98191310•Kayed Lafi
Testo completo
This Opinion is not a Precedent of the TTAB Mailed: June 30, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Kayed Lafi _____ Serial No. 98191310 _____ Augusto Perera of Augusto Perera P.A., for Kayed Lafi, Hyun-Jung Oh, Trademark Examining Attorney, Law Office 129, Pamela Y. Willis, Managing Attorney. _____ Before Goodman, Heasley, and O’Connor, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Applicant, Kayed Lafi, seeks registration on the Principal Register of the composite mark
Serial No. 98191310 - 2 - (“PRO” disclaimed) for “nutritional supplements” in International Class 5.1 The Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used in connection with these goods, so resembles the registered composite mark (with “GLOBAL NUTRITION” disclaimed) for “nutritional supplements; protein supplement, namely, whey protein isolate,” in International Class 5, as to be likely to cause confusion, to cause mistake, or to deceive.2 1 Application Serial No. 98191310 was filed on September 21, 2023, based on a declared intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). According to the Application, “The English translation of GALLO in the mark is rooster. The mark consists of a depiction of a rooster’s head below [sic] the word GALLO’S in styled form further having below the word ELITE in block letters and the phrase PERFORM LIKE A PRO below also in stylized form, further having to each side a depiction of a lighting [sic] rod.” Color is not claimed as a feature of the mark. Citations to the prosecution file refer to the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system and identify the documents by title, date, and page in the downloadable .pdf version. Citations to the briefs and other materials in the appeal record refer to the Board’s TTABVUE online docket system. 2 Registration No. 4844031, issued on the Principal Register on November 3, 2015. The mark consists of “the design of a world globe in blue and white with the wording ‘GALLO’ in red outlined in black and ‘GLOBAL NUTRITION’ in black appearing across the globe. The color(s) red, blue, black and white is/are claimed as a feature of the mark.” The registration has been renewed.
Serial No. 98191310 - 3 - When the refusal was made final, Applicant appealed. We affirm the refusal to register. I. Likelihood of Confusion Section 2(d) of the Trademark Act provides that a mark may be refused registration if it: [c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive…. 15 U.S.C. § 1052(d). To determine whether there is a likelihood of confusion between marks under Section 2(d), we analyze the evidence and arguments under the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (the “DuPont factors”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 135 (2015). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. Bullshine Distillery LLC v. Sazerac Brands, LLC, 130 F.4th 1025, 1033 (Fed. Cir. 2025). “While the Board is required to consider each DuPont factor for which it has evidence, the Board ‘may focus its analysis on dispositive factors, such as similarity of the marks and relatedness of the goods.’ Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001); see also Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 1379 (Fed. Cir. 2016); In re Dixie Restaurants, 105 F.3d [1405,] 1407 [(Fed. Cir. 1997)] (‘We see no error in the [B]oard’s decision to focus on the DuPont factors
Serial No. 98191310 - 4 - it deemed dispositive.’).” Stratus Networks v. UBTA-UBET Commc’ns. Inc., 995 F.3d 994, 999 (Fed. Cir. 2020). A. Identity of the Goods The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods or services as described in an application or registration….” DuPont, 476 F.2d at 1361. “The relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration.” In re Charger Ventures LLC, 64 F.4th 1375, 1383 (Fed. Cir. 2023). As the Examining Attorney correctly notes, the involved Application and Registration both identify “nutritional supplements.”3 Applicant acknowledges that this is a key consideration,4 but does not controvert this identity of goods. “In view of the identity of the recited [goods], there is no need for us to further consider the relatedness of the goods.” In re FabFitFun, Inc., No. 86847381, 2018 WL 4043156, *2 (TTAB 2018). Given this identity of goods, it is further presumed under the third DuPont factor that the respective nutritional supplements will travel in the same channels of trade to the same classes of consumers—members of the general public seeking to supplement their nutritional levels. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012) (“[I]t is well established that, absent restrictions in the application and registration, 3 Examining Attorney’s brief, 6 TTABVUE 8. 4 Applicant’s main brief, 4 TTABVUE 3.
Serial No. 98191310 - 5 - [identical] goods and services are presumed to travel in the same channels of trade to the same class of purchasers.”). Accordingly, the second DuPont factor, and by presumption, the third, weigh heavily in favor of a likelihood of confusion. B. Similarity of the Marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 476 F.2d at 1361. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, No. 87075988, 2018 WL 2734893, *5 (TTAB 2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, No. 85497617, 2014 WL 2531200, *2 (TTAB 2014)); Cecile Gagnon Co. v. Bourjois, Inc., 223 F.2d 731, 733 (CCPA 1955) (“And with respect to sound, meaning, and appearance, substantial identity between the marks in any one or more of such attributes is, in of itself, fatal to the registration of his mark by an applicant.”). The respective marks, once again, are Registrant’s and Applicant’s .
Serial No. 98191310 - 6 - The literal portions of the marks are GALLO GLOBAL NUTRITION, with “GLOBAL NUTRITION” disclaimed, and GALLO’S ELITE PERFORM LIKE A PRO, with “PRO” disclaimed. We agree with the Examining Attorney that the marks, taken as a whole, are similar. The Examining Attorney correctly observes that “The terms GALLO and GALLO’S are most significant in both parties’ marks and appear first.”5 See, e.g., Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876 (Fed. Cir. 1992) (“[U]pon encountering each mark, consumers must first notice this identical lead word.”); “Presto Prods., Inc. v. Nice-Pak Prods. Inc., [1988 WL 252340, *3] (TTAB 1988) (‘it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered’).” In re Dare Foods Inc., No. 88758625, 2022 WL 970319, *6 (TTAB 2022).6 Applicant concedes as much, stating: Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372 … (Fed. Cir. 2005). Purchasers in general are inclined to focus on the first word or portion in a trademark.7 Applicant nonetheless argues that the marks differ in sight and sound, as well as connotation and commercial impression. To begin with, Applicant argues, “applicant’s mark begins with ‘GALLO’S,’ which introduces a possessive form that is 5 Examining Attorney’s brief, 6 TTABVUE 4. 6 In addition, the rooster design above the word GALLO’S calls attention to and reinforces that word because the translation of GALLO is rooster. 7 Applicant’s main brief, 4 TTABVUE 6.
Serial No. 98191310 - 7 - not present in the cited mark. This distinction in the leading word alters the overall impression of the marks.”8 We beg to differ. See, e.g., Southwestern Mgmt., Inc. v. Ocinomled, Ltd., No. 94002242, 2015 WL 4464550, *17 (TTAB 2015) (“No meaningful distinction arises from the possessive form of Applicant’s mark.”); In re Binion, No. 76590702, 2009 WL 5194992, *3 (TTAB 2009) (noting that “[t]he absence of the possessive form in applicant’s mark ... has little, if any, significance for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc., No. 73393279, 1986 WL 83754, *2 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE “virtually identical in commercial impression”). The marks’ remaining words do little to distinguish them. Applicant urges that: [T]he phrase “ELITE PERFORM LIKE A PRO” in the applicant’s mark conveys a strong message of high performance and excellence in athletic or fitness contexts. This suggests that the goods are tailored for serious athletes or individuals seeking to enhance their physical performance. … GALLO’S ELITE PERFORM LIKE A PRO: [t]argets a niche audience of high-achieving individuals—such as athletes, professionals, or fitness enthusiasts—seeking tools or services for peak performance.9 In contrast, Applicant asserts: [T]he cited mark “GALLO GLOBAL NUTRITION” emphasizes a broader, more general approach to nutrition. The term “GLOBAL” suggests a wide- reaching, inclusive brand that may cater to a diverse audience interested in overall health and wellness rather than performance-specific outcomes. … GALLO GLOBAL NUTRITION: [a]ppeals to a broader, general audience, including families, individuals, and health-conscious consumers. The 8 Id., 4 TTABVUE 8. 9 Id., 4 TTABVUE 16.
Serial No. 98191310 - 8 - commercial impression conveys trust, reliability, and a commitment to health and well-being on a global scale.10 As we have noted, though, identical goods are presumed to travel in the same channels of trade to the same class of consumers. Viterra, 671 F.3d at 1362. In this case, Applicant’s identical goods, nutritional supplements, may indeed appeal to athletes and fitness enthusiasts, but that is simply a subset of the broader, more general class of consumers of nutritional supplements, to which both brands are presumed to appeal. Applicant contends that “the phrase ‘PERFORM LIKE A PRO’ is a descriptive and commonly used expression in the sports and nutrition industry. This phrase is often employed by various brands to convey a message of high performance and professionalism. The widespread use of this phrase further contributes to its commercial weakness, as it fails to uniquely identify a single source of goods.”11 But if anything, this supports the Examining Attorney’s position, for it concedes that the trailing terms in Applicant’s mark are not distinctive, and suggests that customers would instead look to the dominant shared term GALLO to identify the goods’ origin. If, as here, the dominant portion of both marks is the same, then the marks may be confusingly similar notwithstanding such peripheral differences. See In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48 (Fed. Cir. 2010). In re Charger Ventures LLC, 64 10 Applicant’s main brief, 4 TTABVUE 16-17. 11 Id., 4 TTABVUE 4-5.
Serial No. 98191310 - 9 - F.4th at 1382 (“an additional … component may technically differentiate a mark but do little to alleviate confusion.”).12 In terms of sound, Applicant argues that “applicant’s mark, GALLO’S ELITE PERFORM LIKE A PRO, is pronounced as ‘GAL-ohs ee-LITE per-FORM like a PRO,’ while the cited mark, GALLO GLOBAL NUTRITION, is pronounced as ‘GAL-oh GLOH-bal noo-TRI-shun.’”13 That, he contends, “creates a clear auditory separation that significantly reduces any likelihood of confusion when the marks are spoken aloud.”14 As this argument admits, though, the dominant terms, GALLO and 12 So too with “ELITE,” which follows GALLO’S and precedes PERFORM LIKE A PRO in Applicant’s mark. Applicant lists “ELITE” among his “Design Elements.” Nov. 21, 2024 Response to Office Action at 26. As depicted in the mark, the component is stylized and abstract, such that it would be difficult for consumers to discern as a word. Indeed, especially to the untrained eye it is almost unreadable, and appears to be more of a design than a literal element. The test is “how consumers will perceive the mark, which is the perspective DuPont factor one considers.” Fuente Mktg. Ltd. v. Vaporous Techs., LLC, 172 F.4th 1337, 1342 (Fed. Cir. 2026) (boldface originally in italics). To the extent this element in the mark would be perceived as a design element, it would be subordinate to the literal elements, particularly GALLO’S, and would not serve to avoid confusion. Made In Nature v. Pharmavite, 2022 WL 2188890, at *22. Alternatively, even if consumers perceived “ELITE” as a literal element, it would not suffice to distinguish the marks. The word ELITE is a common laudatory term, possessing no more distinctiveness than PERFORM LIKE A PRO, and suggesting, at most, a line extension of nutritional supplements offered by the same source. “The word ‘elite’ means choice, superior, select (See Webster’s Third New International Dictionary) and is but a common laudatory word well known to the public. If a prospective purchaser encounters an ‘AMERICAN’ microphone and an ‘AMERICAN ELITE’ microphone he would readily assume that the latter is the product of the manufacturer of the former but of better quality or inversely that the former is the cheaper grade of the latter.” In re Electro-voice, Inc., 1966 WL 6416, *1 (TTAB 1966). Applicant agrees that ELITE in its mark “conveys a sense of superiority or high quality, suggesting that the products are premium or top-tier nutritional supplements.” 4 TTABVUE 12. Thus, no matter how “ELITE” is perceived—as a design or as a word--it does little or nothing to alleviate confusion. 13 Applicant’s main brief, 4 TTABVUE 9. 14 Id.
Serial No. 98191310 - 10 - GALLO’S, are pronounced virtually the same: “GAL-oh” and “GAL-ohs.” The only difference is Applicant’s possessive form, which, as we have seen, yields a virtually identical commercial impression. Both marks thus lead with the dominant words GALLO and GALLO’S, which are virtually identical in sight and sound. “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.” In re 1st USA Realty Prof’s., Inc., No. 78553715, 2007 WL 2315610, *5 (TTAB 2007) (citing Krim- Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 732 (CCPA 1968)). See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571 (Fed. Cir.1983) (“Another factor weighing heavily in our decision is that the dominant portion of both parties’ marks sounds the same when spoken.”). Visually, Applicant maintains, “the cited mark features a design element of a world globe, which is a prominent visual component that is not present in the applicant’s mark. The absence of this design element in the applicant’s mark creates a clear visual separation between the two marks, reducing the likelihood of confusion.”15 We find, however, that the world globe depicted in the cited registered mark reinforces the word “GLOBAL” in the word mark: 15 Id., 4 TTABVUE 9.
Serial No. 98191310 - 11 - As Applicant admits, “‘GLOBAL’ in the cited mark implies a broader, more expansive reach, indicating that the products may cater to a worldwide audience.”16 Thus, if anything, Registrant’s global design element emphasizes the breadth of its appeal– to a broad class of customers presumably encompassing Applicant’s intended customer base. It is true that Applicant’s mark contains certain design elements, such as a rooster head and lightning bolts, that do not appear in Registrant’s mark. But when evaluating a mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 WL 2188890, *22 (TTAB 2022). “In the case of a composite mark containing both words and a design, ‘the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.’” Viterra, 671 F.3d at 1362 (quoting CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983)). And, as noted, the rooster design reinforces the GALLO portion of GALLO’S in Applicant’s mark because GALLO is translated to “rooster.” Therefore, in both marks, the terms GALLO and GALLO’S have a significant impact on the overall commercial impressions and tend to indicate a common origin, notwithstanding the different designs. With respect to connotation and commercial impression, Applicant contends, somewhat incongruously, that “[t]he meaning or connotation of a mark must be 16 Id., 4 TTABVUE 9, 12.
Serial No. 98191310 - 12 - determined in relation to the named goods or services. Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion.”17 Here, however, the goods are identical, and “where . . . the goods at issue are identical, the degree of similarity necessary to support a conclusion of likely confusion declines.” Viterra, 671 F.3d at 1363, quoted in Cai v. Diamond Hong, 901 F.3d at 1373. For these reasons, we find that the marks, taken in their entireties, are similar. The first DuPont factor weighs in favor of finding a likelihood of confusion. C. Number and Nature of Third-party Marks in Use on Similar Goods Applicant asserts that the marks’ shared term, GALLO: is a common surname and has been widely used in various trademarks across the USPTO registry. This prevalence indicates that the term is commercially weak and does not serve as a strong source identifier for any single entity. As demonstrated by the evidence on record, numerous registrations exist that incorporate “GALLO” in connection with similar goods and services, showcasing the term's diluted significance in the marketplace.18 Applicant’s assertion falls—and fails—under the sixth DuPont factor, “the number and nature of similar marks in use on similar goods.” DuPont, 476 F.2d at 1361. A mark’s strength varies along a spectrum from very strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. 17 Applicant’s main brief, 4 TTABVUE 10-11, 14. 18 Id., 4 TTABVUE 4.
Serial No. 98191310 - 13 - Cir. 2017). The mark’s placement along that spectrum affects the scope of protection to which it is entitled. Iron Balls Int’l v. Bull Creek Brewing, LLC, No. 92079099, 2024 WL 2844425, *13 (TTAB 2024). “There are two prongs of analysis for a mark’s strength ...: conceptual strength and commercial strength.” Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023). “Conceptual strength is a measure of a mark’s distinctiveness, and distinctiveness is often classified in categories of generally increasing distinctiveness[:] ... (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Id. (cleaned up). “Commercial strength, on the other hand, is the marketplace recognition value of the mark.” Id. at 1363 (internal citation and punctuation omitted). An applicant may adduce evidence of active use-based third-party registrations to show that a mark or a segment thereof is descriptive, suggestive, or so commonly adopted that the public will look to other elements to distinguish the source of the goods or services. See, e.g., Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1364 (Fed. Cir. 2023); Sock It to Me v. Fan, No. 91230554, 2020 WL 3027605, *12 (TTAB 2020). Applicant’s evidence falls far short of proving his assertion. He adduces evidence of six third-party registrations of questionable relevance, much less probative value in demonstrating the conceptual or commercial weakness of GALLO.19 He summarizes the third-party registrations in the following table: 19 Citing “third-party registrations, with no evidence of the extent of their use in commerce, does not diminish the commercial strength of [Registrant’s] mark. ‘We have frequently said that little weight is to be given such [third-party] registrations in evaluating whether there is likelihood of confusion. The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them....’ AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, [1406] (CCPA 1973)…. ‘Applicant’s citation of third-party
Serial No. 98191310 - 14 - registrations as evidence of market weakness is unavailing because third-party registrations standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences.’ In re Morinaga Nyugyo Kabushiki Kaisha, [No. 86338392, 2016 WL 5219811, *8 (TTAB 2016).” Sock It To Me v. Fan, 2020 WL 3027605, at *12.
Serial No. 98191310 - 15 - Table 20 The sixth DuPont factor concerns “similar marks in use on similar goods.” DuPont, 476 F.2d at 1361 (emphasis added). Yet notably, not one of Applicant’s third-party registered marks contains the key term GALLO. Two of Applicant’s third-party registrations are for completely unrelated goods—poultry feed.13 Such disparate goods carry no probative value under this factor. Omaha 20 Nov. 21, 2024 Response to Office Action at 21-22; third-party registrations at 45-52.
Serial No. 98191310 - 16 - Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 1325 (Fed. Cir. 2018) (error to rely on third-party evidence of similar marks for dissimilar goods, as Board must focus “on goods shown to be similar”). Applicant’s QALLO third-party registration lacks probative value, first because it is not “GALLO,” and second because it is not based on use in commerce in the United States, but on a foreign registration pursuant to the Madrid Protocol. Made in Nature v. Pharmavite, 2022 WL 2188890, at *14. In short, the few registrations are not qualitatively or quantitatively analogous to the evidence the Federal Circuit found probative in Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015) and Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015), cited in DC Comics v. Cellular Nerd LLC, No. 91246950, 2022 WL 17832492, *14 (TTAB 2022). As the Examining Attorney correctly concludes, “there is no evidence of record demonstrating that the actual term GALLO is diluted or a common surname.”21 The cited mark, , is registered on the Principal Register without a claim of acquired distinctiveness, and must be treated as inherently distinctive. 15 U.S.C. § 1057(b). In re Fiesta Palms 21 Examining Attorney’s brief, 6 TTABVUE 5.
Serial No. 98191310 - 17 - LLC, No. 76595049, 2007 WL 950952, *3 (TTAB 2007). “Where, as here, the mark is registered without a Section 2(f) claim of acquired distinctiveness, the mark is presumed to be inherently distinctive.” Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 146 (Fed. Cir. 2021); see also In re Chippendales, 622 F.3d at 1352 (“[I]f the mark is inherently distinctive, it is presumed that consumers will view it as a source identifier.”). And since the mark’s trailing terms, “GLOBAL NUTRITION,” are disclaimed, its lead dominant element, GALLO, serves as the distinctive source identifier. Applicant’s evidence does nothing to contract or attenuate the strength of Registrant’s mark, or its dominant element, GALLO, either conceptually or commercially. We thus accord the registered mark the normal scope of protection to which inherently distinctive marks are entitled. The sixth DuPont factor is neutral. II. Conclusion For the foregoing reasons, we find that the dispositive DuPont factors, similarity of the marks and identity of the goods, as well as the channels of trade and classes of consumers, weigh in favor of finding a likelihood of confusion under Section 2(d). The remaining applicable Dupont factor, the number and nature of similar marks in use on similar goods, is neutral. Decision: The refusal to register Applicant’s mark is affirmed. 15 U.S.C. § 1052(d).
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