California SunCare, Inc.

Trademark Trial and Appeal Board

Nov 29, 1999

No. 75324702 (T.T.A.B. Nov. 29, 1999)

Hearing: Paper No. 13
May 5, 1999 HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re California SunCare, Inc.
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Serial No. 75/324,702
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Norm D. St.Landau and Kristine M. Miller
of Tucker, Flyer & Lewis for California SunCare, Inc.
Gerald C. Seegars, Trademark Examining Attorney, Law Office
106 (Nancy Hankin, Senior Attorney).
_______
Before Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
California Suncare, Inc. has filed an application to
register the mark HOT CHOCOLATE for skin care products,
namely, tanning lotions.1
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of
confusion with the registered mark HOT CHOCOLATE for
Ser No. 75/324,702
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cologne.2 Applicant and the Examining Attorney have filed
briefs and both participated in an oral hearing.
Here, as in any determination of the likelihood of
confusion, two key considerations in our analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods with which the
marks are being used. See In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
The marks involved are obviously identical in both sound
and appearance. The only question is whether the identical
mark HOT CHOCOLATE evokes a different commercial impression
or conveys a different connotation when applied to the
specific goods of the application and registration.
Applicant argues that its mark HOT CHOCOLATE, as used
in connection with tanning lotions, brings to mind images
of heat, the hot sun, and the “rich chocolate-brown color
of exotic women who spend all their time basking in the
island sun.” (Brief pg. 2-3). By contrast, the registered
mark HOT CHOCOLATE is said to imply that the cologne with
which it is used has a chocolate aroma or scent or to at
least evoke the image of “steaming hot chocolate and all
the memories associated therewith.” (Brief p. 3).

1 Serial No. 75/324,702, filed July 15, 1997, based on an
allegation of a bona fide intention to use the mark in commerce.
Ser No. 75/324,702
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The Examining Attorney, on the other hand, contends
that the mark HOT CHOCOLATE, whether used on a tanning
lotion or a cologne, would bring to mind the beverage and
the pleasant aroma thereof.
We agree that the most likely interpretation of HOT
CHOCOLATE in either case would be as the name of the
beverage. We see no reason for purchasers to make any
distinction in connotation when viewing the mark on the two
products. While “chocolate” alone might be construed as
the skin color hoped to be obtained by use of a tanning
lotion, we believe the term “hot chocolate” is much more
likely to be perceived as a reference to the beverage.
Although it is questionable whether the aroma of “hot
chocolate” would be literally associated with either
product, if it were, such an aroma would certainly be
applicable to a tanning lotion, which often contains cocoa
butter. Contrary to the cases cited by applicant, we do
not find the goods involved here to be such as to lead to
different commercial impressions when the identical mark is
used thereon. Cf. In re Sears, Roebuck & Co., 2 USPQ2d
1312 (TTAB 1987) [different meanings are projected by the

2 Reg. No. 1,252,016, issued September 27, 1983. Section 8 & 15
affidavits accepted and acknowledged, respectively.
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mark CROSSOVER when used on brassieres and on ladies’
sportswear, respectively].
Turning to the goods, applicant argues that the
tanning lotions of applicant and the colognes of registrant
are different products used for different purposes and are
marketed through different channels of trade. Applicant
states that its tanning lotions are only available at
tanning salons and resort beach clubs, as opposed to the
mass-marketing outlets such as drug stores through which
cologne is sold.
There are no limitations, however, in either the
application or the registration as to the channels of
trade, and thus it must be presumed that the goods of both
would travel in all the normal channels of trade for goods
of this type. See Kangol Ltd. v. KangaROOS U.S.A. Inc.,
974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992) and the cases
cited therein. Accordingly, we proceed on the assumption
that the goods of both would be encountered by the same
potential purchasers in the same retail outlets.
Nor does the fact that tanning lotions and colognes
are different products used for different purposes
eliminate the potential for confusion. It is well settled
that the respective goods need not be identical or even
competitive to support a finding of likelihood of
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confusion; it is sufficient if the goods are related in
some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under situations that would
give rise, because of the marks used thereon, to the
mistaken belief that they originate from or are in some way
associated with the same source. See Azteca Restaurant
Enterprises, Inc., supra at 1210-11, and the cases cited
therein. Thus, the issue narrows down to whether potential
purchasers, on encountering HOT CHOCOLATE tanning lotions
and HOT CHOCOLATE cologne, would be likely to believe that
the two products emanate from the same source.
The Examining Attorney has made of record a total of
twenty-four printouts of either pending applications or
registrations in which the same mark is sought to be
registered or has been registered for goods including both
tanning preparations and colognes, as evidence of
production by the same entity of both types of goods.
Applicant has challenged the weight to be given to this
evidence, noting that only one of the pending applications
is based on use, as opposed to thirteen based on intent-to-
use, and that six of the ten subsisting registrations are
based on foreign registrations. Applicant contends that
this is insufficient evidence to establish actual use of
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the same mark by others for both colognes and tanning
lotions, much less that the same manufacturers commonly
produce both types of products. In addition, applicant has
made of record five registrations of four well-known
fragrance manufacturers (Calvin Klein, Ralph Lauren, Liz
Claiborne and Nicole Miller) showing no expansion of use of
their fragrance marks to tanning lotions, as well as the
declaration of a trade investigator to the effect that
these four manufacturers had been contacted and that they
had stated they did not make tanning products.
The Examining Attorney, although acknowledging the
minimal number of third-party applications or registrations
based on use, contends that the number of intent-to-use
applications is adequate to demonstrate a growing trend in
the cosmetic industry for manufacturers to produce both
tanning lotions and colognes. Applicant’s evidence of four
non-producers of both products, according to the Examining
Attorney, is not indicative of the realities of the
marketplace as a whole.
The Board has previously found third-party
registrations and applications covering the goods and/or
services of both parties to have probative value to the
extent that they may suggest that the goods or services are
of a type which may emanate from the same source, if based
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on use in commerce, but to be of little weight if based on
foreign registrations. See In re Mucky Duck Mustard Co.,
Inc., 6 USPQ 1467(TTAB 1988). This is only logical since
as stated in Mucky Duck, supra at 1470 fn.6, applications
and registrations based on foreign registrations “are not
even necessarily evidence of a serious intent to use the
marks shown therein in the United States on all of the
listed goods and services.” Even third-party registrations
or applications based on use are not evidence that the
marks are actually being used on the goods recited therein,
but only that the goods and/or services are of a type which
may emanate from a single source. See In re Azteca
Restaurant Enterprises, Inc., supra at 1211.
Here, although the number of use-based registrations
and applications made of record by the Examining Attorney
is relatively small, they nevertheless constitute evidence
which suggests that the two products are of a type which
may emanate from a single source. Even if based on a
minimal number of registrations and applications, we
consider this evidence adequate to counterbalance
applicant’s evidence of non-production of both types of
goods by four other sources. We hasten to add, however,
that we do not find it appropriate to rely upon the intent-
to-use applications as probative evidence of a growing
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trend in the industry for manufacturers to produce both
tanning lotions and colognes. Similar to registrations
under Section 44, the intent-to-use applications provide no
basis for concluding that all of the goods identified in
these applications will actually be produced and sold under
the marks sought to be registered.
We conclude that when the identical mark HOT CHOCOLATE
is used on both the tanning lotions of applicant and the
cologne of registrant, potential purchasers may well assume
that both of these products emanate from the same source.
Decision: The refusal under Section 2(d) is affirmed
and registration is refused to applicant.
T. J. Quinn
C. E. Walters
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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