The Board rendered a split decision in this opposition to registration of the marks MINIMELTS and MINI-MELTS for "pharmaceutical preparations for use as an expectorant." It dismissed opposer's Section 2(d) claim of likely confusion with the registered mark MINI MELTS for ice cream, but sustained a Section 2(e)(1) mere descriptiveness claim, finding applicant's proof of acquired distinctiveness inadequate. Mini Melts, Inc. v Reckitt Benckiser LLC, Opposition No. 91173963 (April 27, 2016) [precedential].
Likelihood of Confusion: Not surprisingly, the Board found the marks to be virtually identical, and therefore this first du Pont factor weighed heavily in opposer's favor.
There was no evidence of record that a single entity produces both ice cream and pharmaceutical preparations, "let alone under the same mark." Thus the proofs failed to show even a "viable relationship" between the involved goods. The significant difference between the goods weighed heavily in applicant's flavor.
Although the goods, in actuality, travel in different channels of trade - applicant's through kiosks at shopping malls, sporting events, concerts, theme parks and fairs, opposer's at drug stores, grocery stores, and convenience stores - the involved application and registration contained no such restrictions. The Board must presume that the goods travel in all normal channels of trade for pharmaceuticals and for ice cream, which would include grocery stores, drug stores, and mass merchandisers. However, the Board recognized that the mere fact that two different items can be found in a supermarket, department store, drug store, or mass merchandiser does not suffice to show that the goods are related for Section 2(d) purposes. The Board concluded that this factor weighed somewhat in opposer's favor.
The Board found an overlap in customers (namely, parents) for the involved products, both of which are relatively inexpensive, a factor weighing in opposer's favor. However, applicant's goods are not likely to be purchased on impulse, since the parents of a sick child are likely to make an informed purchasing decision. [Note, however, that applicant's goods are not limited to pharmaceuticals for children - ed.] The Board therefore found that the conditions of sale weighed against opposer. But ice cream may be purchased on impulse, and so those buyers may not exercise more than ordinary care, and probably less - ed.]
Opposer equated this case to cases in which both parties are selling medicinal products, and thus where greater protection against confusion is required due to the potential harm cause by choosing the wrong medicine. The Board, however, found those cases inapplicable because of the disparate nature of the involved goods. "[T]here is no possibility that a consumer will mistake one potentially dangerous product for another."
Although opposer has enjoyed some commercial success with its product, the evidence failed to show that its mark is strong. Third-parties have adopted the same or similar marks, in several instances for food products that are closer to applicant's goods than opposer's goods. Even without proof of the extent of third-party use, that evidence may demonstrate a highly suggestive connotation in the industry, and therefore the weakness of the mark. The Board concluded that MINI MELTS is a relatively weak mark.
Applicant submitted the results of a survey showing a 7 to 8.5% level of confusion, which the Board found to be de minimis. [However, the survey participants were shown "high quality photographs" of the parties' products. Shouldn't the survey have been based just on the standard character marks in the application and registration, not on the packaged products? Apparently applicant's product was labeled "MUCINEX(R) EXPECTORANT-GUAIFENESIAN [sic] mini-melts." - ed.]. Applicant, however, made no objection to opposer's survey results, and in fact argued that the results actually showed four time as much confusion.
Finally, under the 13th du Pont factor - "any other established fact probative of the effect of use" - opposer argued strenuously about its safety concerns should a child get his or her grubby little hands on applicant's candy-like medicine, thinking it to be one of opposer's ice cream products. The Board, however, observed once again that the issue here is source confusion, not whether one product is likely to be confused with the other product. [I guess the point is that children just want candy and ice cream, caring not a fig about the source thereof - ed.].
[T]he mere fact that minors may abuse Applicant’s pharmaceutical preparations, or that parents may accidentally give their child too much of the pharmaceutical preparations, would appear to have nothing to do with confusion between the trademarks; in fact, there is no evidence that anyone abuses or misuses Applicant’s product as a result of trademark confusion.
The Board concluded that, notwithstanding the virtual identity of the marks, the significant differences between the goods makes confusion of consumers unlikely, and so it dismissed opposer's Section 2(d) claim.
Mere Descriptiveness: By now seeking registration under Section 2(f), applicant conceded that its mark is merely descriptive of its goods [or at least not inherently distinctive - ed.]. The Board noted that the opposed application was filed under Section 1(b) and applicant never filed an amendment to allege use or a statement of use. Therefore, it could not claim acquired distinctiveness under Section 2(f). Nonetheless, in the interest of judicial economy, and given that the parties actually litigated the issue, the Board considered acquired distinctiveness.
Under Section 2(f), the Board will consider all evidence presented up to the close of the opposition trial phase. Applicant relied on a declaration that the mark was in continuous and substantially exclusive use for the five years proceeding its filing date. It also pointed to sale of approximately 779 million doses of its product, znd to advertising expenditures of more than $20 million dollars in a four-year period ending in 2010.
The Board, in view of the degree of descriptiveness of the applied-for mark, found the evidence insufficient to establish acquired distinctiveness. Applicant failed to provide any advertising figures for the years after 2010, and in any case advertising expenditures do not alone satisfy Section 2(f). The question is whether these efforts were successful in educating the public to associate the proposed mark with a single source.
As to the raw number of doses sold, applicant failed to provide any context within which to assess the significance of this datum. Although these sales figures may show the relative success of the product, they do not necessarily show public recognition of the applied-for mark as a source indicator.
In short, "[m]ore evidence, especially in the form of direct evidence from the relevant purchasing public, than what Applicant has submitted would be necessary to show that its proposed marks have become distinctive for the goods."
And so the Board sustained the claim of mere descriptiveness under Section 2(e)(1).