Mini Melts opposed Reckitt’s intent-to-use applications for “MINI-MELTS” and “MINIMELTS,” alleging a likelihood of confusion with its own “Mini Melts” mark and that Reckitt’s mark is merely descriptive.

Mini Melts sells ice cream made with special equipment and liquid nitrogen. Reckitt’s Mini-Melts product is a children’s formulation of its cold and flu medicine sold under the brand “Mucinex.” The medicine takes the form of “miniature granules that are coated with a flavoring that melts in the user’s mouth.”

Although the Board recognized that “Mini Melts” and “Mini-Melts” are “essentially identical,” the Board found no likelihood of confusion, primarily due to the differences in the goods. The Board acknowledged Reckitt’s survey results showing a 7% to 8.5% level of confusion, but found to be de minimus and thus, supporting a finding of no likelihood of confusion. The Board also rejected Mini Melts’ argument that allowing Reckitt to register “Mini-Melts” could put children’s safety at risk, on the ground that such a risk was unrelated to whether the trademarks were confusingly similar.

In response to Mini Melts’ claim that “Mini-Melts” is merely descriptive, Reckitt claimed that “Mini-Melts” had acquired secondary meaning. Despite 10 years of continuous use in commerce, over $971 million in sales revenue, 779 million doses in sales, and $21.9 million dollars spent on advertising, the Board found that Reckitt did not meet its burden to establish the mark had acquired secondary meaning. The Board found Reckitt’s evidence did not show that “the relevant public understands the primary significance of the mark as identifying the source of the product . . . rather than the product . . . itself.”

The Board explained that a long period of use does not necessarily establish secondary meaning. While Reckitt spent millions on advertising, Reckitt did not prove its advertising “educat[ed] the public to associate [its mark] with a single source.” And though Reckitt sold almost 800 million doses of medicine, it provided no context to prove that those sales numbers were significant in its industry. Nor did Reckitt show the sales numbers were related to consumers’ ability to relate the mark, Mini-Melts, to the source, Reckitt. Thus, the Board sustained Mini Melts’ opposition on the basis that the mark is merely descriptive and that Reckitt had failed to prove secondary meaning.

Mini Melts, Inc. v. Reckitt Benckiser LLC, Opposition No. 91173963 (TTAB April 27, 2016) [precedential]

Written by Diane Reed, Partner, Knobbe Martens