Cosway (M) Sdn. Bhd. (Company No. 50118-A)

Trademark Trial and Appeal BoardOct 22, 2012

No. 77894877 (T.T.A.B. Oct. 22, 2012)

Mailed: October 22, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Cosway (M) Sdn. Bhd. (Company No. 50118-A) ________ Serial No. 77894877 _______ Martin R. Geissler and Scott T. Wakeman of Muncy Geissler Olds & Lowe PLLC for Cosway (M) Sdn. Bhd. (Company No. 50118-A) Barney L. Charlon, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Seeherman, Holtzman and Shaw, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Cosway (M) Sdn. Bhd. (Company No. 50118-A), a corporation of Malaysia, has appealed from the final refusal of the trademark examining attorney to register BIOGLO and design, as depicted below, as a trademark for the following goods: Aromatics, namely, perfumes; beauty masks; bleaching preparations for cosmetics purposes; THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77894877 2 cosmetics; creams, namely, face cream, cosmetic cream, skin creams, beauty cream; deodorant for personal use; depilatories; depilatory preparations; extract of flowers, namely, perfumes, extracts of flowers sold as components of cosmetics; hair colorants; hair dyes; hair lotions; lipsticks; lotions, namely, beauty lotions, face lotions, skin lotions, body lotions, hand lotions; make up; make up removing preparations; cleansing milk for toilet purposes; oil for perfumes and scents; cosmetic pencils; eyebrow pencils; body talcum powder; shampoos; skin care, namely, non-medicated skin care preparations; soap; toiletries, namely, non- medicated toiletries; slimming gels and shower salt in the nature of bath and shower gels and salts not for medical purposes, all the foregoing goods not being for use on teeth or gums.1 The mark is described as consisting “of the stylized term ‘BIOGLO’ with the first letter ‘O’ containing a leaf.” Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the mark BIO GLOW, in typed form, registered for “dentifrice for teeth and gums,”2 1 Application Serial No. 778894877, filed December 16, 2009, based on Section 1(b) of the Trademark Act (intent-to-use). 2 Registration No. 2132070, issued January 27, 1998; Section 8 affidavit accepted; Section 15 affidavit received; renewed. Ser. No. 77894877 3 that, if used for applicant’s identified goods, it is likely to cause confusion or mistake or to deceive. 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). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, 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). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). The marks are identical in pronunciation and connotation, and very similar in appearance and commercial impression. They both consist of the term BIOGLO(W). Although the registered mark has the additional letter “W” and a space between BIO and GLOW, while applicant’s mark has the design of a leaf, the test is not whether the marks can be distinguished when subjected to a side-by-side comparison. Rather, the emphasis must be on the recollection of the average purchaser, who normally retains Ser. No. 77894877 4 a general rather than a specific impression of trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because “GLO” will be perceived as the equivalent of “GLOW,” consumers are not likely to remember or note the presence or absence of the “W” or the space. As for the leaf design, in general when a mark comprises both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). That is true in this case, since these products may be recommended by word of mouth. Further, the design element does not particularly stand out in applicant’s mark since it is incorporated within the letter “O”; it plays a very minor role in the impression of the mark. Overall, the marks convey the same commercial impression. The du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. With respect to the goods, the examining attorney has made of record a substantial number of use-based third- party registrations showing that entities have adopted a single mark for at least some of the goods listed in applicant’s application and the dentifrices listed in the cited registration. See, for example, Registration No. Ser. No. 77894877 5 3229103 for, inter alia, perfumes, cosmetics, skin lotion, shampoos and dentifrices; Registration No. 3170056 for, inter alia, perfumery, cosmetics, hair lotions and dentifrices; Registration No. 2498134 for, inter alia, perfumes, color cosmetics, hair shampoo and dentifrices; and Registration No. 3445848 for, inter alia, perfume, cosmetics, shampoos and dentifrices. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In addition, the examining attorney has submitted evidence that goods of the type identified in applicant’s application and the cited registration are sold under a single mark, and through the same channels of trade. For example, the website Four Seasons, www.fourseasonsproducts.com, features the Argiletz company’s soap, shampoo and toothpaste3; the website at www.miorganicproducts.com features “miessence” brand toothpaste, soap and body cream; the Shaklee website, 3 “Dentifrice” is defined as “a paste, powder, liquid or other preparation for cleaning the teeth.” Definition from Dictionary.com, submitted with October 11, 2010 Office action. That is, “toothpaste” is encompassed by the term “dentifrice.” Ser. No. 77894877 6 http://uss.myshaklee.com, features dentifrice and also lists as categories for “healthy beauty” such cosmetics as “blush,” “eyeshadows” and “eye pencil,” as well as “cleanse,” advanced moisture” and “body care”; and the Burt’s Bees website, www.burtsbees.com, lists as product categories “face,” “hair” and “toothpaste.” Applicant has argued that its goods and those of the registrant are specifically different, pointing out that it has amended its identification to make clear that its goods are specifically “not being for use on teeth or gums.” However, it is well established that it is not necessary that goods or services be identical or even competitive in nature in order to support a finding of likelihood of confusion, it being sufficient that the goods or services 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 circumstances that would give rise, because of the marks employed thereon, to the mistaken belief that they originate from or are in some way associated with the same producer. In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). The evidence submitted by the examining attorney demonstrates that applicant’s and the registrant’s goods are related. It also demonstrates Ser. No. 77894877 7 that the goods travel in the same channels of trade. These du Pont factors favor a finding of likelihood of confusion. In its brief applicant has stated that the only evidence before the Board pertains to the du Pont factors of the similarity of the marks and goods. As noted above, the trade channels are also the same. To the extent that any other du Pont factors are applicable, we treat them as neutral. After considering all the evidence of record, we find that applicant’s mark for its identified goods is likely to cause confusion with the cited registration. Decision: The refusal of registration is affirmed.