Swiss Tech Biolabs, Inc.

This Opinion is not a
Precedent of the TTAB

Mailed: March 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Swiss Tech Biolabs, Inc.
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Serial No. 87332368

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Jay Stein of Stein & Associates
for Swiss Tech Biolabs, Inc.

Thomas Young, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.

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Before Zervas, Shaw and Kuczma,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Swiss Tech Biolabs, Inc. (“Applicant”) seeks registration on the Principal Register

of the standard character mark NEWMERA for “Dietary supplements for the

alleviation of edema and pain” in International Class 5.1

1Application Serial No. 87332368, filed on February 10, 2017 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting first use on March 26, 2013 and first use in
commerce on March 1, 2014.
Serial No. 87332368

The Examining Attorney refused registration pursuant to Section 2(d) of the

Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied

to Applicant’s goods, is likely to cause confusion with the previously registered mark

for goods and services including the following International

Class 5 goods:

Pharmaceutical products for the treatment of ophthalmic disorders,
respiratory disorders, dermatological disorders, ophthalmologic and
inflammatory disorders; Medical products, namely, pharmaceutical
preparations for use in the treatment of ophthalmic disorders,
respiratory disorders and inflammatory disorders; Sanitary products for
medical purposes, namely, sanitary preparations for medical use;
Dietetic substances for medical use, namely, meal replacement bars and
meal replacement drink mixes.2

After the Examining Attorney made the refusal final, Applicant appealed and

requested reconsideration. On remand from the Board, the Examining Attorney

denied the request for reconsideration. The appeal resumed and both Applicant and

the Examining Attorney filed briefs. We affirm the refusal to register.

I. Likelihood of Confusion

Our determination under Section 2(d) of the Trademark Act is based on an

analysis of the probative facts in evidence that are relevant to the factors bearing on

a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);

2 Registration No. 4857255, registered November 24, 2015. The registration states that the
mark consists of the stylized wording “NEMERA,” in orange, the color orange is claimed as a
feature of the mark and “NEMERA” has no meaning in a foreign language.

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Serial No. 87332368

In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In

considering the evidence of record on these factors, we keep in mind that “[t]he

fundamental inquiry mandated by Section 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. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29

(CCPA 1976). “Not all of the [du Pont] factors are relevant to every case, and only

factors of significance to the particular mark need be considered.” Coach Servs., Inc.

v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012)

(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir

2010)).

A. The Marks

We first consider whether Applicant’s and registrant’s marks are similar when

viewed in their entireties in terms of appearance, sound, connotation and commercial

impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,

110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve

Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1689). The test under the

this du Pont factor is not whether the marks can be distinguished when subjected to

a side-by-side comparison, but rather whether the marks are sufficiently similar that

confusion as to the source of the goods under the respective marks is likely to result.

See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017);

Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. The focus is on

the recollection of the average purchaser, who normally retains a general rather than

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Serial No. 87332368

a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC,

118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089

(TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). The

average purchaser of both Applicant’s and registrant’s goods is a member of the

general public.

Applicant has simply added the letter “W” between the second and third letters of

registrant’s mark. Because the letter “W” lies within Applicant’s mark and it shares

all of the remaining lettering in the same order as in registrant’s mark, the marks

appear similar. Of course, the addition of the letter “W” makes the first syllable of

Applicant’s mark the English word, “new.” The term “new” only slightly changes the

appearance and sound of the marks and therefore does not distinguish them.3 The

additional letter “W” also does not provide any meaning to the mark considered as a

whole; both marks are arbitrary terms with no known meaning. Due to the arbitrary

nature of the marks and the similarity – almost identity – in lettering, the marks

have a similar commercial impression.

We do not agree with Applicant that the “marks have different meanings and

suggestive connotations.”4 Applicant relies on the webpage located at

http://www.nemera.net/about-us/new-identity, presumably registrant’s webpage,

3 The fact that Applicant’s mark is a standard character mark and registrant’s mark is
stylized is not of any importance; Applicant’s standard character mark is not limited to any
particular form of display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983), and could be presented, for example, in the same style, color and size of lettering
as registrant’s mark.
4 Applicant’s brief at 10, 11 TTABVUE 15.

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Serial No. 87332368

which states NEMERA is “from the Greek Emera, meaning day, renewal, fresh hope,

life” and “from and the Hebrew and Arabic Nemer, meaning leopard: swiftness,

efficiency, agility.”5 Applicant has not offered evidence that demonstrates recognition

by U.S. consumers of these derivations, Applicant has not identified or proven the

primary meaning of the term and the translation statement in the registration record

provides that that “NEMERA” has no meaning in a foreign language. Further, it has

not escaped our attention that the “Think Baby Names” webpage submitted by

Applicant states “Nemera is an uncommon given name for women” and “Nemera has

yet to be listed in the list thus far. (TOP BABY NAMES, 2016).”6 This reinforces the

arbitrary nature of registrant’s mark.

The du Pont factor regarding the similarity of the marks weighs in favor of finding

that confusion is likely.

B. The Goods, Trade Channels and Classes of Purchasers

It is well settled that goods and services need not be identical or even competitive

to support a finding of likelihood of confusion. Rather, it is sufficient that the goods

are related in some manner or that the circumstances surrounding their marketing

are such that they would be likely to be encountered by the same persons in situations

that would give rise, because of the marks used thereon, to a mistaken belief that

they originate from or are in some way associated with the same producer or that

there is an association between the producers of the goods or services. See In re

5 Id. at 10-11, 11 TTABVUE 15-16; Req. for Recon., TSDR 27.
6 Req. for Recon., TSDR 30.

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Serial No. 87332368

Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re Int’l Telephone & Telegraph

Corp., 197 USPQ 910 (TTAB 1978). We must compare the goods as described in the

application and the registration to determine if there is a likelihood of confusion.

Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815

(Fed. Cir. 1987).

The Examining Attorney argues that the Applicant’s and registrant’s goods are

related for two reasons.

First, the Examining Attorney maintains that “dietary supplements for the

alleviation of edema and pain” and medical products, namely, pharmaceutical

preparations for use in the treatment of inflammatory disorders “are competitive as

both intended for and will be marketed to the same class of consumers.”7 Edema and

pain are related to inflammatory disorders. The Merriam-Webster Dictionary defines

“edema” as an “abnormal infiltration and excess accumulation of serous fluid in

connective tissue or in a serous cavity.”8 “Edema” is addressed in webmd.com as “the

medical term for swelling. Body parts swell from injury or inflammation”;9 it explains,

“a large allergic reaction (such as from a bee sting) may cause edema on your entire

arm that can bring … pain” and “[t]o treat edema, you often must treat its underlying

7 13 TTABVUE 9.
8 https://www.merriam-webster.com/dictionary/edema. We take judicial notice of this
definition. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
9 November 5, 2017 Office Action, TSDR 20.

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Serial No. 87332368

cause.”10 Edema and inflammation are not one in the same; edema can be caused by

inflammation. The treatment of edema logically involves the treatment of the

inflammation underlying the edema and the treatment of pain.

Moving on, the record reflects several medications, including Advil, for treating

pain and inflammation. Advil is identified as effective for “minor pain of arthritis”

and “arthritis” is defined as “inflammation of joints due to infectious, metabolic, or

constitutional causes.”11 The record further reflects that certain pain and

inflammation medications such as Advil may be obtained without a prescription, and

are available at drug stores.12 See webpages from cvs.com13 and walgreens.com.14

Applicant’s goods are advertised as “A Natural Pill To Relieve Pain[,] A Safe

Alternative to Over-The-Counter Drugs” and promotional material states, “Most

Over-The-Counter Drug Pain Relief Pills May Lead to Stroke and Heart Attack.”15

Applicant’s goods hence are competitive with pharmaceutical preparations for use in

the treatment of inflammatory disorders, listed in registrant’s identification of goods.

10 November 5, 2017 Office Action, TSDR 23.
11https://www.merriam-webster.com/dictionary/arthritis. We also take judicial notice of this
definition.
12The identifications of goods contain no limitations so we assume that the channels include
all normal channels of trade. Morton-Norwich Prods, Inc. v. N. Siperstein, Inc., 222 USPQ
735, 736 (TTAB 1984) (“Since there is no limitation in applicant’s identification of goods, we
must presume that applicant’s paints move in all channels of trade that would be normal for
such goods, and that the goods would be purchased by all potential customers.”).
13 November 10, 2017 Office Action, TSDR 8-16.
14 Id. at TSDR 19-37.
15 February 10, 2017 Specimen of Use.

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Serial No. 87332368

Upon consideration of the foregoing and all of the other evidence in the record, we

find that the ultimate consumers of Applicant’s and registrant’s goods overlap,16 such

goods may be purchased in the same locations without prescriptions including drug

stores and their websites, such goods have the same objective (the alleviation of

edema and pain) through anti-inflammatory properties and such goods are

competitive with each another.

A second reason for finding the goods related, according to the Examining

Attorney, is because single entities manufacture “dietary supplements for the

alleviation of edema and pain” and “dietetic substances for medical use, namely, meal

replacement bars and meal replacement drink mixes” under the same mark. The

Examining Attorney made of record the following webpages from Internet retailers

demonstrating a commercial relationship between such goods:

Neuro Biologix – offering a dietary supplement for joint
inflammation and pain relief and meal replacement drink mixes for
promoting immune system and digestive health.17

Naturade – offering dietary supplements for joint health, including
reducing joint pain, and meal replacement mixes for weight loss or
health goals.18

Isagenix – offering joint support dietary supplements that “helps
protect, rejuvenate, and soothe joints,” as well as meal replacement
drink mixes “for healthy weight loss” and “to maintain good health.”19

16Applicant agrees insofar as it states that the general public are buyers of dietary
supplements. Applicant’s brief at 16, 11 TTABVUE 21.
17 May 16, 2018 Office Action (“RFR Denial”), TSDR 3-8.
18 Id., TSDR 9-14.
19 Id., TSDR 60-71.

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Serial No. 87332368

GNC – offering “GNC Total Lean Shake” (for maintaining weight,
potentially a medical condition for some) and GNC TRIFLEX which
“[s]upports improved joint comfort, flexibility and function, and the
body’s natural anti-inflammatory response.”20

Applicant argues that the goods differ substantially in nature and formulation

because registrant’s goods are “drugs” while Applicant’s goods are from “natural plant

materials and herbal formulations” that can be consumed without the processes,

approvals and restrictions required for pharmaceuticals. There are problems with

Applicant’s argument. First, not all of registrant’s goods are pharmaceuticals;

“dietetic substances for medical use, namely, meal replacement bars and meal

replacement drink mixes” are included within registrant’s identification of goods and

are not pharmaceuticals. (“Pharmaceutical” is defined as “a medicinal drug.”)21

Second, the proper inquiry is not whether the goods could be confused, but rather

whether the source of the goods could be confused. In re Rexel, Inc., 223 USPQ 830,

831 (TTAB 1984). Third, goods can be related in several ways, one of which is through

the circumstances surrounding their marketing (as stated above). The Examining

Attorney has submitted evidence that the goods bear a commercial relationship, that

the goods are of the type that come from a common source and Applicant’s specimen

indicates that its goods are an alternative to registrant’s goods.

The du Pont factors regarding the relatedness of the goods, trade channels and

classes of consumers all favor a finding of likelihood of confusion.

20 Id., TSDR 35-51.
21https://www.merriam-webster.com/dictionary/pharmaceutical. We take judicial notice of
this definition.

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Serial No. 87332368

C. Conditions of Sale

The next du Pont factor we consider concerns the conditions of sale. Applicant

argues that doctors are effectively the buyers of pharmaceuticals in that they select

the goods.22 Registrant’s goods as identified are not limited to pharmaceuticals by

prescription but encompasses over-the-counter drugs which may be purchased

without a prescription. Its argument also does not account for patient involvement in

the selection of prescription drugs.

Applicant also argues that “[t]oday’s buyers are well aware of the possibility that

a good may come from a different identity or different source even when the

trademark is similar.”23 Applicant offers no evidence to support its argument and

hence it is not persuasive. Its citation to precedent involving unrelated goods such as

women’s wearing apparel, ladies undergarments and shoes, is not helpful.24

As for Applicant’s argument in its reply brief that buyers of the goods are

informed, and “[t]here is no possibility of whimsical or impulse buying,”25 we point

out that the standard of care for our analysis is that of the least sophisticated

purchaser. Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).

There is nothing in the record to support a finding that the average purchasers of

dietary supplements, dietetic substances for medical use and over-the-counter

pharmaceuticals possess specialized knowledge. Cf. Miles Labs. Inc. v. Naturally

22 Applicant’s brief at 16, 11 TTABVUE 21.
23 Id. at 17, 11 TTABVUE 22.
24 Id. at 17, 11 TTABVUE 22.
25 Reply brief at 9, 14 TTABVUE 10.

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Serial No. 87332368

Vitamin Supplements Inc., 1 USPQ2d 1445, 1451 (TTAB 1986), (“[w]e agree with

applicant … that purchasers of vitamins are likely to exercise special care in making

their product selections.”). While purchasers of dietary supplements may take greater

care purchasing goods of the type identified in registrant’s identification of goods, the

record does not support a finding that such care outweighs the other du Pont factors.

In any event, the fact Applicant’s consumers may be sophisticated about dietary

supplements, dietetic substances for medical use and pharmaceuticals, does not mean

that they are sophisticated and knowledgeable about trademarks, or have such good

memories for the minimal differences between the marks at issue that they could

differentiate between respective marks or appreciate that similarity does not imply

some kind of business relationship or affiliation. See Hydrotechnic Corp. v. Hydrotech

Int’l, Inc., 196 USPQ 387, 392-393 (TTAB 1977); Refreshment Mach. Inc. v. Reed Ind.,

Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to a sophisticated purchaser does not

automatically eliminate the likelihood of confusion because “[i]t must also be shown

how the purchasers react to trademarks, how observant and discriminating they are

in practice, or that the decision to purchase involves such careful consideration over

a long period of time that even subtle differences are likely to result in recognition

that different marks are involved”).

D. Lack of Actual Confusion

Applicant argues that there has been concurrent use of the marks for over five

years without any confusion. However, it is not necessary to show actual confusion in

order to establish likelihood of confusion. See Weiss Assocs. Inc. v. HRL Assocs. Inc.,

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Serial No. 87332368

902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). An applicant’s assertion of the

absence of actual confusion in an ex parte proceeding, is of little probative value in

our determination on the issue of likelihood of confusion because the Board cannot

readily determine whether there has been a significant opportunity for actual

confusion to have occurred, such that the absence of confusion is meaningful. See In

re Opus One Inc., 60 USPQ2d 1812, 1817-1818 (TTAB 2001); In re Jeep Corp., 222

USPQ 333, 337 (TTAB 1984).

E. Conclusion

We have considered all of the evidence of record and all of the Examining

Attorney’s and Applicant’s arguments, including arguments not specifically

addressed in this decision. The similarity of the marks and goods, the identical classes

of consumers and the overlapping trade channels, favor a finding of likelihood of

confusion. Further, Applicant has not demonstrated any weakness in registrant’s

mark and we have found registrant’s mark to be an arbitrary mark. An arbitrary

mark is considered to be an inherently strong mark. See In re Opus One Inc., 60

USPQ2d 1812, 1813-14 (TTAB 2001) (arbitrary mark is considered strong and

entitled to a “broad scope of protection”). In view thereof, we find that Applicant’s

mark for “dietary supplements for the alleviation of edema and pain” is likely to be

confused with registrant’s mark for goods including “pharmaceutical products for the

treatment of inflammatory disorders”; “medical products, namely, pharmaceutical

preparations for use in the treatment of inflammatory disorders”; and “dietetic

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Serial No. 87332368

substances for medical use, namely, meal replacement bars and meal replacement

drink mixes.”

Decision: The refusal to register is affirmed.

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