Nutri/System IPHC, Inc. v. Nutrimost LLC

Nutri/System IPHC, Inc. v. Nutrimost LLC

No. 91233167

United States Patent and Trademark Office, Trademark Trial and Appeal Board

July 30, 2019

This Opinion is not a Precedent of the TTAB

Lisa A. Lori of Klehr Harrison Harvey Branzburg LLP for Nutri/System IPHC, Inc.

Laura L. Beoglos of Sand & Sebolt, for Nutrimost LLC.

Before Greenbaum, Goodman and Pologeorgis, Administrative Trademark Judges.

OPINION

GOODMAN, ADMINISTRATIVE TRADEMARK JUDGE.

Nutrimost LLC ("Applicant") filed an application to register the mark NUTRIMOST WELLNESS & WEIGHT LOSS (in standard characters, WELLNESS & WEIGHT LOSS disclaimed) for the following services: "providing weight loss and nutritional program services and dietary and nutritional guidance, all of the aforementioned services offered only through offices professionally supervised by healthcare practitioners" in International Class 44.^[1]

Nutri/System IPHC, Inc. ("Opposer") opposes registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), as well as on the basis of breach of the parties' settlement agreement ("Agreement"), namely that the plain language of the Agreement precludes registration of NUTRIMOST WELLNESS & WEIGHT LOSS. Opposer pleaded ownership of its previously used and registered NUTRISYSTEM and (Image Omitted) marks for a variety of nutrition and weight loss goods and services.

Applicant filed an answer denying the salient allegations in the notice of opposition.^[2] Each party filed a trial brief and Opposer filed a reply brief.^[3]

I. Record

The record includes the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the file of the involved application.

Opposer introduced the following testimony: the declaration testimony of Denise Bergner, ("Bergner declaration"), Vice President, Legal and Corporate Compliance, for Nutrisystem Inc. ("Nutrisystem"), the parent of Opposer, and Exhibits A-G, 9 TTABVUE; the rebuttal declaration testimony of Denise Bergner, 18 TTABVUE; and the rebuttal declaration testimony of Timothy DeGennaro, ("DeGennaro declaration") Associate Vice President for Insights Communities and Research at Finch Brands, and Exhibit No. 1, 19 TTABVUE.

Applicant introduced the following testimony and evidence: the declaration testimony of Ray Wisniewski, D.C., (Wisniewski declaration), President of NutriMost, LLC, and Exhibits A-L, 12 TTABVUE; first notice of reliance on TESS printouts of third-party registrations, 13-15 TTABVUE; second notice of reliance on third-party web page printouts, 16 TTABVUE; and third notice of reliance on USPTO electronic records of Registration No. 5267226 for the mark NUTRIMOST FOREVER and Registration No. 5020059 for the mark NUTRIMOST, 17 TTABVUE.

II. Preliminary Matters

Applicant has objected to the DeGennaro declaration and survey submitted by Opposer during its rebuttal testimony period. Applicant submits that this testimony and survey are improper rebuttal, and the testimony and survey should have been submitted during Opposer's case-in-chief.^[4] Applicant seeks for the testimony and survey to be excluded.

In response, Opposer argues that Applicant "opened the door to this evidence" and "[t]he survey was included to rebut NutriMost's contention, made throughout these proceedings from the very beginning, that there (supposedly) was no likelihood of confusion." 22 TTABVUE 11.

During a plaintiff's rebuttal testimony period, the plaintiff may introduce evidence and testimony to deny, explain, or discredit facts and witnesses adduced by the defendant. Evidence is improper rebuttal, however, where it relates to a witness and facts that might appropriately have been introduced during the party's case-in-chief. Western Leather Goods Co. v. Blue Bell, Inc., 178 U.S.P.Q. 382, 383 (TTAB 1973). In this case, the testimony and survey relate to the issue of likelihood of confusion. As such, this evidence constitutes improper rebuttal because it should have been made of record during Opposer's case-in-chief. Accordingly, we have given no consideration to the DeGennaro declaration and survey.

Opposer indicates in its trial brief that the issue for decision is "Does the Agreement entered into between Opposer and Applicant preclude registration of Applicant's mark NUTRIMOST WELLNESS AND WEIGHT LOSS?" [sic] 20 TTABVUE 7. Opposer reiterates in its reply brief that the "issue presented, [is] namely, whether the plain language of the Agreement precludes registration." 22 TTABVUE 11.

In its brief, Opposer did not discuss its likelihood of confusion claim but only discussed the issue of whether the parties' Agreement precludes registration of Applicant's mark. Therefore, we find that the likelihood of confusion claim has been waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 U.S.P.Q.2d 1750, 1754 (TTAB 2013).

III. Standing

To have standing, a plaintiff must have a real interest, i.e., a personal stake in the outcome of the proceeding and a reasonable basis for its belief that it will be damaged. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023, 1025-28 (Fed. Cir. 1999). Opposer has properly made its pleaded registrations of record by testimony.^[5] Bergner declaration ¶ 8, 9 TTABVUE 3-7. Trademark Rule 2.122(d)(2), 37 C.F.R. § 2.122(d)(2). Opposer also introduced the parties' Agreement by testimony. 9 TTABVUE. In view thereof, we find Opposer has established its personal interest in this proceeding and proven its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 U.S.P.Q.2d 1842, 1844 (Fed. Cir. 2000); Vaughn Russell Candy Co. v. Cookies In Bloom Inc., 47 U.S.P.Q.2d 1635, 1638 (TTAB 1998).

IV. Background

The parties were involved in a prior Board proceeding, Opposition No. 91221981, in connection with application Serial No. 86421639, for the mark NUTRIMOST, for Class 5 dietary and nutritional supplements and for Class 44 nutritional program services.^[6] Bergner declaration ¶¶ 12, 14, 9 TTABVUE 8; Wisniewski declaration ¶¶ 8-9, 12 TTABVUE 4. In May 2016, the parties entered into a settlement to resolve that opposition (i.e., the Agreement).^[7] Bergner declaration ¶ 16, 9 TTABVUE 8; Wisniewski declaration ¶10, 12 TTAVUE 4; Wisniewski declaration, Exhibit C, 12 TTABVUE 22-25.

Based on the parties' Agreement, which addressed application Serial No. 86421639 in Opposition No. 91221981, as well as future use and/or registration of NUTRIMOST marks, ^[8] Opposer withdrew and dismissed Opposition No. 91221981. Bergner declaration ¶ 18, 9 TTABVUE 9; Wisniewski declaration ¶¶ 14-15, 12 TTABVUE 5. In addition, Applicant agreed to the following regarding its trademark use and registration:

2. NutriMost shall only offer its goods and services through offices professionally supervised by healthcare practitioners …

3(a). NutriMost agrees that it will not use the words "Nutri" or "Nutra" with any word(s) or phrase(s) that convey or imply weight loss or diet type products or services, such as, by way of example but not limitation, "Nutridiet"; "Nutradiet"; NutriMost shall never use the words "Nutri" or "Nutra" with the words "System" or "Systems"; and NutriMost shall never use the words "Nutri" or "Nutra" with the terms "weight loss" or "weight management" but the Parties expressly agree and understand that, except as provided herein, NutriMost may use the wording "NutriMost" with any wording that conveys or implies weight loss or diet type products or services.

3(b). NutriMost agrees never to use or seek to register NUTRIMOSTDIET or NUTRIMOST SYSTEM, or any reasonable variations thereof, as a trademark, trade name, domain name or in connection with any gTLD regardless of the goods or services, including, but not limited to, the domains, nutrimostdiet, nutrimost.diet. nutrimostsystem or nutrimost. system; provided, however NutriMost shall have the right to own and use the domain nutrimost. com and other reasonable variations thereof so long as "Nutri'" and "Most" appear as one word and never in any combination with the words "Diet" or "System."

7. NutriMost shall not object to Nutrisystem's nationwide use and registration of the Nutrisystem trademark; NutriMost further agrees not to seek to cancel any of Nutrisystem's existing registrations nor oppose any future applications for Nutrisystem marks owned by Nutrisystem or a successor-in-interest, wholly-owned subsidiary or affiliate. Likewise, Nutrisystem shall not object to NutriMost's nationwide use and registration of the NUTRIMOST MARKS; Nutrisystem further agrees not to seek to cancel the NUTRlMOST MARKS nor oppose any future applications for the NUTRIMOST MARKS owned by NutriMost or a successor-in-interest, wholly-owned subsidiary or affiliate, provided that NutriMost is in compliance with its obligations under this Agreement, including its obligations and covenants as contained in paragraphs 3a and 3b herein.

12. This Agreement and all matters relating hereto are governed by, and shall be construed in accordance with, the laws of the Commonwealth of Pennsylvania, without regard to its conflict of law provisions …

Exhibit to Bergner declaration, 9 TTABVUE 42-44; Exhibit to Wisniewski declaration, 12 TTABVUE 17-19.

After Opposition No. 91221981 was dismissed, Applicant filed the involved application for NUTRIMOST WELLNESS & WEIGHT LOSS. Bergner declaration ¶19, 9 TTABVUE 9. On March 1, 2017, Opposer filed the instant opposition against Applicant. Id. at ¶¶ 19, 21, 9 TTABVUE 9-10. The parties' current dispute relates to the interpretation of Section 3(a) of the parties' Agreement, and whether Applicant is entitled to use NUTRIMOST with the term "weight loss."^[9]

V. Do...