Continental Fragrances, Ltd.

Trademark Trial and Appeal Board

Mar 8, 2012

No. 77677661 (T.T.A.B. Mar. 8, 2012)

Hearing: Mailed:
July 14, 2011 March 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Continental Fragrances, Ltd.
________

Serial No. 77677661
_______

Mary Margaret L. O’Donnell and Michelle L. Visser of Rader,
Fishman & Grauer PLLC for Continental Fragrances, Ltd.

Sung In, Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
_______

Before Seeherman, Zervas and Lykos, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On February 25, 2009, Continental Fragrances, Ltd.
(“applicant”) filed an application pursuant to Section 1(b)
of the Trademark Act, 15 U.S.C. § 1051(b), for registration
on the Principal Register of the mark INVISIBLE (in
standard character form) for goods identified as “hair care
preparations” in International Class 3.
The examining attorney finally refused registration
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), in view of Registration No. 3378274 for the mark
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 77677661
2
INVISIBLE (in standard character form) for “cosmetics” in
International Class 3.
Applicant appealed the final refusal of its
application. Both applicant and the examining attorney
filed briefs and the Board conducted an oral hearing. The
refusal to register is affirmed.
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, 567 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key, although not
exclusive, 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, 29 (CCPA 1976). See also,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533 (Fed. Cir. 1997).
We first consider the similarity or dissimilarity of
the goods. To find that the goods are related, it is
sufficient to show that because of the conditions
surrounding their marketing, or because they are otherwise
Serial No. 77677661
3
related in some manner, the goods would be encountered by
the same consumers under circumstances such that offering
the goods and/or services under confusingly similar marks
would lead to the mistaken belief that they come from, or
are in some way associated with, the same source. In re
Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). See In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
To establish that the goods are related, the examining
attorney relies on (i) third-party registrations that list
both cosmetics and hair care preparations; and
(ii) printouts of third-party websites.
Third-party registrations that individually cover
different items and that are based on use in commerce serve
to suggest that the listed goods and services are of a type
that may emanate from a single source. See Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (although
third-party registrations are “not evidence that the marks
shown therein are in use on a commercial scale or that the
public is familiar with them, [they] may nonetheless 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.”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). The
Serial No. 77677661
4
examining attorney made the following six registrations of
record which identify both cosmetics and various hair care
preparations:1
DREAM DROPS (Registration No. 3149740), owned by
Unilever PLC.

SERIOUSLY STRAIGHT (Registration No. 3169650), owned
by Unilever PLC.

YOU MUST HAVE A SENSE OF HUMOR TO USE OUR PRODUCTS
(Registration No. 3621090), owned by Unilever PLC.

PRINCIPAL SECRET AVOW (Registration No. 3607582),
registered to Victoria Principal Productions, Inc.

SKIN PRINCIPAL (Registration No. 3607583) registered
to Victoria Principal Productions, Inc.

OLATHERAPY (Registration No. 3604429), registered to
Dean Christal.

One entity owns three of the registrations, and another
entity owns two registrations. The registrations hence
pertain to three entities. According to applicant, the
registrations are insufficient to establish a relationship
between the goods because they are simply too few in
number.
The examining attorney also relies on one webpage each
from www.aubrey-organics.com and www.lorealparisusa.com.2

1 A seventh third-party registration, Registration No. 3302034,
was also made of record by the examining attorney. However,
because it lists only services in International Class 35, it is
irrelevant to the issues in this appeal.
2 A third webpage from giovannicosmetics.com has no probative
value because, as far as we can determine, it does not identify
any cosmetics.
Serial No. 77677661
5
The www.aubrey-organics.com webpage contains links at the
top of the webpage for, inter alia, “Hair Care,” “Skin
Care,” “Makeup,” “Fragrance” and Body Lotions.”

The www.lorealparisusa.com webpage contains links at the
top of the webpage for, inter alia, “Cosmetics” “Haircare,”
and “Styling.”
Serial No. 77677661
6

Applicant argues that the webpages are not persuasive
because they are only two in number and are from retailers
which offer a wide variety of goods “showing a shopping
experience similar to that of mass market retailers such as
Target and Costco that sell an enormous variety of goods.”
Brief at 16. Additionally, applicant states that the
webpages show categories of goods without making it clear
that the merchants offer both types of products. (The
examining attorney evidently relies on the links to
“makeup” and “hair care” at the top of the aubrey-
organics.com webpage, and links to “cosmetics” and “hair
care preparations” at the top of the lorealparis.com
webpage, which applicant claims is insufficient.)
Serial No. 77677661
7
We find that the examining attorney’s evidence, when
considered together, suffices to establish that the goods
are related. The third-party registrations, although small
in number, clearly list both applicant’s and registrant’s
goods, and serve to suggest that such goods are of a type
which may emanate from a single source. The websites
contain links which identify the relevant goods with
sufficient particularity under or next to the merchant’s
marks. Cf., In re Davey Products Pty Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009) (“Air compressors, water pumps, and/or
electric motors all are offered for sale on the websites …
[t]he website of Cascade Machinery and Electric, Inc. …
lists among its products ‘pumps,’ ‘compressors,’ and
‘electric motors.’”). Applicant’s suggestion that Aubrey
Organics and L’Oreal are large retailers such as Target and
Costco (where purchasers can buy goods ranging from, e.g.,
bread to automotive parts) is not well taken; both websites
list product categories in limited fields. Further, we are
not troubled by the fact that the examining attorney is
relying on links to the goods rather than webpages showing
the marks on the goods; while it would have been preferable
for the examining attorney to have actually demonstrated
that the marks appear on the goods, we have no doubt that
consumers viewing the websites would understand that Aubrey
Serial No. 77677661
8
Cosmetics and L’Oreal manufacture and offer both hair care
preparations and cosmetics, and it is because of this
consumer understanding that consumers would believe that
hair care preparations and cosmetics sold under identical
marks emanate from a single source.
We next turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E.I. du Pont
De Nemours & Co., 177 USPQ at 567; and Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant’s and registrant’s marks are clearly
identical in terms of appearance and sound. With regard to
their connotations and commercial impressions, when used
with such hair care preparations as hair spray or gel,
“invisible” suggests that the preparation is not visible
after it is applied. “Invisible” in the context of
“cosmetics” such as facial concealer or foundation also
suggests that the cosmetics are not visible when worn.
This suggestive meaning of the marks and their commercial
impression are therefore the same.3

3 We note that applicant’s mark can also suggest that it can be
used to hold a hair style in place “invisibly,” and that, for
Serial No. 77677661
9
We now consider the strength of registrant’s mark and
the number and nature of similar marks in use for similar
goods. Applicant argues that registrant’s mark is weak
“for many different types of cosmetics and skin products,”
brief at 6, and entitled to only a narrow scope of
protection, which would not block the registration of
applicant’s mark. In this regard, applicant submitted
(i) several third-party registrations into the record for
INVISIBLE formative marks, and (ii) printouts of webpages
from Internet retailers (such as amazon.com) showing use of
INVISIBLE marks on such websites, along with an
accompanying declaration from the individual who accessed
the websites.
Turning first to the third-party registrations,
applicant submitted eight registrations for the following
marks which recite cosmetics or various types of cosmetics,
such as foundation or concealer:4
INVISIBLE LIGHT INVISIBLE TOUCH

cosmetics, may call to mind a blemish- or wrinkle-free
appearance, or the wearer having a naturally flawless complexion.
However, we do not think that these additional meanings are
sufficient to distinguish the marks; consumers are not likely to
engage in a detailed analysis of otherwise identical marks to
find subtle differences in meaning.
4 Office records reflect that the application for INVISIBLE
TATTOO, cited by applicant, has been abandoned, and therefore has
no probative value in this appeal. Moreover, even live
applications are only probative to show that an application has
Serial No. 77677661
10
INVISIBLE STOCKINGS INVISIBLE COVERAGE
INVISIBLE EXPRESSION CLEARLY INVISIBLE
THE INVISIBLE MAN CG INVISIBLE CONCEALER
Third-party registrations are not evidence of use of the
marks in the marketplace, and they do not show that the
public is familiar with them. See Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed.
Cir. 1992); and AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Third-
party registrations, however, may be used in the manner of
dictionary definitions, to show that a term has
significance in a particular industry. See Tektronix, Inc.
v. Daktronics, Inc., 187 USPQ 588, 592 (TTAB 1975), aff’d,
534 F.2d 915, 189 USQP 693 (CCPA 1976). INVISIBLE MAN and
INVISIBLE TOUCH have a different commercial impression from
INVISIBLE per se, and therefore do not affect the strength
of the cited registration. The other registrations,
however, suffice to show that INVISIBLE has significance in
the field of cosmetics, namely, that cosmetics such as a
facial concealer or foundation are not noticeable when
worn, i.e., blemishes and the like become “invisible” with
the assistance of cosmetics.

been filed. Interpayment Services Ltd. v. Docters & Thiede, 66
USPQ2d 1463, 1467 n.6 (TTAB 2003).
Serial No. 77677661
11
As for the webpages from Internet retailers (such as
amazon.com) which offer various products for sale, this
evidence reflects two uses of the mark INVISIBLE without
any additional terms for cosmetics and five uses of
INVISIBLE formative marks for goods such as lotion, face
powders and sealers.5 In total, we count seven third-party
uses of the term “invisible” for goods related to
registrant’s goods.
After carefully considering all of the evidence
bearing on the strength of registrant’s mark, we find that
the record reflects (i) that “invisible” has a suggestive
meaning in connection with certain cosmetics such as a
facial concealer or foundation which renders the term
inherently weak as a source indicator in the cosmetics
field, and (ii) that the public has been exposed to uses by
third parties of INVISIBLE alone or in connection with
other terms as a trademark for cosmetics, which renders the
cited mark weak. In view thereof, applicant has
established that registrant’s mark is not entitled to a
broad scope of protection, and in fact is a weak mark.

5 Because of the differences in the goods, we discount those
websites offering goods such as blemish treatment products, hand
lotion and cream, deodorant, tinted lotion for legs and shaving
gel. We also discount marks which have a different commercial
impression from INVISIBLE, namely, INVISIBLE FOUNDATION OF YOUTH
and ABSOLUTELY INVISIBLE CANDLELIGHT.
Serial No. 77677661
12
Turning next to the trade channels for the goods,
applicant argues that the trade channels are dissimilar,
stating that “while both hair care preparations and
cosmetics may be sold in the same stores, they would not be
sold in the same areas or sections of these stores”; and:
Cosmetics are often found around the entryway of
a store and then follow around the perimeter of
the store in order to entice one into an impulse
buy and drawing one further into the store than
may have been initially intended. Alternatively,
hair care preparations are found within the
myriad of aisles in a store and frequently
require attention to detail as to what exactly
the purpose and the qualities of the product is
to ensure that all of the results are what the
consumer is seeking.

Brief at 16-17. Applicant’s arguments do not persuade us
that the trade channels for registrant’s and applicant’s
goods differ; on the contrary, applicant acknowledges that
both hair care preparations and cosmetics may be sold in
the same stores. As for applicant’s claim that they would
not be sold in the same areas or sections of these stores,
applicant has not submitted any evidence in support of its
contention. Moreover, cosmetics and hair care preparations
are both personal care products used by the same consumer
on a daily basis. Consumers are likely to buy both types
of products, and therefore be exposed to the trademarks of
each. And, since both are beauty products, they may be
purchased at the same time, or the purchase of one may
Serial No. 77677661
13
trigger the intention to buy the other. Further, the
Aubrey Organics and L’Oreal webpages reflect that hair care
preparations and cosmetics may be purchased on the same
websites and are featured side by side. Thus, we find that
the trade channels overlap, and the goods are sold to the
same purchasers.
When we balance the du Pont factors, we consider that
applicant’s and registrant’s marks are identical, and they
are associated with related goods, namely, common consumer
goods which are both used for personal care and grooming,
sold in overlapping trade channels and sold to the same
consumers. These factors outweigh the weakness of the
cited registration, particularly because applicant is
seeking to register the identical mark, and therefore there
is no additional element that might serve to distinguish
them. In view thereof, we conclude that applicant’s mark
INVISIBLE, for hair care preparations, is likely to cause
confusion with registrant’s mark INVISIBLE, for cosmetics.
DECISION: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.