A recent trademark opposition decision shows that protecting your nutritional supplement trademark is good for overall brand health.

In Tom Miles v. Five Star Gourmet Foods, Inc.,  the Applicant (Five Star) sought to register the mark ENERGY2GO for fresh and packaged meals and snacks consisting primarily of vegetables, fruits, meats, cheese, and grains in International Classes 29 and 30.   The Opposer, Tom Miles, filed a notice of opposition based on its prior registrations of the marks NRG2GO and ENERGY 2 BURN for dietary and nutritional supplements for endurance sports, and nutritional supplements in the form of foods powder in International Class 5.   The grounds for the opposition was a likelihood of confusion pursuant to Section 2(d) of the Trademark Act.   In analyzing whether a likelihood of confusion exists, the Board focused on a comparison between the Opposer’s NRG2GO registration and the Applicant’s ENERGY2GO Mark, since the NRG2GO Mark is closest to Applicant’s Mark.

In ruling for the Opposer, the Board made the following observations and findings:

  1.   Key considerations.  In analyzing the thirteen likelihood of confusion factors, the Board invoked the well-known rule that two key factors are the similarity of the marks and similarity of the goods or services.  In many cases, these factors alone may be ultimately persuasive.  The Board nonetheless analyzed those factors for which there was submitted evidence.
  2.   Strength of Opposer’s Mark.  The fifth likelihood of confusion factor (strength of Opposer’s Mark) was discussed.  A trademark’s strength is based on the inherent strength of the mark itself and its marketplace recognition.  Inherent strength is viewed on a continuum, from fanciful marks to generic marks.  Marketplace strength is based on evidence of sales,  marketing expenditures, and other indicia of consumer recognition that the public recognizes a mark as denoting a single source.   Here, the Board found that Opposer’s NRG2GO Mark when used in connection with dietary and nutritional supplements was suggestive.  This means that it was considered to be relatively inherently strong.  With regard to the commercial strength of Opposer’s Mark, Opposer introduced evidence of average yearly sales of $3,600.00.  Opposer did not introduce any evidence of its advertising or marketing expenditures.  The Applicant introduced seven copies of website pages showing use of “energy to go” variants for nutritional supplements.  Given the relatively small amount of sales (and no evidence of marketing expenditures), the Board concluded that the Opposer’s Mark was commercially weak.
  3.   Similarity of Marks and Goods.   The Board observed that consumers familiar with Opposer’s NRG2GO supplements may mistakenly believe that Applicant’s prepared meals or snacks under the Applicant’s ENERGY2GO Mark was a new line of Opposer’s products.   The Marks were also viewed to look and sound similar to each other, while conveying the same commercial impression.  With regard to the similarity of the goods, the Opposer introduced numerous third-party registrations that included  goods in International Class 5 (Opposer’s class for its NRG2GO goods) and Classes 29 and 30 (Applicant’s class for its ENERGY2GO goods).  Third-party registrations that cover a number of different goods suggest that the goods emanate from a single source.  That being said, the international classification of goods alone has no bearing on a likelihood of confusion.   The key consideration is whether the goods are the same or related.  Based on the evidence presented, the Board opined that dietary and nutritional supplements and food products may come from the same source.
  4.  Trade channels.  Here, the parties’ description of goods had no limitations or restrictions regarding their channels of trade and classes of consumers.  Accordingly, as a matter of law, there is a presumption that the goods move in all channels of trade that would be normal for such goods.  Moreover, it is presumed that they would be purchased by all potential consumers.
  5.  Length of coexistence.   This  likelihood of confusion factor looks at actual marketplace conditions.  Generally, if there is evidence of record, and coexistence between the subject marks has been for a great length of time without any actual confusion, it could be probative.   Here, the Board found that there was insufficient evidence of record and therefore treated this factor as neutral.

Ruling.  The Board sustain the opposition and the refusal to register Applicant’s Mark.  This was based primarily on the finding that the NRG2GO and ENERGY2GO marks were highly similar and the relatedness of the goods.

Editor’s Note.    A nutritional supplement trademark for seemingly unrelated products (nutritional supplements and prepackaged foods) can nonetheless be related for likelihood of confusion purposes.  Here, since the nutritional supplements were in the form of foods powder and the Applicant’s Mark was for prepared foods, this fact seemed to be controlling.