Annmarie Gianni Skincare, LLC

Trademark Trial and Appeal BoardJun 23, 2016

No. 86252677 (T.T.A.B. Jun. 23, 2016)

This Opinion is Not a Precedent of the TTAB Mailed: June 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Annmarie Gianni Skincare, LLC _____ Serial No. 86252677 _____ Cheryl L. Hodgson of Hodgson Legal for Annmarie Gianni Skincare, LLC. Nancy L. Clarke, Trademark Examining Attorney, Law Office 102, Mitchell Front, Managing Attorney. _____ Before Kuhlke, Mermelstein, and Lynch, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: Annmarie Gianni Skincare, LLC (“Applicant”) seeks registration on the Principal Register of the standard character mark ANNMARIE for “Body cream; Body lotions; Body oil; Body oils; Body wash; Cosmetic body scrubs for the face; Cosmetic suntan lotions; Eye cream; Face and body creams; Facial cleansers” in International Class 3 Serial No. 86252677 - 2 - and “On-line retail store services featuring body and skin care products” in International Class 35.1 The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with four registered marks, as follows:2 Registration Number Mark Goods/Services Int. Class 2392952 (hereinafter “‘952 registration”) (disclaimer of NATURAL) Cosmetics, namely, facial lotions, skin creams, facial beauty masks, and face powder, and sunscreen oils, lipsticks, eye shadow, eyebrow pencil, mascara, face powder, face and body emulsions, skin lotion, vanishing cream, anti- wrinkle cream, face rouge, hand cream, eye make up remover, eye liner, skin milk, skin freshener, non-medicated lip balm, lip gloss, solid face powder for 3 1 Application Serial Number 86252677 was filed April 15, 2014 based upon use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 Registration No. 2392952, issued October 10, 2000, renewed; Registration No. 3561403, issued January 13, 2009, Section 71 affidavit accepted and Section 15 affidavit acknowledged; Registration No. 1224769, issued January 25, 1983, cancelled/expired; Registration No. 3988897, issued July 5, 2011. Serial No. 86252677 - 3 - compact use, personal deodorant; Medicated toilet water; dandruff cream; dandruff lotion; medicate [sic] lip balm 5 3561403 (hereinafter “‘403 registration”) ANNEMARIE BÖRLIND (standard character mark) cosmetics and personal care preparations, namely, facial lotions, beauty masks, skin creams, skin moisturizer, skin lotions, facial cleanser, facial toner, vanishing cream, cleansing cream, solid face powder for compact use, after-shave lotions, shower gels, hand cream, skin milk, namely, cleansing milk and face and body milk, personal deodorants, lipsticks, lip gloss, non- medicated lip protectors, rouge, eye shadow, mascara, eyeliner, eyebrow pencils, eye makeup remover 3 Serial No. 86252677 - 4 - 1224769 (literal element: ANNEMARIE BÖRLIND) Toilet Soaps; Skin Moisturizing Creams, Lotions and Gels; Sun Tanning Oils; Perfumes; Facial and Skin Lotions; Skin Creams; Cosmetic Face Masks; Body and Facial Powder; Skin Oils; Lipsticks; Shaving Lotions; Hair Lotions; Hair Creams; Non-Medicated Hand Balm 3 3988897 (hereinafter “‘897 registration”) (literal element: ANN MARIE’S ORGANIC SKIN CARE; disclaimer of ORGANIC SKIN CARE) Non-medicated organic herbal body care products, namely, body oils, salves, and lip balms 3 After the Examining Attorney made the refusal final, Applicant appealed. During the pendency of the appeal, one of the cited registrations, Registration No. 1224769, expired and was cancelled for failure to file a Section 8 affidavit of continued use and a Section 9 application for renewal. See 15 U.S.C. §§ 1058, 1059. Accordingly, the Section 2(d) refusal as to this registration is moot and will not be addressed on the merits. See Trademark Trial and Appeal Board Manual of Procedure § 1212 (June Serial No. 86252677 - 5 - 2015). We affirm the refusal to register based on the three remaining cited registrations. I. Evidentiary Issue Applicant attaches new evidence to its appeal brief, consisting of a declaration of its attorney, a webpage (www.pbs.org), USPTO records, and USPTO database search results. The Examining Attorney objects to the evidence as untimely. As set forth in Trademark Rule 2.142(d), “[t]he record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed.” 37 C.F.R. § 2.142(d). The evidence that was submitted for the first time with the appeal brief is not timely, and therefore we give it no consideration.3 See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1856-57 (TTAB 2014). II. Likelihood of Confusion The determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter referred to as “du Pont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any 3 We note as an aside that consideration of these materials would not change the result herein. Even if we considered Applicant’s proffered exhibits for the purposes argued by Applicant (see 4 TTABVUE at 5, 6, 10, 14), we do not find the arguments persuasive, regardless of the evidence. Serial No. 86252677 - 6 - likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods and services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks.) In this appeal, Applicant focuses its arguments entirely on the alleged dissimilarity of the marks at issue and does not address any other du Pont factors. In assessing the marks, Applicant cites to and discusses numerous other likelihood of confusion cases concerning different marks. However, “prior decisions on different marks used under different circumstances are of little value in deciding a specific issue of likelihood of confusion.” Jaquet-Girard, S.A. v. Girard Perregaux & Cie, S.A., 423 F.2d 1395, 165 USPQ 265, 266 (CCPA 1970). A. Relatedness of the Services and Trade Channels We first consider the similarity of the goods and services and the channels of trade. We assess whether the degree of relatedness of the goods and services rises to such a level that consumers would mistakenly believe Applicant’s goods and services and the goods in the cited registrations emanate from the same source. We must focus on the goods and services as identified in the application and cited registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Serial No. 86252677 - 7 - The subject application and the cited registrations identify at least some identical goods. Specifically, Applicant’s “face and body cream” overlaps with the “skin creams” in the ‘952 registration and the ‘403 registration. A broad recitation such as “skin creams” in the cited registrations is presumed to encompass all goods of the type described. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Applicant’s “body oil” is identical to the “body oils” in the ‘897 registration. Thus, the goods in all three cited registrations are identical in part to the goods in the subject application. Even putting aside that the goods are identical in part, the record also establishes that Applicant’s goods and online retail store services are highly related to the goods in the cited registrations. The evidence shows that a single source frequently offers these types of goods and services under the same mark. For example, Estee Lauder’s website shows the same mark used for online retail store services featuring body and skin care products, as well as on cleansers, sunscreen, face creams and lotions, makeup, powder, and other cosmetics.4 Similarly, Elizabeth Arden’s website shows the same mark used for online retail store services featuring body and skin care products, as well as on eye cream and sunscreen, and in connection with the promotion of wide variety of other cosmetics.5 As another example, the Ulta website shows the HEMPZ mark used on body moisturizer, body cream, body wash and scrub, 4 July 28, 2014 Office Action at 14-47 (www.esteelauder.com). 5 Id. at 48-56 (www.elizabetharden.com). Serial No. 86252677 - 8 - and lip balm.6 The Ulta website also shows the CLINIQUE mark used on body cream, body lotion, body wash, facial soap, and deodorant.7 These examples and other evidence in the record prove that the goods and services in the application and the goods in the cited registrations are highly related. Moreover, as to Applicant’s online retail store services, the evidence supports the established tenet that likelihood of confusion may arise where confusingly similar marks are used on goods, on the one hand, and in connection with retail sales of such goods, on the other. See In re Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1640 (TTAB 2006); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks both for jewelry and for retail-jewelry and mineral-store services was likely to cause confusion); In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (holding the use of nearly identical marks both for coats and for retail outlets featuring items including coats was likely to cause confusion, noting that “there is no question that store services and the goods which may be sold in that store are related goods and services for the purpose of determining likelihood of confusion”). Finally, we note that if likelihood of confusion exists with respect to any of Applicants’ identified goods or services in a particular class, the refusal of registration must be affirmed as to all goods or services in that class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). 6 Id. at 75-77 (www.ulta.com). 7 Id. at 78-72, 73, 81, 87 (www.ulta.com). Serial No. 86252677 - 9 - Turning next to the channels of trade, Applicant’s goods and services and the goods in the cited registrations, for which the identifications are unrestricted, are presumed to move in all channels of trade normal for such goods and services and are available to all potential classes of ordinary consumers. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods.) We presume, as we must, that because the goods described in the subject application and the cited registrations are identical in part, they travel through the same channels of trade to the same class of purchasers, considerations under the third du Pont factor. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). In addition, for the highly related goods and online retail store services, the evidence referred to above shows that these goods and services are marketed together to the same consumers. Thus, the second and third du Pont factors weigh in favor of likely confusion. B. Similarity of the Marks With respect to the marks, we must compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The test assesses Serial No. 86252677 - 10 - not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are so similar that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Moreover, where, as here, the goods are identical in part, the degree of similarity of the marks necessary to find likelihood of confusion need not be as great. Coach Servs., Inc., 101 USPQ2d at 1722; Viterra, 101 USPQ2d at 1908 (citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). Applicant’s proposed mark is ANNMARIE in standard characters, and the cited marks are ANNEMARIE BÖRLIND (in standard characters), ANNEMARIE BÖRLIND NATURAL BEAUTY (stylized; NATURAL disclaimed) and ANN MARIE’S ORGANIC SKIN CARE and design (ORGANIC SKIN CARE disclaimed). All the marks contain some nearly identical wording, the name ANNMARIE/ANNEMARIE/ANN MARIE’S, which by itself, or in conjunction with BÖRLIND, dominates each mark. Applicant’s mark contains no additional matter, and we remain mindful that its standard character ANNMARIE may be displayed in any lettering style, including that in which the registrants display the wording encompassed in their marks. See Viterra, 101 USPQ2d at 1909; In re Mighty Leaf Tea, 601 F.3d 1342, 1348 (Fed. Cir. 2010). While the cited marks contain additional matter, this shared term is the first word in all the marks, and “it is often the first Serial No. 86252677 - 11 - part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See also Palm Bay Imports Inc., 73 USPQ2d at 1692. We further find that the descriptive nature of the disclaimed wording in the ‘952 and ‘897 registrations contributes to the dominance of ANNEMARIE or ANN MARIE’S in those marks, as consumers would not be inclined to rely on the descriptive wording as source-indicating for “natural” beauty products or “organic skin care” products. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). While the ‘403 and ‘952 registered marks include the term BÖRLIND immediately after ANNEMARIE, we find that BÖRLIND gives the impression of a surname, so that ANNEMARIE BÖRLIND as a whole gives the impression of a personal name.8 This difference in the cited marks from Applicant’s mark would not reduce likely confusion, however, as consumers would be inclined to assume that Applicant’s ANNMARIE uses the first name only of the ANNEMARIE BÖRLIND referenced in the marks in the cited registrations.9 Thus, we disagree with Applicant’s argument that BÖRLIND constitutes a distinction that weighs against likely confusion. 8 This impression is supported by the Name Statement in the ‘403 registration, clarifying that “’ANNEMARIE BORLIND’ [sic] does not identify a living individual.” July 28, 2014 Office Action at 8-9; See Trademark Manual of Examining Procedure § 1206.03 (April 2016) (requiring inquiry and name statement if a mark comprises a name that could reasonably be perceived as identifying a particular living individual). 9Although the spelling of the first name differs slightly, the variation is insignificant and unlikely to be noticed or remembered by consumers. “[M]arks ‘must be considered . . . in light of the fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Serial No. 86252677 - 12 - As to the admittedly prominent design element found in the ‘897 registered mark, “the verbal portion of the mark is the one most likely to indicate the origin of the goods [services] to which it is affixed.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., 116 USPQ2d 1129, 1134 (Fed. Cir. 2015), citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). If a mark comprises both wording and a design, greater weight is often given to the wording, because it is the wording that purchasers would use to refer to or request the goods or services. See, e.g., Viterra, 101 USPQ2d at 1911; see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding applicant’s mark, MAX with pillar design, and registrant’s mark, MAX, likely to cause confusion, noting that the “addition of a column design to the cited mark ... is not sufficient to convey that [the] marks ... identify different sources for legally identical insurance services”). We see no reason not to give greater weight to the wording here, particularly because the design elements in the ‘897 registration appear largely decorative and suggestive of components of the organic goods represented by the mark. They do not overshadow the literal elements of the mark. Thus, while we agree with Applicant’s contention that no absolute rule dictates the dominance of wording over a design, nothing about the design and wording in this particular cited mark weighs in favor of a different result. Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 685, 196 USPQ 1, 2-3 (CCPA 1977)). Serial No. 86252677 - 13 - We find the overall commercial impressions of the marks quite similar, and consistent with a single source, as they all give the impression of a person named Annmarie (or some close variation of that spelling). Although two of the cited registrations contain wording that is not part of a name, the descriptive or highly suggestive nature of the wording “NATURAL BEAUTY” and “ORGANIC SKIN CARE” does not detract from the mark’s overall dominant impression of a person named Annmarie. This impression makes it probable that consumers would perceive the provider of the identical and highly related goods to be the same. We note Applicant’s urging that distinctions may be found between its mark and the cited marks when considered in their entireties. Having considered the marks as a whole, and bearing in mind that a side-by-side comparison is not the standard, we find them similar in sight, sound, and commercial impression. Thus, this du Pont factor weighs in favor of likely confusion. III. Conclusion Based on the similarity of the marks, the identical and highly related goods and services at issue, and the identical trade channels, we find that Applicant’s mark is likely to cause confusion with the marks in Registration Nos. 2392952, 3561403, and 3988897. Decision: The refusal to register Applicant’s mark is affirmed.