Europeenne de Produits de Beaute

Trademark Trial and Appeal Board

Apr 3, 2002

No. 75934127 (T.T.A.B. Apr. 3, 2002)

4/3/02

Paper No. 12
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Europeenne De Produits de Beaute
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Serial No. 75/934,127
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Mary Ann DeCarolis for Europeene De Produits de Beaute.

Brett M. Tolpin, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______

Before Simms, Cissel and Holtzman, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On February 24, 2000, applicant, a French corporation,
filed the above-referenced application to register the mark
“NUTRIACTIVE” on the Principal Register for “facial scrub,
make-up remover, skin toner, astringent, moisturizing
cream, lotions and gels, anti-wrinkle cream, skin toners
and astringents, skin cleansers, make-up remover1,” in Class

1 We are unable to discern why applicant waa not required to
delete one of the two references to “make-up remover,” but that
issue is not before us in this appeal. We note, however, that if
applicant were to prevail in an appeal of our ruling in this
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
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3. The basis for filing the application was applicant’s
assertion that it possessed a bona fide intention to use
the mark in commerce in connection with the identified
goods.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that if applicant were to use the mark it
seeks to register in connection with the goods specified in
the application, applicant’s mark would so resemble the
mark “NUTRI-ACTIVES,” which is registered2 for “herbal
concentrates for dietary supplement; vitamin supplements of
herbal or organic compounds,” in Class 5, that confusion
would be likely.
In support of the refusal to register, the Examining
Attorney included copies of excerpts retrieved from an
automated search of publications. She argued that this
evidence establishes that the goods are related. The first
article indicates that skin toner, cologne and skin cream
contain vitamins. The second article contains recipes for
skin care products based on fruits and vegetables. A third
article discusses exfoliating skin creams which contain

appeal, the appliction would have to be remanded to the Examining
Attorney for appropriate amendment prior to publication.
2 Reg. No. 2,153,555 issued on the Principal Register to Organic
Diversions, Inc. on April 28, 1998, based on a claim of use in
commerce since May 21, 1996.
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3
vitamins. The next article mentions that particular
vitamins are ingredients in a skin cream for use with skin
that has been damaged by wind, sun or shaving. Another
excerpt notes that a particular company sells vitamins and
nutritional supplements in addition to skin care products.
Applicant responded to the refusal to register by
arguing that confusion would not be likely because the
goods specified in its application are completely unrelated
to those set forth in the registration cited as a bar to
registration of applicant’s mark.
The Examining Attorney was not persuaded by
applicant’s arguments, and made the refusal to register
final in the second Office Action. Submitted with that
action in support of the final refusal were copies of a
number of third-party trademark registrations on the
Principal Register based on use. In each registration, the
list of goods includes skin care products similar to those
recited in the instant application, and dietary or vitamin
supplements, which are the goods listed in the registration
cited as a bar to the registration of the mark applicant
seeks to register. Nine such third-party registrations
were included, but the Examining Attorney stated that these
were only a representative sampling from a larger number of
such registrations revealed by his search.
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Applicant filed a Notice of Appeal with the Trademark
Trial and Appeal Board, along with a request for
reconsideration addressed to the Examining Attorney. In
the latter, applicant basically restated the unsupported
arguments previously presented in its response to the
refusal to register. In an apparent concession that the
marks closely resemble each other, applicant again limited
its argument to its contention that the goods specified in
the cited registration are unrelated to those listed in the
application.
The Examining Attorney again found these arguments
unpersuasive, and he issued an Office Action to that
effect. The Board instituted the appeal and both applicant
and the Examining Attorney filed briefs. Applicant did not
request an oral hearing before the Board.
Accordingly, we have considered this appeal based on
the written record in the application and the written
arguments presented in the appeal briefs. After careful
consideration of these materials, we hold that the refusal
to register must be affirmed.
As applicant points out, in any likelihood of
confusion analysis, two key considerations are the
similarities of the goods and the similarities of the
marks. Tricia Guild Associates Ltd. v. Crystal Clear
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Industries Inc., 38 USPQ2d 1313 (TTAB 1994). Consistent
with its previous arguments to the Examining Attorney,
applicant does not argue that the marks in question in this
case are not similar. Instead, applicant focuses on
distinctions it draws between the goods identified in the
application, facial scrub, make-up remover, skin toner,
astringent, moisturizing cream, lotions and gels, anti-
wrinkle cream, skin toners and astringents and skin
cleansers, and the goods specified in the cited
registration, “herbal concentrates for dietary supplement”
and “vitamin supplements of herbal or organic compounds.”
Applicant draws distinctions with regard to how these
products are used, their fundamental characteristics, and
the channels of trade through which these products move.
Significantly, applicant submitted no evidence in support
of any of these contentions.
We agree with the Examining Attorney and applicant
that the critical question in the case before us centers on
the relationship between the goods. The marks are very
similar in sound, appearance and connotation. The
commercial impressions these two marks create are very
similar. Contrary to the arguments presented by applicant,
we find that the record in this appeal clearly establishes
that the goods set forth in the application are related to
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those identified in the cited registration in such a way
that the use of such similar trademarks in connection with
both is likely to cause confusion.
It is well settled that the third-party registrations
listing both goods like those set forth in the application
and those listed in the cited registration establish a
proper basis for concluding that these goods are
commercially related. In re Mucky Duck Co., 6 USPQ2d 1467
(TTAB 1998); In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). As noted above, applicant has repeatedly
argued that the goods with which intends to use its mark
are unrelated to those listed in the cited registration,
but applicant has presented no evidence in support of this
argument. The Board thus has no basis upon which to adopt
applicant’s position. Moreover, even if applicant had
somehow created doubt as to whether confusion would be
likely in the case at hand, any such confusion would
necessarily be resolved in favor of the prior user and
registrant. J & J Snack Foods v. McDonalds Corp., 932 F.2d
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); MSI Data Corp. v.
Microprocessor Systems, Inc., 220 USPQ 655 (TTAB 1983).
DECISION: The refusal to register based on Section
2(d) of the Lanham Act is affirmed.

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