Elixir Medical Aesthetics

Trademark Trial and Appeal Board

Jan 7, 2022

88108449 (T.T.A.B. Jan. 7, 2022)

This Opinion is not a Precedent of the TTAB Mailed: January 7, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Elixir Medical Aesthetics _____ Serial No. 88108449 _____ Delphine James of the Law Office of Delphine James, PLLC for Elixir Medical Aesthetics. Mark Riso, Trademark Examining Attorney, Law Office 108, Kathryn Coward, Managing Attorney. _____ Before Shaw, Coggins and Johnson, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Elixir Medical Aesthetics (“Applicant”) seeks registration on the Principal Register of the standard character mark ELIXIR MEDICAL AESTHETICS for: Retail store and on-line retail store services featuring skin care products, in International Class 35, and Airbrush skin tanning services for humans for cosmetic purposes; Aesthetician services; Cosmetic skin care services, namely, dermalinfusion, chemical peels, dermaplaning, facials, botulinum toxin treatment, dermal fillers, microneedling with and without platelet-rich plasma, platelet-rich plasma injections; Dermatologic laser removal of pigmented lesions, vascular lesions, spider veins, hair, sun spots, wrinkles and fine lines, excessive Serial No. 88108449 - 2 - redness, large pores, scars and uneven texture, telangiectasia, brown spots, and toenail fungus; Laser skin rejuvenation services; Medical clinic providing weight loss solutions, services and programs, nutrition counseling, hormone therapy, including, bioidentical hormone replacement, anti-aging therapy, and natural hormone therapy, medical aesthetic procedures, including, laser hair removal, laser peels, botulinum toxin treatments, microdermabrasion, liposuction, vein treatments, vein therapy, cellulite treatments, body contouring treatments, injectable filler treatments, facials, and skin care; performing non-invasive cosmetic medical procedures; Vitamin therapy, in International Class 44.1 The Examining Attorney partially refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), as to all of the services in International Class 44, on the ground that Applicant’s mark, as used in connection with the services, so resembles the standard character mark ELIXIRSPA2 for “Health spa services, namely, cosmetic body care services featuring massages, facials, providing treatment for skin care conditions, providing programs for overall personal health and wellness, and providing consultations related to cosmetic body care,” also in International Class 44, as to be likely to cause confusion, to cause mistake, or to deceive. 1 Application Serial No. 88108449 was filed September 7, 2018 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on first use of the mark anywhere and in commerce for both classes as early as January 1, 2016. Applicant amended the filing basis of its class 35 services to Section 1(b), 15 U.S.C. § 1051(b), in its petition for reinstatement filed on March 9, 2020. Applicant has disclaimed MEDICAL AESTHETICS. Citations to the prosecution file refer to the USPTO’s Trademark Status & Document Retrieval (“TSDR”) system and identify documents by title and date. References to the briefs and other materials in the appeal record refer to the Board’s TTABVUE online docketing system. 2 Registration No. 3383224 issued February 12, 2008 and has been renewed. Serial No. 88108449 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. The request for reconsideration was denied and, following a remand to amend the identification of services, the appeal resumed. The case is fully briefed. We affirm the refusal to register the mark as to the services in International Class 44. I. Evidentiary Issue In its request for reconsideration, Applicant introduced excerpts from the Lexis/Nexis database consisting of sixty-one third-party federal and state trademark registrations or applications comprising ELIXIR-formative marks.3 The evidence was submitted to show that the term ELIXIR is weak when used in connection with Registrant’s services. The Examining Attorney objected to the Lexis/Nexis evidence in his denial of Applicant’s request for reconsideration on the ground that “the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record.”4 The Examining Attorney maintained the objection in his brief.5 The Examining Attorney’s objection is well taken. Submission of reports from private database searches of third-party registrations, such as the one submitted by Applicant, are not an appropriate way to enter such material into the record, and the Board does not take judicial notice of registrations in the USPTO. See generally 3 Applicant’s Request for Reconsideration dated October 8, 2020, TSDR pp. 2-189. 4 Denial or Request for Reconsider dated November 4, 2020, TSDR p. 1. 5 Examining Attorney’s Br., p. 4, 14 TTABVUE 4. Serial No. 88108449 - 4 - Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992); Cities Serv. Co. v. WMF of Am., Inc., 199 USPQ 493 (TTAB 1978); In re Duofold Inc., 184 USPQ 638 (TTAB 1974); see also Trademark Rule 2.122, 37 C.F.R. § 2.122. Accordingly, these third- party registrations and applications are not of record. Even if the material was of record, it would be of little or no probative value in determining the weakness of the wording ELIXIR in the cited mark for a variety of reasons. The federal registrations would be of little probative value because many of them identify disparate goods and services such as nutritional supplements, cosmetics, perfumes, beverages, software, medical devices, fitness consulting, medical billing, or providing information in the field of health and wellness, all of which appear to be dissimilar to Registrant’s services. Nor has Applicant submitted evidence to establish how the third-party goods and services are related to Registrant’s services. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of limited probative value because the goods identified in the registrations appear to be in fields which are far removed from the goods at issue). Many of the federal registrations also have no probative value to our analysis because they are canceled or expired. See Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1956 n.9 (TTAB 2014) (cancelled and expired registrations are not probative), vacated and remanded on other grounds, 786 F.3d 960, 114 USPQ2d 1827 (Fed. Cir. 2015); Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (cancelled registration does Serial No. 88108449 - 5 - not provide constructive notice of anything). Similarly, the pending and abandoned applications have “no probative value other than as evidence that the application was filed.” In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009) (“[T]he third-party applications submitted by applicant have ‘no probative value other than as evidence that the application was filed.’”) (citation omitted); In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 n.7 (TTAB 2007). The state registrations are of little or no probative value because Applicant has not established that the respective states examine each application for registration on its merits, using the same criteria as those specified in the federal Trademark Act. See Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1588, n.8 (TTAB 1987). In sum, we have not considered the third-party registrations and applications identified in the private database search, but even if we had, they would be of little or no probative value for the reasons outlined above. II. Likelihood of confusion analysis Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence 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., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Serial No. 88108449 - 6 - Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”). Similarity or dissimilarity of the services We begin with the second DuPont factor, “[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration.” DuPont, 177 USPQ at 567. We compare the services as they are identified in the involved application and cited registration. See Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any service that comes within the recitation of services in that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The Examining Attorney argues that the respective services overlap and are commonly provided by a single entity under the same source indicator. As the Examining Attorney notes, “the registration uses broad wording to describe ‘providing treatment for skin care conditions’, which presumably encompasses all services of the type described, including applicant’s more narrow cosmetic skin care services . . . .”6 Where services are broadly identified in an application or registration, 6 Examining Attorney’s Br., p. 10, 14 TTABVUE 10. Serial No. 88108449 - 7 - “we must presume that the services encompass all services of the type identified.” Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the services in an application or registration are broadly described, they are deemed to encompass all the activities of the nature and type described therein). In addition, both Registrant’s and Applicant’s services identify “facials” as part of their body or skin care services. To establish that the respective services are related, the Examining Attorney also introduced a number of web page excerpts showing that medical aesthetic providers and spas routinely offer a wide variety of services ranging from simple cosmetic procedures such as facials and skin care to more sophisticated medical procedures such as injections, chemical skin peels, and laser treatments. The excerpts from Mei Rai Medical Aesthetics, Bella Medical Aesthetics, Bala Aesthetics and Medispa, Medical Aesthetics of Virginia, Generations Medical Aesthetics, Enchanted Medical Aesthetics, Sandra Oulmas, Revolution Medical, Skin Deep Medical Aesthetics, S3 Med Spa, Magnolia Medical Aesthetics, Aria Medical Aesthetics, Novo Aesthetics, Medical Aesthetics of Duluth, Glo Memphis, Redbud Medical Spa, Amara Medical Aesthetics, Z Medical Aesthetics, and Alo Medspa establish that many of the services offered by Applicant and Registrant are provided by the same entity under the same source indicator.7 We find the respective services are in part identical. Further, the internet excerpts are sufficient to establish that the remaining respective services are otherwise related 7 Denial of Request for Reconsideration dated November 4, 2020, TSDR, pp. 2-20. Serial No. 88108449 - 8 - in that they are of a type that commonly originate from the same source under the same service mark, and serve complementary purposes. Applicant nevertheless argues that the services are different because Registrant’s “Spa Services are performed by a technician while [Applicant’s] aesthetic services are performed by a highly trained professional doctor or nurse practitioner who can practice independently of a doctor.”8 This argument is unavailing. As the Examining Attorney notes: [A]pplicant has provided no evidence in support of this contention, neither applicant’s nor registrant’s identified services contain any such restriction, and applicant’s identification of services specifically identifies that they provide aesthetician services and airbrush skin tanning services for humans for cosmetic purposes, both of which are presumably provided by a technician rather than a doctor.9 “Attorney argument is no substitute for evidence.” Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). In the absence of any evidence that Applicant’s services are performed by a highly trained professional doctor or nurse practitioner, or a restriction in the identification limiting the respective services, we see no reason why in-part identical or otherwise related services would not be provided by the same type of staff, whether it is a technician, aesthetician, nurse practitioner, or doctor. Moreover, it is well settled that Applicant’s and Registrant’s services do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. On-line Careline Inc. v. Am. Online 8 Applicant’s Br., p. 2, 6 TTABVUE 3. 9 Examining Attorney’s Br., p. 11, 14 TTABVUE 11. Serial No. 88108449 - 9 - Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). Rather, it is sufficient if, as here, the respective services are related in some manner or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). The DuPont factor relating to the similarity of the services favors a finding of likelihood of confusion. Established, likely-to-continue channels of trade and classes of consumers. Because the identification of services in the application and registration do not include any restrictions or limitations as to trade channels, we presume the respective services are or would be marketed in all normal trade channels for such services. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Thor Tech, 90 USPQ2d at 1638 (“We have no authority to read any restrictions or limitations into the registrant’s description of goods [or services].”); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). As discussed above, the services are in part identical, and the Examining Attorney’s internet evidence establishes that the respective services are, at least in part, offered through the same channels of trade to the same consumers. Further, because the services are in part identical, we may presume that the channels of trade and classes of purchasers for Applicant’s and Registrant’s services are identical as well. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Serial No. 88108449 - 10 - Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). The DuPont factors relating to the channels of trade and classes of consumers favor a finding of likelihood of confusion. Consumer sophistication Applicant argues that consumer sophistication suggests there would be no confusion between the respective services: [C]onsumers will investigate the providers of the aesthetic services prior to going to the facility. The advertising media of record makes it a point to discuss the qualifications and the services provided by the facilities. . . . There is no evidence of a cloase [sic] relationship between a SPA services and medical aesthetic services.10 This argument is unavailing. It is well settled that we must make our determinations as to a likelihood of confusion based on the services as they are identified in the application and cited registration. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); Stone Lion, 110 USPQ2d at 1161. Applicant’s identification of services covers a broad range of services and contains no limitations that would suggest its consumers are sophisticated. Applicant may not restrict the scope of its services or the scope of the services covered in the registration 10 Applicant’s Br., p. 3, 6 TTABVUE 4. Serial No. 88108449 - 11 - 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). Nor do we have any evidence regarding the price of the various services offered by the parties, which might indicate an elevated level of care in purchasing the services. Applicant’s services, therefore, could be offered to, and used by, less sophisticated consumers seeking simpler skin treatment services such as spray tanning or facials. Stone Lion, 110 USPQ2d at 1163 (“Board precedent requires the decision to be based on the least sophisticated potential purchasers.”) (internal citations omitted). This DuPont factor, consumer sophistication, is neutral. Strength of the Cited Mark “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace [or commercial] strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). For likelihood of confusion purposes, “the strength of a mark is not a binary factor, but varies along a spectrum from very strong to very weak.” In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003). Regarding the conceptual strength of Registrant’s mark, Applicant argues that “the term Elixir means ‘medicinal concoction’. See Merriam Webster Dictionary. Because the Elixir term is related to and is used in the health industry, the consumer Serial No. 88108449 - 12 - would be trained to look at the other elements of the trademarks which are Spa and Aesthetic services.”11 In response, the Examining Attorney argues that: (1) applicant has not attached this [Merriam Webster] definition, (2) neither applicant’s, nor registrant’s services consist of or involve medicinal concoctions, and (3) as mentioned above, the remainder of both applicant’s and registrant’s marks are descriptive of, or generic for, their identified services and, although there is no mechanical test to determine the dominant element of a mark, consumers would be more likely to perceive a distinctive term, even if it were suggestive as applicant argues ELIXIR should be interpreted, rather than these generic or descriptive terms as the source-identifying feature of the mark.12 We take judicial notice of the referenced Merriam-Webster’s Dictionary which defines “elixir” as:13 1 a (1) : a substance held capable of changing base metals into gold (2) : a substance held capable of prolonging life indefinitely b (1) : cure-all (2) : a medicinal concoction 2 : a sweetened liquid usually containing alcohol that is used in medication either for its medicinal ingredients or as a flavoring 3 : the essential principle As the Examining Attorney points out, Applicant’s argument that ELIXIR “is related to and is used in the health industry” is unsupported by any evidence. Given the various meanings of “elixir” we think it likely that ELIXIRSPA, when used in connection with cosmetic body care services, is more likely to be associated with 11 Id. at 4, 6 TTABVUE 5. 12 Examining Attorney’s Br., p. 9, 14 TTABVUE 9. 13 Https://www.merriam-webster.com/dictionary/elixir. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). Serial No. 88108449 - 13 - ELIXIR’s “magical” connotations rather than its “medicinal concoction” meaning. That is, in the absence of any evidence that “elixirs” are used in the provision of Registrant’s services, ELIXIR is at least suggestive of Registrant’s services. Suggestive marks are inherently distinctive and should be accorded the scope of protection to which inherently distinctive marks are entitled. See Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 750 (TTAB 1986) (“[T]here is nothing in our trademark law which prescribes any different protection for suggestive, nondescriptive marks than that which is accorded arbitrary and fanciful marks”); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“[T]he fact that a mark may be somewhat suggestive does not mean that it is a ‘weak’ mark entitled to a limited scope of protection”). Being at least suggestive, ELIXIR is the most dominant portion of both Registrant’s and Applicant’s marks which are comprised of ELIXIR as the first word followed by a descriptive word or words. See Dixie Rests., 41 USPQ2d at 1533- 34 (disclaimed and generic word less dominant); Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”). Regarding the marketplace strength of Registrant’s mark, as noted above we have no evidence of third-party registration or use of ELIXIR-formative marks. In view of the foregoing, we find that Applicant has not established that the term ELIXIR or the cited mark as a whole, when used in connection with cosmetic body care services, is weak or diluted. The cited mark, which is registered on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the Serial No. 88108449 - 14 - Trademark Act, is therefore entitled to the normal scope of protection accorded an inherently distinctive mark. Accordingly, the strength of the cited mark is neutral in our likelihood of confusion analysis. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression We next turn to the similarity of the marks in “appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). Applicant’s mark, ELIXIR MEDICAL AESTHETICS, in standard characters, is similar to the mark in the cited registration, ELIXIRSPA, also in standard characters, in that both marks begin with the term ELIXIR followed by descriptive wording commonly used in the beauty services industry. As established by the Examining Attorney’s internet evidence, the terms MEDICAL AESTHETICS and SPA are widely used in the skin care industry and are thus generic for, or merely descriptive of, the respective services. Indeed, Applicant’s specimen of use shows that the term SPA is somewhat interchangeable with MEDICAL AESTHETICS because Applicant uses the term SPA to identify its “medical spa” services, “spa policy”, and in its URL: Serial No. 88108449 - 15 - Furthermore, it is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See, e. g., In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (citing Dixie Rests., 41 USPQ2d at 1533-34). Thus, consumers of the services with which the marks are used are likely to focus on the identical and distinctive lead word ELIXIR in identifying the source of the services. See, e.g., id. (the marks DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB “reveal an identical structure and a similar appearance, sound, connotation, and commercial impression” and these “similarities Serial No. 88108449 - 16 - go a long way toward causing confusion among consumers”); Palm Bay Imps., 73 USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). When we consider the marks in their entirety, we find they are very similar in connotation and commercial impression, and somewhat similar in appearance and sound, due to the dominance of the term ELIXIR followed by generic or descriptive wording. Dixie Rests., 41 USPQ2d at 1533 (marks are similar where the dominant portions are identical). Conclusion Because the respective services are in part identical and otherwise related, travel in the same trade channels to the same classes of consumers, and the marks are similar, there is a likelihood of confusion between Applicant’s mark, ELIXIR MEDICAL AESTHETICS, for the recited services, and the cited mark, ELIXIRSPA. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act as to the services in International Class 44 is affirmed. The application will proceed as to the services in International Class 35.