The Trademark Trial and Appeal Board (TTAB) recently concluded a nine-year trademark battle between opponent Mini Melts, Inc and applicant Reckitt Benckiser LLC, refusing Reckitt Benckiser's mark on the basis of descriptiveness.(1)

Facts

Reckitt Benckiser sought to register the marks MINIMELTS and MINI-MELTS in standard characters for "pharmaceutical preparations for use as an expectorant" in International Class 5. Mini Melts opposed, alleging likelihood of confusion under Section 2(d) of the Trademark Act in light of its previously registered MINI MELTS mark for "ice cream". As a secondary argument, Mini Melts alleged that Reckitt Benckiser's marks were merely descriptive under Section 2(e)(1) of the Trademark Act. Reckitt Benckiser denied the allegations of likely confusion and contended that its marks had acquired distinctiveness under Section 2(f) of the Lanham Act.

The original notice of opposition by Mini Melts was filed over nine years ago, with intervening district court proceedings resulting in suspension of the opposition for over four years. In the district court, Reckitt Benckiser was successful in overcoming Mini Melt's challenge to its use of the marks "Children's Mucinex Mini-Melts" as likely to cause confusion.

Decision

Independent assessment

As a first step in addressing the likelihood of confusion and descriptiveness issues presented in the opposition, the TTAB examined whether the proceedings in the district court precluded its independent assessment of those issues in the opposition context. The TTAB concluded that it was not precluded because the facts in the opposition were sufficiently different. In particular, the opposition related to the registrability of the terms MINIMELTS and MINI-MELTS, while the district court focused on the alleged likelihood of confusion occasioned by Reckitt Benckiser's use of the term 'Mini-Melts' in conjunction with the trademark MUCINEX. Thus, the TTAB concluded that the proceedings differed enough that neither issue preclusion nor estoppel precluded an independent assessment of the issues raised in the opposition.

Likelihood of confusion

Turning to the issue of likelihood of confusion, the TTAB centred its analysis on the factors delineated in In re EI du Pont de Nemours & Co.(2)

Similarity of marks

On the first factor – similarity between the marks – the TTAB found "virtual identity" between MINI MELTS and Reckitt Benckiser's two marks. The TTAB found that the lack of a space between MINI and MELTS in Reckitt Benckiser's first mark and the hyphen between those words in its second mark were both insufficient to distinguish them from Mini Melts' mark. The TTAB also noted that the marks were phonetically identical and conveyed identical meanings. Reckitt Benckiser's argument that design or house marks would be included with the marks for which registration was sought when they were ultimately used on packaging was irrelevant, because design or house marks were not features of the marks shown in the opposed applications. The strong similarity between the marks tipped this factor in favour of Mini Melts.

Similarity of goods

The TTAB found that the second factor – similarity or dissimilarity of the goods – weighed in favour of Reckitt Benckiser. While a lesser degree of similarity between the goods is needed to find likelihood of confusion when the marks are strikingly similar, the TTAB found that there was not even a "viable relationship" between the goods to which the marks would be applied, as ice cream and pharmaceutical preparations are "very different". Mini Melts attempted to argue that the form of its ice cream was similar to the form of Reckitt Benckiser's pharmaceutical composition. The TTAB found this distinction irrelevant, as the issue at hand was the relatedness of the goods themselves, not the relatedness of their forms.

Trade and purchasers

Having found the two primary du Pont factors to weigh in favour of different parties, the TTAB went on to review the other du Pont factors relevant to the opposition. Looking at trade channels, the TTAB found that factor to weigh in favour of Mini Melts. While the evidence showed that Mini Melts' ice cream and Reckitt Benckiser's pharmaceuticals were sold in different places, the fact that Mini Melts' registration covered all types of ice cream meant that all places which sold ice cream had to be considered as trade channels, including the drug stores and retail outlets where the applicant's pharmaceuticals were sold. Classes of purchasers also weight in favour of likelihood of confusion, as parents would be purchasing both products; while conditions of sale weighed against, as parents would likely be more discerning when buying pharmaceuticals for a sick child and there would be "no possibility" that consumers would mistake pharmaceuticals with ice cream products.

Strength of mark

The sixth du Pont factor – strength of Mini Melts' mark – was found to weigh against Mini Melts. While Mini Melts pointed to various pieces of evidence demonstrating its supposed success, including sales numbers and a survey, the evidence did not establish that its mark was "commercially strong" – the same conclusion reached in the civil action. Conversely, Reckitt Benckiser relied on the file history for Mini Melts' trademark application and on third-party registrations for the term MINI MELTS – including two food-related applications pending when Mini Melts originally filed for registration and two candy-related applications discovered after the conclusion of the civil trial – to argue that the term was weak. The TTAB found Reckitt Benckiser's submissions to be persuasive. The third-party registrations were closer in nature to the goods covered by Mini Melts' registration and indicated that MINI MELTS had a "highly suggestive connotation in the [food] industry". Even if the mark were strong for just ice cream, there was no evidence that this strength carried over into other "noncompetitive" goods.

Actual confusion

Turning to the seventh du Pont factor – actual confusion – the TTAB found that much of what Mini Melts submitted on its behalf was little more than hearsay. Although it did not submit a survey of its own in the opposition, it attempted to rely upon a survey submitted by Reckitt Benckiser in the district court action. Mini Melts argued that proper interpretation of the survey resulted in a much greater showing of confusion than that reported by Reckitt Benckiser. The TTAB was not persuaded and found Reckitt Benckiser's survey, methodology and accompanying expert opinion to be credible, while chastising Mini Melts for not conducting its own survey or hiring its own expert. The TTAB found the results of the survey – which showed confusion at a 7% to 8.5% level – to be de minimis.

Safety

The TTAB also looked at the other unique factors presented in the case. Mini Melts had long argued that safety concerns were inherent in the use of the two parties' marks, focusing on the idea that the identical nature of the marks could mean that a child who gained access to Reckitt Benckiser's pharmaceutical composition could think it was one of Mini Melts' ice cream products and ingest more than the correct amount. The TTAB acknowledged the concern, but reiterated that the test at hand was not confusion between the products themselves, but confusion as to the source of the goods. A child's potential mix-up between an ice cream product and a pharmaceutical product provided no reliable evidence that a consumer would misuse Reckitt Benckiser's product "as a result of trademark confusion". Therefore, the totality of the evidence under the du Pont factors weighed against a finding of likelihood of confusion.

Registrability

After concluding that Reckitt Benckiser's mark was not likely to cause confusion in light of Mini Melts' registered mark, the TTAB turned to the question of whether Reckitt Benckiser's mark was registrable or merely descriptive and thus incapable of registration. Under Section 2(e)(1) of the Trademark Act and the Federal Circuit case In re Chamber of Commerce of the US,(3) a term cannot be registered if it is merely descriptive, meaning that the term "immediately conveys knowledge of a quality, feature, function or characteristic of the goods with which it is used". However, merely descriptive marks can be registered where they have come to be associated with the trademark owner through long-term use.

Here, Reckitt Benckiser had applied to register its marks on the basis of its good-faith intention to use them in connection with the products identified in its applications. Thereafter, although it had actually begun using its marks – and in fact had used them for several years while the district court proceeding was ongoing – it was not in a position to file statements of use in connection with the applications due to the pending nature of the opposition. Nevertheless, Reckitt Benckiser did file amendments to the applications seeking registration under Section 2(f) of the Lanham Act, arguing that the marks had acquired distinctiveness as a result of long-term use. In so doing, the TTAB found that Reckitt Benckiser had conceded that its applied-for marks were at least merely descriptive under Section 2(e)(1). Indeed, Reckitt Benckiser's own statements acknowledged that MINI MELTS described the mini granules of its product that melted on the tongue. However, because the applications remained as intent-to-use applications, the TTAB found that a claim of acquired distinctiveness under Section 2(f) "by definition, requires prior use". Therefore, the TTAB found that Reckitt Benckiser could not claim the benefit of Section 2(f) because it had filed none of the required documents under Section 1(c) or 1(d) alleging use. Despite this obstacle, the TTAB chose to decide the issue of acquired distinctiveness because it was an issue litigated by the parties.

Reckitt Benckiser claimed that MINI MELTS had acquired distinctiveness "through substantially exclusive and continuous use in commerce for at least the five years immediately preceding the date of this statement" (October 23 2012), and offered sales and advertising numbers to prove its position. However, the TTAB found that the proffered evidence fell short, as the issue at hand was not whether the mark could become distinctive, but whether it had in fact become distinctive to consumers. Reckitt Benckiser's numbers showed that it had made efforts to market its product and that consumers had purchased its product, but these numbers could not be found to demonstrate its success without further supporting evidence that consumers did, in fact, "recogni[se]…the proposed mark as a source indicator".

Comment

Although Reckitt Benckiser succeeded in defeating the claim of likelihood of confusion, it failed to prove acquired distinctiveness and its registrations were refused on this basis. Trademark applicants seeking to register an arguably descriptive mark on the basis of acquired distinctiveness should keep in mind that mere advertising and sales evidence – even significant numbers – may be insufficient to support their claim. Rather, under the Mini Melts decision, it appears important to provide evidence establishing that the efforts made to build consumer awareness have been successful in educating consumers to the source-indicating nature of the mark.

For further information on this topic please contact Timothy J Kelly or Kathryn E Easterling by telephone (+1 212 218 2100) or email (tkelly@fchs.com or keasterling@fchs.com). The Fitzpatrick, Cella, Harper & Scinto website can be accessed at www.fitzpatrickcella.com.

Endnotes

(1) Mini Melts, Inc v Reckitt Benckiser LLC (Opposition 91173963).

(2) In re EI du Pont de Nemours & Co, 476 F2d 1357 (CCPA 1973).

(3) In re Chamber of Commerce of the US, 675 F3d 1297 (Fed Cir 2012).

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