"bottle of CARDITONE trademark coexistence with CARDIO TONE"

Confusion Exists Despite 20 Years of Trademark Coexistence

Generally, long periods of trademark coexistence between two marks weighs in favor of finding no likelihood of confusion. Unfortunately for MDR Fitness Corp., the Trademark Trial and Appeal Board found that the lack of actual confusion evidence after 20 years of trademark coexistence did not outweigh the other likelihood of confusion factors in favor of finding a likelihood of confusion existed.

MDR owns a federal registration for the mark CARDIO TONE (standard characters) for “dietary and nutritional supplements.” MDR disclaimed the word CARDIO. MDR filed its application for the CARDIO TONE mark on April 1, 2013 and the trademark registration issued on May 20, 2014. The claimed dates of first use of the trademark were November 1, 1997.

Ayush Herbs, Inc. filed a petition to cancel the CARDIO TONE mark on May 21, 2015. Ayush alleged that the CARDIO TONE mark was likely to cause confusion with its prior registered mark CARDITONE (standard characters) for “dietary supplements.”

As we have seen in many cases before, the Board found that the channels of trade and class of consumer overlapped because the identification of goods descriptions were unrestricted. MDR should have petitioned to partially cancel the CARDITONE registration to conform it to the marketplace reality.

The Board also found the CARDIO TONE and CARDITONE marks were similar. MDR offered 70 third-party registrations for marks using CARDIO for dietary supplements and other related goods and services. However, only 1 of the 70 third-party registrations was for the mark CARDI, which is far less that than the 10 registration minimum. Accordingly, the trademark coexistence of the other 69 third-party registrations did not establish a week mark. MDR should have included a dictionary definition that shows CARDI- is a known prefix for a number of heart related words including CARDIO. This would have helped all 70 third-party registrations become persuasive.

When it came to the lack of evidence of actual confusion despite 20 years of trademark coexistence, the Board said that it must examine this factor in connection with the actual marketplace to determine the opportunity for confusion to occur. It also noted how this factor is at odds with the presumptions it must find regarding overlapping channels of trademark and classes of consumers when the goods and services descriptions are unrelated. Nevertheless, because the Board found that the actual trade channels for CARDIO TONE and CARDITONE do not significantly overlap, the fact that there was no evidence of actual even though there was 20 years of trademark coexistence was not surprising. Therefore, the Board found that this lack of evidence was insufficient to outweigh the other factors in favor of finding a likelihood of confusion exists.

This is a good lesson on the importance of filing trademark applications early.

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