Ultimate Nutrition, Inc. v. Wacker Chemie AG

• Decision Date: 29 June 2020
• Docket Number: Opposition 91252073
• Court: Trademark Trial and Appeal Board
• Parties: Ultimate Nutrition, Inc. v. Wacker Chemie AG

Ultimate Nutrition, Inc. v. Wacker Chemie AG

Opposition No. 91252073

United States Patent and Trademark Office, Trademark Trial and Appeal Board

June 29, 2020

THIS ORDER IS NOT A PRECEDENT OF THE TTAB

Before Bergsman, Lynch, and Coggins, Administrative Trademark Judges.

By the Board:

This case comes before the Board for consideration of Opposer's motion for summary judgment on its sole claim of likelihood of confusion. The motion is contested.

I. Background

Applicant seeks registration of the standard character mark FERMOPURE for the following goods:

- Chemicals and biochemical substances for use in industry science and photography, as well as in agriculture horticulture and forestry except fungicides, herbicides insecticides and parasiticides; amino acids and amino acid derivatives for use in industry and science; amino acids and amino acid derivatives for manufacturing foodstuffs beverages, flavourings, foodstuffs for animals, cosmetics, medicines, nutraceuticals and nutrient media; peptides for use in industry and science; proteins for use in industry and science; chemical and biochemical reagents for protein folding; chemical and biochemical reagents for manufacturing insulin; chemicals and biochemical substances for use as pharmaceutical excipients; cysteine and cysteine derivatives for use in industry and science; cystine and cystine derivatives for use in industry and science; oligosaccharides and polysaccharides for use in industry and science; cyclodextrins and cyclodextrin derivatives for use in industry and science; antioxidants for manufacturing foodstuffs, beverages, flavourings, foodstuffs for animals, cosmetics, medicines, nutraceuticals and nutrient media; chemicals and biochemical substances for manufacturing anti-ageing products; preparations for stimulating cooking for industrial purposes; dough conditioners; dough stabilisers; with the exception of dietary supplements (Int'l Class 1);

- Non-medicated cosmetics and toiletry preparations; hair care preparations; hair straightening preparations; hair waving preparations; cosmetic creams, cosmetic lotions, cosmetic emulsions and cosmetic dispersions for tanning, sun protection, skin regeneration, skin lightening, protection against ageing and replenishment of skin lipids; cosmetic skin care preparations; cosmetic skin care preparations for delaying the skin ageing process (Int'l Class 3);

- Pharmaceuticals for the treatment of obstructive airway diseases, cirrhosis or for cancer prevention or for maintenance of redox homeostasis in cells or for hair and skin care; medical preparations for the treatment of obstructive airway diseases, cirrhosis or for cancer prevention or for maintenance of redox homeostasis in cells or for hair and skin care; veterinary preparations for the treatment of obstructive airway diseases, cirrhosis or for cancer prevention or for maintenance of redox homeostasis in cells or for hair and skin care; dietetic food and substances adapted for medical or veterinary use; food for babies; powdered milk for babies; medicated cosmetics; medicated creams for maintenance of redox homeostasis in cells or for hair and skin care; amino acids for medical or veterinary purposes; synthetic peptides for pharmaceutical purposes; pharmaceutical preparations for treating coughs; dietetic beverages adapted for medical use; dietetic foods adapted for medical use; medicated animal feed; medicated beverages; nutraceuticals for therapeutic or medical purposes; cyclodextrins and cyclodextrin derivatives for medical or veterinary purposes; antioxidants for medical, veterinary and dietetic purposes; cysteine and cysteine derivatives for medical, veterinary and dietetic purposes; cystine and cystine derivatives for medical, veterinary and dietetic purposes; with the exception of dietary supplements (Int'l Class 5).^[1]

Opposer filed a notice of opposition on the ground of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Opposer pleaded ownership of Registration No. 2818237, issued February 24, 2004, for the standard character mark FERMAPURE for "nutritional products, namely dietary supplements" in International Class 5.^[2] In its answer, Applicant denied the salient allegations in the notice of opposition.^[3]

II. Summary Judgment Standard

Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes of material fact and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). A party moving for summary judgment has the burden of demonstrating there is no genuine dispute of material fact remaining for trial and it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). The evidentiary record and all reasonable inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 U.S.P.Q.2d 1542, 1544 (Fed. Cir. 1992).

When a movant sufficiently demonstrates that there is no genuine dispute of material fact, and that it is entitled to judgment as a matter of law, the burden shifts to the non-movant to demonstrate the existence of specific genuinely disputed facts that must be resolved at trial. Freki Corp. N.V. v. Pinnacle Entm't, Inc., 126 U.S.P.Q.2d 1697, 1700 (TTAB 2018); Enbridge, Inc. v. Excelerate Energy L.P., 92 U.S.P.Q.2d 1537, 1540 (TTAB 2009). The non-movant may not rest on the mere allegations in its pleadings and arguments by its counsel, but must designate specific portions of the record or produce additional evidence showing the existence of a genuine dispute as to a material fact for trial. See Fed. R. Civ. P. 56(c); Celotex, 477 U.S. at 324; Freki Corp., 126 U.S.P.Q.2d at 1700. A dispute as to a material fact is genuine only if a reasonable fact finder viewing the entire record could resolve the disputed matter in favor of the non-movant. Olde Tyme Foods, 22 U.S.P.Q.2d at 1544; Venture Out Props. LLC v Wynn Resorts Holdings, LLC, 81 U.S.P.Q.2d 1887, 1890-91 (TTAB 2007).

III. Evidence of Record

In support of its motion, Opposer submitted the following evidence through the declaration of its attorney, William C. Wright:

- printouts from the electronic database records of the Office showing the current status and title of its pleaded Registration No. 2818237;^[4]

- a printout from the website fda.gov entitled "FDA 101: Dietary Supplements;"^[5]

- printouts from the electronic database records of the Office for 45 third-party registrations that identify "dietary supplements" and include goods in both International Classes 1 and 5;^[6]

- printouts from the electronic database records of the Office for 50 third-party registrations that identify "dietary supplements" and include goods in both International Classes 3 and 5;^[7] and

- printouts from the electronic database records of the Office for 11 uninvolved registrations owned by Applicant that include goods in International Classes 1, 3, and 5.^[8]

With its brief in opposition to the motion, Applicant submitted the following evidence:

- printouts from Applicant's website showing use of Applicant's mark;^[9]

- printouts from Opposer's website showing use of Opposer's mark;^[10]

- a printout from the website Dictionary.com defining the term "dietetic;"^[11]and

- a printout from the website Wikipedia.org referring to "diet food" as "dietetic food."^[12]

IV. Analysis

To prevail on summary judgment, Opposer must establish that there is no genuine dispute that (1) it has standing to maintain this proceeding; (2) it owns a registration for, or is the prior user of, its pleaded mark; and (3) the contemporaneous use of the parties' respective marks on their respective goods would be likely to cause confusion, or cause mistake, or deceive consumers. See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60 U.S.P.Q.2d 1733, 1735 (TTAB 2001).

A. Standing and Priority

Standing is a threshold element that must be proven by the plaintiff in every inter partes case. Empresa Cubana Del Tabaco v. Gen. Cigar Co., Inc., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014); see Trademark Rule 2.104(a), 37 C.F.R. § 2.104(a). Opposer may establish its standing by properly making of record its pleaded registration, if it is the basis for a Section 2(d) claim that is not wholly without merit. Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185, 189 (CCPA 1982); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 U.S.P.Q.2d 1713, 1727-28 (Fed. Cir. 2012). In addition, where Opposer's pleaded registration is of record, and Applicant has not brought a counterclaim, priority is not at issue as to the mark and goods covered by Opposer's registration. King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108, 110 (CCPA 1974); L'Oreal S.A. v. Marcon, 102 U.S.P.Q.2d 1434, 1436 n.7 (TTAB 2012).

Opposer properly made of record its pleaded Registration No. 2818237 by submitting electronic database records of the Office showing the current status and title of that registration.^[13] See Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). Accordingly, there is no genuine dispute of material fact regarding Opposer's standing or priority.

B. Likelihood of Confusion

Likelihood of confusion depends on an analysis of all of the probative facts in evidence that are relevant to the thirteen factors set forth in In re E. I. DuPont de Nemours and Co. 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973) (the "DuPont factors").^[14] See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 U.S.P.Q.2d 1689, 1691 (Fed. Cir. 2005). In any likelihood of confusion...