DrSlym GmbH

Trademark Trial and Appeal BoardOct 30, 2017

No. 86780804 (T.T.A.B. Oct. 30, 2017)

This Opinion is Not a Precedent of the TTAB Mailed: October 30, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re DrSlym GmbH _____ Serial No. 86780804 _____ Timothy J. Maier of Maier & Maier PLLC, for DrSlym GmbH. Marc J. Leipzig, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Cataldo, Ritchie and Gorowitz, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: DrSlym GmbH (“Applicant”) seeks registration on the Principal Register of the mark DRSLYM (in standard characters) for, inter alia, Fruit drinks and fruit juices; Mineral water and carbonated waters; non-alcoholic, isotonic drinks containing vitamins; Caffeinated cold drinks in the nature of soft drinks; Energy drinks; Syrups for making beverages; preparations for making beverages, namely, fruit drinks in International Class 32; and Serial No. 86780804 - 2 - Advice and Consulting services in the field of health, nutrition, and dieting in International Class 44.1 The Trademark Examining Attorney issued a partial refusal of registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as to the goods recited in Class 32 and the services recited in Class 44 of the involved application, on the ground of likelihood of confusion with the following registrations, issued on the Principal Register to different entities: As to the Class 32 goods - Registration No. 4073105 (‘105 Reg.) for the mark SLYM (in standard characters) for Coffee; tea; beverages made of coffee; beverages made of tea; prepared cocoa and cocoa-based beverages; ginger; pasta; noodles; processed cereals prepared for human consumption; sauces; spices; natural sweeteners; seasoning; instant pudding mixes; instant custard mixes; cake mixes; and powder for making soft drinks or tea-flavored beverages in International Class 30;2 and As to the Class 44 services - Registration No. 4440499 (‘499 Reg.) for the mark DR. SLIM (in standard characters) for Consulting to individuals and communities engaged in group weight loss programs; Providing a website featuring information and advice in the fields of diet, weight loss, diet planning and lifestyle wellness; Providing information on maintaining a healthy lifestyle and losing weight; Providing weight loss program services; Providing weight loss programs and cosmetic body care services in the nature of non-surgical body contouring; Weight management services, namely, providing weight loss and/or weight maintenance programs; Weight reduction diet planning and supervision in International Class 44.3 1 Application Serial No. 86780804 was filed on October 7, 2015, based upon Applicant’s allegation as to all classes of goods and services of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act and under Section 44(e) of the Trademark Act based upon European (EU) Office for Harmonization in the International Market (OHIM) Registration No. 014458475 issued on January 18, 2015. The application also identifies goods in International Class 5 that are not subject to the instant refusal of registration. 2 Issued on December 20, 2011. Section 8 affidavit accepted; Section 15 affidavit acknowledged. 3 Issued on November 26, 2013. Serial No. 86780804 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. Likelihood of Confusion 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). We discuss the du Pont factors for which Applicant and the Examining Attorney have presented evidence and arguments. Strength of the Marks in the Cited Registrations Applicant argues that the differences between the marks at issue must be “viewed in light of other registered marks that use the terms DR and SLIM for similar services.”4 In support of its contention, Applicant introduced into the record with its August 4, 2016 response to the Examining Attorney’s first Office Action a definition of “SLIM.” According to this definition, “SLIM” may be defined, inter alia, as: “small in girth or thickness in proportion to height or length; slender; to lose or cause to lose weight, as by dieting or exercise.”5 Applicant further has introduced into the record 4 8 TTABVUE 16. Page references herein to the application record refer to the .pdf version of the United States Patent and Trademark Office (USPTO) Trademark Status & Document Retrieval (TSDR) system. References to the briefs, Applicant’s request for reconsideration and the Examining Attorney’s denial thereof refer to the Board’s TTABVUE docket system. 5 Thefreedictionary.com/slim at TSDR 23. Serial No. 86780804 - 4 - with its March 13, 2017 Request for Reconsideration copies of the following use-based third-party registrations, all issued on the Principal Register to different entities (all marks are in standard characters unless otherwise noted:6 Registration No. 3472277 for the mark BESLIM for “health care services, namely, disease management and wellness programs for the purpose of disease, weight, wellness and health management; weight reduction, diet planning, and supervision for the purpose of disease, weight, wellness and health management; Registration No. 4678879 for the mark THE SLIM CO for “providing weight loss programs and cosmetic body care services in the nature of non-surgical body contouring;” Registration No. 4662965 for the mark DR. FOOD for “Fat reduction, weight reduction and weight management services, namely, providing weight loss and weight maintenance programs; providing services for weight reduction planning, treatment and supervision; consulting services in the fields of health, nutrition, weight reduction, and weight management; cosmetic body care services in the nature of non-surgical body contouring services; healthcare services; medical clinics; medical screening; nutritional education; providing information about the therapeutic properties of weight loss drugs, dietary supplements, and nutrition; providing a website which features information about weight loss, health, fitness evaluation for medical purposes, and nutrition;” Registration No. 4669934 for the mark displayed below (RAPID WEIGHT LOSS SPA disclaimed) for “providing clinical weight management and dietary planning services;” and Registration No. 4618416 for the mark DR PAL PROGRAM (PROGRAM disclaimed) f o r “Providing weight loss program services; providing healthy lifestyle and nutrition services, namely, personal 6 4 TTABVUE 27-36. Serial No. 86780804 - 5 - assessments, personalized routines, maintenance schedules, and counseling; providing information on maintaining a healthy lifestyle and losing weight.”7 Applicant also made of record a list of third-party registrations (consisting of the serial and registration number, the word portion of the mark, and whether the registration is “Live” or “Dead”) for marks containing the term “DR” or “SLIM” obtained from the Trademark Electronic Search System (“TESS”) database of the USPTO.8 We observe that while this evidence is in an improper format, it nonetheless was timely filed and, moreover, because the Examining Attorney did not object to this list or advise Applicant that copies of the registrations were necessary, we will consider the list as being of record. See TBMP § 1207.03 (June 2017). We will not, however, consider more than the information provided by Applicant. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 n.6 (TTAB 2011) (Board considered TESS listings for whatever probative value they had); In re 1st USA Realty Prof'ls, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (Board treated listing of particulars of third-party applications/registrations submitted by applicant as stipulated into record only to the extent that the specific data provided by applicant was considered); In re Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513, n.3 (TTAB 2001) (listing of registration information considered for whatever probative value it might have, with Board noting 7 Applicant also introduced into the record third-party application Serial No. 77290933, abandoned on January 2, 2012. (Id. at 22.) This abandoned application has no probative value because it is evidence only of the fact that it was filed. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016) (third-party application is “evidence only that the application was filed on a certain date”); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). 8 Id. at 22-6. Serial No. 86780804 - 6 - that the listing did not indicate whether registrations issued on the Principal or the Supplemental Register). A mere listing of third-party marks, without any accompanying indication of the goods and/or services associated therewith, has little, if any, probative value because there is no information by which we may assess how many of these registrations, if any, identify goods or services related to those at issue herein.9 See TBMP § 1208.02 (June 2017), and the authorities cited therein. For this reason, while we will consider this list of registrations for such information as it provides, its probative value is very limited. Id. With regard to the third-party registration evidence, we note that the “existence of [third party] registrations is not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nevertheless, in determining the degree of weakness, if any, in the shared terms, we must “adequately account for the apparent force of [third-party use] evidence,” regardless of whether “specifics” pertaining to the extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium 9 The listing does include the cited ‘499 Reg. as well as the five third-party registrations discussed above. However, we can make no inference from these registrations regarding the additional registrations included only in the TESS list. Serial No. 86780804 - 7 - Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), citing to Juice Generation, 115 USPQ2d at 1674. Of the five third-party registrations introduced into the record by Applicant, we observe that none of them consist solely of the term “DR” or “SLIM/SLYM” or consist of a formative of both of the shared terms “DR” and “SLIM/SLYM.” Registration No. 3472277 for the mark BESLIM includes the additional term BE that creates visual, aural and connotative dissimilarities from the involved marks. Registration No. 4669934 for the mark DR. SKINNY RAPID WEIGHT LOSS SPA and design does not contain the term SLIM and also includes additional wording and design elements that markedly differ in appearance and sound from the involved marks. Registration No. 4678859 for the mark THE SLIM CO also differs in appearance, sound and connotation from the involved marks. Registration No. 4662965 for the mark DR. FOOD contains the term FOOD that is not present in the involved marks and does not contain the term SLIM, distinguishing it in appearance and sound, as well as connotation. Registration No. 4618416 for the mark DR PAL PROGRAM similarly does not include the term SLIM and contains additional wording not present in any of the involved marks, leading to differences in appearance, sound and connotation. As a result, notwithstanding that the third-party registrations recite services relating to dieting, wellness and weight loss, the marks in the third-party registrations are less similar to the involved marks than those marks are to each other. With regard to the TESS printout of third-party registrations, as noted above because this printout fails to indicate the goods or Serial No. 86780804 - 8 - services associated with the listed marks, the list of marks has very little probative value in assessing the relative strength of the marks in the cited registrations. The totality of the evidence presented by Applicant fails to show that the terms “DR,” “SLYM” or “SLIM” as they appear in the marks SLYM or DR SLIM are weak and diluted in connection with dietary and weight loss programs. The third-party examples of registrations may be used to demonstrate that DR or SLYM/SLIM is suggestive; however, they do not justify the registration of another confusingly similar mark for related goods or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). See also Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (“[T]hird party registrations relied on by applicant cannot justify the registration of another confusingly similar mark”). Therefore, while we can agree based upon the dictionary definition of record and third-party registrations that the term SLIM or SLYM in the cited marks may be suggestive of the identified goods or services, the evidence does not show that it is so highly suggestive as to narrow the scope of protection to such extent that it would allow registration of Applicant’s mark. Also, it has often been stated that each case must stand on its own record and, in any event, the Board is not bound by the actions of prior examining attorneys. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the board or this court.”). Thus, we find based on this record that the mark in the cited registration is not so weak as to be entitled to only a narrow scope of protection. Serial No. 86780804 - 9 - Relatedness of the Goods/Services, Trade Channels and Classes of Purchasers Next, we turn to the du Pont factors involving the similarity or dissimilarity of Applicant’s goods and services and the respective goods and services in the cited registrations, their channels of trade and purchasers. It is settled that in making our determination, we must look to the goods and services identified in the application vis-à-vis those recited in the cited registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Integrated Embedded, 120 USPQ2d 1504, 1514 (TTAB 2016); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). It is not necessary that the respective goods and services be competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient that the respective goods and services are related in some manner, or that the conditions and activities surrounding the marketing of the goods and services are such that they would or could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). See also On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). The issue here is not whether purchasers would confuse the goods and services, but rather whether there Serial No. 86780804 - 10 - is a likelihood of confusion as to the source of these goods and services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In support of his contention that the goods identified in Class 32 of the involved application and the cited ‘105 Reg. are related, the Examining Attorney introduced into the record with his March 31, 2017 denial of Applicant’s Request for Reconsideration copies of 18 used-based, third-party registrations for marks identifying goods of a type recited in the involved application and ‘105 Reg. The following examples are illustrative:10 U.S. Registration No. 4668590, KEEP IT STEAZY for “energy drinks, soft drink beverages; nonalcoholic beverages, namely, carbonated beverages” and “tea-based beverages.” U.S. Registration No. 4965046, A HEALTHY DOSE OF WONDERFUL for goods including “fruit juice; fruit juice concentrate; fruit drinks” and “iced teas; iced teas containing fruit juice; non-alcoholic iced tea.” U.S. Registration No. 5153452, BOLTHOUSE FARMS for “fruit drinks and fruit juices; smoothies; fruit-based beverages” and “coffee-based beverages; tea-based beverages; tea-based beverages containing fruit and vegetable juices.” U.S. Registration No. 5046050, STUDY FUEL for “sports drinks and energy drinks” and “cappuccino, cocoa, and tea.” U.S. Registration No. 4860555, GET YOUR BUZZZZ ON for goods including “mineral waters, aerated waters and carbonated waters…soft drinks, namely, carbonated and non-carbonated soft drinks; energy drinks and coffee-flavored soft drinks . . . fruit juices and fruit drinks . . . syrups, powders, concentrates and effervescent tablets for making non-alcoholic soft drinks and beverages” and “tea and tea based beverages.” 10 5 TTABVUE 8-58. Serial No. 86780804 - 11 - U.S. Registration No. 4712578, geometric tea leaves design for “energy drinks; soft drink beverages; non-alcoholic beverages, namely, carbonated beverages” and “tea-based beverages; tea-based beverages with fruit flavoring; iced tea.” As a general proposition, although use-based, third-party registrations alone are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless may have probative value to the extent they may serve to suggest that the goods are of a kind that emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant argues that the goods at issue are classified in different International Classes, and that “While Applicant’s and Registrant’s goods may be sold by the same companies, as demonstrated by the Trademark Attorney, Applicant respectfully submits that various food and beverage items are not necessarily identical and can be sufficiently dissimilar.”11 The system for classification of goods and services was created for the convenience of the Office, and has no bearing on the issue of likelihood of confusion. Trademark Act Section 30 provides in pertinent part that “The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.” 15 U.S.C. § 1112. The Court of Appeals for the Federal Circuit has stated that “classification is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification. Cf. 15 U.S.C. § 1112….” 11 8 TTABVUE 14. Serial No. 86780804 - 12 - Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993); see also In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (“[T]he fact that goods are found in different classes has no bearing on the question of likelihood of confusion. The separation of goods into the various classes of the classification schedule is merely a convenience for the Office and is not intended as a commentary on their relationship to one another in the marketplace.”); Nat’l Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990) (“The classification system was established for the convenience of the Office rather than to indicate that goods in the same class are necessarily related or that classification in different classes indicates that they are not related.”). In addition, and as noted above, Applicant’s goods need not be identical, or even competitive, with the goods in the ‘105 Reg. in order to support a finding of likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d at 1724). The evidence of record, as acknowledged by Applicant, shows that Applicant’s goods and the goods in the ‘105 Reg. may be sold by the same companies. This evidence supports a finding that the involved goods are related, and Applicant neither explains nor introduces any evidence to support its contention that they are “sufficiently dissimilar.”12 In view of the evidence of record, we find that the goods identified in the application and the cited ‘105 Reg. are related and complementary in nature. Cf. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. 12 Id. Serial No. 86780804 - 13 - Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (holding bath sponges and personal products, such as bath oil, soap, and body lotion, to be related because they are complementary goods that are likely to be purchased and used together by the same purchasers). In support of his position that the goods identified in the application and ‘105 Reg. may be encountered in the same channels of trade, the Examining Attorney introduced into the record screenshots from the following internet websites, showing various beverage products offered for sale on the same webpages: instacart.com/kroger/departments/1117: wide variety of beverages, including coffee-, energy-, tea- and fruit-based beverages; walmart.com/cp/beverages/: coffee, juice, tea, water, soft drinks, energy drinks; samsclub.com/sams/beverages/1499.cp: coffee, juice, tea, water, soft drinks, energy drinks.13 The Examining Attorney’s evidence shows that the websites for three stores that offer a wide variety of goods, and some services, offer the goods identified in the involved application and ‘105 Reg. Certainly, this evidence could have been stronger. Nonetheless, it suffices to show that the goods at issue are available in such trade channels. Furthermore, while Applicant argues that “the goods and services listed in 13 Id. at 59-69. Serial No. 86780804 - 14 - the present application do not travel in the same channels of trade,”14 Applicant submits no evidence in support of its position. In addition, it is not necessary that the respective goods and services move in the same channels of trade to support a holding of likelihood of confusion. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d at 1724). Based upon the evidence of record, we find that Applicant’s goods are related to the goods identified in the ‘105 Reg., and may be encountered in at least one common channel of trade.15 With regard to the services recited in Class 44 of the involved application, we turn to the cited ‘499 Reg. for the following services: Consulting to individuals and communities engaged in group weight loss programs; Providing a website featuring information and advice in the fields of diet, weight loss, diet planning and lifestyle wellness; Providing information on maintaining a healthy lifestyle and losing weight; Providing weight loss program services; Providing weight loss programs and cosmetic body care services in the nature of non-surgical body contouring; Weight management services, namely, providing weight loss and/or weight maintenance programs; Weight reduction diet planning and supervision. The broadly worded “advice and consulting services in the field of health, nutrition, and dieting” identified in the involved application includes the “consulting to individuals and communities engaged in group weight loss programs” identified in the cited ‘499 Reg. Put another way, Applicant’s consulting in the field of dieting 14 8 TTABVUE 14. 15 We further observe that in the absence of any recited limitations in the respective identifications, the goods would be found in the usual channels of trade which would include grocery stores and health food stores and would be sold to the usual classes of consumers, which would include ordinary consumers. Serial No. 86780804 - 15 - encompasses the more narrowly recited “consulting to individuals and communities engaged in group weight loss programs.” As a result, Applicant’s services, as identified, are legally identical in part to those identified in the cited ‘499 Reg.16 Because the services are legally identical in part and there are no recited restrictions as to their channels of trade or classes of purchasers, we must presume that the legally identical services are, or will be, sold in all the usual channels of trade to all the usual purchasers for such services, and that the channels of trade and the purchasers for Applicant’s services and the services in the cited ‘499 Reg. would be the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003); Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910, 1913 (TTAB 2000); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). Similarities and Dissimilarities of the Marks We turn to a comparison of Applicant’s DRSLYM mark and the SLYM mark in the ‘105 Reg. and the DR. SLIM mark in the ‘499 Reg. for similarities and dissimilarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital 16 In its brief, Applicant does not argue that the services at issue are dissimilar. Nor did Applicant submit a reply brief presenting arguments, inter alia, regarding the relatedness of the services. We further observe that the other services recited in the ‘499 Reg., namely, “Providing a website featuring information and advice in the fields of diet, weight loss, diet planning and lifestyle wellness; Providing information on maintaining a healthy lifestyle and losing weight; Providing weight loss program services; Providing weight loss programs and cosmetic body care services in the nature of non-surgical body contouring; Weight management services, namely, providing weight loss and/or weight maintenance programs; Weight reduction diet planning and supervision” (emphasis added) appear to be related on the face of their identification to Applicant’s “Advice and Consulting services in the field of health, nutrition, and dieting.” However, in the absence of evidence of such a relationship, we decline to so find. Serial No. 86780804 - 16 - Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1160 (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)). The similarity or dissimilarity of the marks is determined based on the marks in their entireties, and the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion”). While we have placed the marks next to one another for comparison purposes, consumers may not necessarily encounter the marks in such proximity and must rely upon their recollections thereof. In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988). In this case, Applicant’s DRSLYM mark is similar to the mark SLYM in the ‘105 Reg. to the extent that the term comprising the registered mark, SLYM, is fully encompassed in Applicant’s mark. The term “SLYM” common to both marks appears, particularly in the context of the identified goods and services, to be a novel spelling of the term “slim,” and there is no evidence of record to suggest that the term has a different connotation in either mark. Applicant’s mark also includes the term “DR” Serial No. 86780804 - 17 - as its first term. Applicant correctly argues that often “Customers are more likely to focus on the first word, prefix, or syllable in a trademark or service mark and therefore the first word, prefix, or syllable is the most ‘prominent feature’ of a mark. (citations omitted.).”17 However, the presence of the term “DR” in Applicant’s DRSLYM mark does little to diminish the similarity with the SLYM mark in the ‘105 Reg. The marks DR SLYM and SLYM, both featuring the same novel spelling of “slim,” are highly similar in appearance and sound, and both connote goods or services intended for healthy and weight conscious consumers. We note in addition that adding a term to a registered mark has often been found insufficient to overcome the similarities between marks. See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (CCPA 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar). As a result, the marks convey highly similar commercial impressions and appear to be variations of each other, but nonetheless pointing to a common source. Turning now to the DR. SLIM mark in the ‘499 Reg., we find Applicant’s DRSLYM mark to be nearly identical in appearance. Both marks consist of the term “DR” and “SLIM” in its traditional spelling or “SLYM” in novel spelling. The marks are identical in sound, and both connote a doctor who helps consumers lose weight or stay slender. The only other difference between the marks is the presence of a space and 17 8 TTABVUE 12. Serial No. 86780804 - 18 - a period in the mark in the ‘499 Reg. The presence or absence of a space between virtually the same words is not a significant difference. Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”). In addition, the presence of mere punctuation does not create a significant difference between marks consisting of otherwise identical terms. Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.4 (TTAB 1978) (FAST-FINDER with hyphen is in legal contemplation substantially identical to FASTFINDER without hyphen); Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989) (marks PRO- PRINT and PROPRINT identical but for hyphen and confusion likely); In re Burlington Industries, Inc. 196 USPQ 718, 719 (TTAB 1977) (“An exclamation point does not serve to identify the source of the goods). Cf. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637 (TTAB 2006) (presence of hyphen does not change descriptive nature of the term). We find as a result that Applicant’s DRSLYM mark is nearly identical to the DR. SLIM mark in the ‘499 Reg. In coming to our determination on the similarity of the marks, we again emphasize that the applicable test is not whether the marks can be distinguished when subjected to a side-by-side comparison. Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d Serial No. 86780804 - 19 - 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Rather, the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Summary We have considered all of the arguments and evidence of record, including those not specifically discussed herein, and all relevant du Pont factors. In view of the similarity of Applicant’s DRSLYM mark and the registered marks SLYM in the ‘105 Reg. and DR. SLIM in the ‘499 Reg.; the relatedness of Applicant’s Class 32 goods and the Class 30 goods recited in the ‘105 Reg. and the absence of limitation to their channels of trade and classes of customers; the in-part legal identity of Applicant’s services and the services recited in the ‘499 Reg. and the presumption that such services travel in the same trade channels, we find that Applicant’s mark so closely resembles the registered marks as to be likely to cause confusion, mistake or deception as to the source of Applicant’s Class 32 goods and Class 44 services. Applicant’s evidence regarding the asserted weakness of the marks in the cited registrations is not sufficient to mitigate in favor of a finding that confusion is unlikely. Decision: The refusal to register Applicant’s mark DRSLYM in Class 32 and Class 44 is affirmed. The application will proceed to registration with regard to the goods identified in Class 5 that are not subject to the instant refusal of registration.