any restriction as to channels
of trade of the relevant goods).
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997).
Decision: The opposition is sustained and
registration to applicant is refused.