Beekman 1802, LLC

Trademark Trial and Appeal BoardAug 22, 2014

No. 85710226 (T.T.A.B. Aug. 22, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: August 22, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ________ In re Beekman 1802, LLC ________ Serial No. 85710226 _______ Charles H. Knull for Beekman 1802, LLC. Deborah E. Lobo, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _______ Before Quinn, Taylor and Masiello, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Beekman 1802, LLC (“Applicant”) has filed an application to register the mark SNAKE OIL (in standard characters) for the following goods: Cosmetics, namely, skin cleansers, skin moisturizers and astringents; facial masks, face powder, foundation makeup, blush, mascara, eye make-up, eye shadow, eyeliner, eyebrow pencil, eye makeup remover, lipstick, lip pencil and rouge; nail enamel, nail treatments, namely, nail polish, gloss, non-medicated conditioner and lacquer; sun block; non-medicated after sun balm; deodorants and anti-perspirants; skin lotions and body creams; night cream; eye gel; cellulite reducing cream; facial scrubs; shaving cream; after-shave lotions; skin bronzers; non-medicated facial blemish concealer touch stick; body lotion; body mist; body emulsion; bath and shower gel; sun tanning preparations; sun screen; after- Application Serial No. 85710226 2 sun lotion; self-tanning lotion; and tanning accelerator lotions, bath and shower gels and salts not for medical purposes; bath cream; bath foam; bath foams; bath gel; bath gels; bath lotion; bath milks; bathing lotions; beauty lotions; body cream; body milk; body milks; body scrub; body splash; body sprays, namely, water in atomized containers used to produce a cooling effect; age spot reducing creams; anti-aging cleanser; anti-aging cream; anti-aging creams; anti-aging moisturizer; anti-aging toner; beauty creams for body care; cleansing creams; cosmetic pads; cosmetic preparations, namely, firming creams and firming lotions; exfoliant creams; eye cream; eye lotions; face and body beauty creams; face and body creams; face and body lotions; facial cleansers; facial lotion; lotions for face and body care; moisturizing preparations for the skin; moisturizing solutions for the skin; non-medicated anti-aging serum; non-medicated skin care creams and lotions; skin care preparations, namely, body balm; skin care products, namely, non- medicated skin serum; skin cleansing cream; skin cleansing lotion; skin conditioning creams for cosmetic purposes; skin creams; skin moisturizer; skin toners; toning lotion, for the face, body and hands; wrinkle removing skin care preparations; wrinkle resistant cream; wrinkle minimizing cosmetic preparations for topical facial use; anti-wrinkle cream; anti-wrinkle creams; cosmetic creams; cosmetic creams for skin care; cosmetic preparations; cosmetic preparations for skin renewal; face creams; face creams for cosmetic use; facial cream; moisturizing creams; non-medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; non-medicated skin creams (in International Class 3).1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when applied to Applicant’s goods, so resembles the previously registered mark 1 Application Serial No. 85710226, filed August 22, 2012 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in commerce. Application Serial No. 85710226 3 SNAKE OIL (“OIL” disclaimed) for “perfume oil; perfumed soap” (in International Class 3),2 as to be likely to cause confusion. When the refusal to register was made final, Applicant appealed and requested reconsideration. In the request for reconsideration, Applicant amended the identification of goods by deleting all references to “soaps” and “perfumes.” The Examining Attorney accepted the amended identification, shown above, but maintained the Section 2(d) refusal. When the request for reconsideration was denied, this appeal resumed. Both Applicant and the Examining Attorney filed briefs. Applicant argues that the mark SNAKE OIL is diluted, pointing to the fact that the Examining Attorney originally cited two co-existing registrations of the mark owned by different entities. Applicant also relies on the existence of five additional third-party registrations of SNAKE OIL marks, or marks that include the term “SNAKE,” and has furnished copies of these registrations. The record also includes a Wikipedia listing of the term “snake oil.” Applicant further emphasizes the existence of a consent agreement between Registrant and the owner of the third-party registration originally also cited by the Examining Attorney, but which later was withdrawn as a bar to registration; according to Applicant, the agreement evidences the coexistence of two marks for goods much closer to each other than Applicant’s products. Applicant also introduced excerpts of its website and Registrant’s website. 2 Registration No. 3645442, issued June 30, 2009. Application Serial No. 85710226 4 The Examining Attorney does not find the consent agreement to be probative inasmuch as Applicant is not a party thereto. The Examining Attorney also points out that the marks are identical, and contends that the goods are related in that they are types of cosmetics and body/skin care products. In support of the refusal, the Examining Attorney introduced third-party registrations and websites to show that the goods may emanate from the same source under the same mark, and travel in the same trade channels. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). In comparing the marks, we must consider them in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In the present case, the marks are identical in sound, appearance, meaning, and overall commercial impression, and Applicant does not argue to the contrary. The identity between the marks is a du Pont factor that weighs heavily in favor of a finding of likelihood of confusion. Application Serial No. 85710226 5 We now turn to compare the goods offered under the involved marks. We make our determination regarding the similarities between the goods, channels of trade and classes of purchasers based on the goods as they are identified in the application and registration, respectively. Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). Where the goods in a cited registration are broadly identified as to their nature and type, as is the case herein, it is presumed that the recitation of goods encompasses all the goods of the nature and type described therein. Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); and In re Elbaum, 211 USPQ 639 (TTAB 1981). In considering this du Pont factor, we especially note that where identical marks are involved, as is the case here, the degree of similarity between the goods that is required to support a finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993) (“even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). It is only necessary that there be a “viable relationship between the goods” to support a finding of likelihood of confusion. In re Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). The issue here, of course, is Application Serial No. 85710226 6 not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application or cited registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). Registrant’s goods are identified as “perfume oil; perfumed soap”; Applicant’s identification includes “skin cleansers, skin lotions, body creams, shower and bath gel, and cleansing creams,” to name just a few items. As pointed out by the Examining Attorney, all of Registrant’s and Applicant’s goods are types of cosmetics and/or body or skin care products. The record includes numerous excerpts of third-party websites showing that the same entities commonly offer, under the same mark, both types of goods involved in this appeal. These online retailers, such as The Body Shop, Crabtree & Evelyn, L’Occitane, Feto Soap, J.R. Watkins, Lush, Lollia and P.C. Fallon, sell scented/perfumed soaps and/or oils, as well as any number of the different products listed in Applicant’s identification. Also of record are six use-based third-party registrations showing that the same entity has registered a single mark for both soap and any one or more of the personal/beauty care products listed in Applicant’s identification. “Third-party registrations which cover a number of differing goods and/or services, and which are Application Serial No. 85710226 7 based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). The Examining Attorney has submitted substantial evidence to establish that the goods are related for purposes of the likelihood of confusion analysis. These related goods would move in the same trade channels (retail stores, online retailers, cosmetic/personal care departments of chain stores, and the like). Further, the goods would be bought by the same classes of purchasers, including ordinary consumers who would not exercise a high degree of care when purchasing these goods. Products of the type involved herein may be relatively inexpensive and subject to impulse purchase. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1441 (TTAB 2012) (cosmetics and personal care products tend to be relatively inexpensive and may be subject to impulse purchase). “When products are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are held to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Application Serial No. 85710226 8 The similarity between the goods, as well as the factors of the similarity in the trade channels and classes of purchasers, and the conditions of sale, all weigh in favor of a finding of likelihood of confusion. Applicant attempts to distinguish the goods based on the fact that Registrant offers its goods only through its own website, while Applicant’s goods are sold through its own retail store and website. This distinction is irrelevant inasmuch as these limitations are not reflected in the respective identifications of goods. An applicant may not restrict the scope of its goods or the scope of the goods covered in the cited registration by extrinsic argument or evidence. See, e.g., In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). Applicant also attempts to diminish the distinctiveness of the cited registration by its reliance on six third-party registrations for four marks comprising SNAKE OIL and two marks containing the word SNAKE. This evidence is entitled to little or no probative value for the reasons articulated by the Examining Attorney. With respect to this evidence in general, “[t]he existence of [third-party] registrations is not evidence of what happens in the market place or that consumers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive.” AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). More specifically, four of the registrations (Nos. Application Serial No. 85710226 9 1259786, 2209923, 2632096, and 2806190) do not cover goods that are even remotely similar to those involved herein. See In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991). Further, one of these registrations (No. 2632096) has expired. See Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] canceled registration does not provide constructive notice of anything.”). The probative value accorded to the remaining two registrations (Registration Nos. 3537377 and 3544029) is minimal; No. 3537377 is for the mark SNAKE AND DAGGER, that is, not for the mark SNAKE OIL at all, while No. 3544029 is for products “for use as personal lubricants,” a very specific category. This brings us to the consent agreement between Registrant and a third party. Applicant places heavy reliance on the agreement between Registrant and the owner of Registration No. 3544029 (mentioned above) of the mark SNAKE OIL for “fragranced lotions, flavored lotions, creams, oils and gels, all for use as personal lubricants; orgasm creams; silicone-based personal lubricants” in International Class 5; this registration originally also was cited against Applicant’s application. Applicant argues that the consent agreement, to which Applicant is not a party, is relevant to the likelihood of confusion issue herein under the thirteenth du Pont factor because Registrant stipulated in the agreement to refrain from using its mark in connection with the goods identified in Registration No. 3544029. Applicant infers from the agreement that Registrant has “in reality” promised not to use its Application Serial No. 85710226 10 mark generally on fragranced lotions, flavored lotions, creams, oils and gels, that is, on some goods of the type covered in Applicant’s application. First, we cannot draw the inference that Applicant suggests. Registrant has agreed not to use its mark on fragranced or flavored lotions, creams, oils and gels that are for use as personal lubricants, not from using its mark on lotions, creams, oils and gels generally. Although we need not speculate on why Registrant entered into this agreement, Registrant may have viewed the limitation of the third-party’s goods to use as personal lubricants as sufficient to avoid a likelihood of confusion with Registrant’s mark and goods. In this regard, we note that Applicant’s identification of goods does not include a similar limitation. Accordingly, any conclusion that Registrant may have reached about an absence of likelihood of confusion with the mark and goods of the owner of Registration No. 3544029 is not probative to the specific likelihood of confusion issue in the present case; that is, because the goods in that registration are limited to goods “for use as personal lubricants,” the agreement has no persuasive effect on our finding of likelihood of confusion with respect to Applicant’s cosmetics and/or body or skin care products. Second, Applicant is not a party to the agreement and, as such, Applicant cannot in any way enforce it or ensure that it remains in effect, or otherwise gain any benefit therefrom. Thus, no presumption can be made that Registrant would consent to Applicant’s use or registration of the applied-for mark or that Registrant has determined or admits that confusion is unlikely to result from third-party use or registration of the mark SNAKE OIL on goods like those of Applicant. See In re Application Serial No. 85710226 11 Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205-06 (Fed. Cir. 2003) (finding consent agreements between the cited registrant and third parties entitled to no such presumptions). Third, the agreement in no way detracts from the simple fact that Registrant owns a subsisting registration of the mark SNAKE OIL for “perfume oil; perfumed soap” which, under Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), is prima facie evidence of Registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods specified in the registration. Fourth, the issue is not whether Registrant actually uses its mark on the same goods on which Applicant uses its mark; the issue is whether consumers, seeing the identical mark SNAKE OIL on Applicant’s goods, are likely to believe that they come from the same source as Registrant’s goods. We conclude that consumers familiar with Registrant’s perfume oil and perfumed soap sold under the mark SNAKE OIL would be likely to mistakenly believe, upon encountering Applicant’s identical mark SNAKE OIL for related cosmetic, beauty and personal care products, that the respective goods originate from or are associated with or sponsored by the same entity. Decision: The refusal to register is affirmed.