International Products Group

Trademark Trial and Appeal BoardDec 1, 2016

No. 86355677 (T.T.A.B. Dec. 1, 2016)

This Opinion is not a Precedent of the TTAB Mailed: December 1, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re International Products Group _____ Serial No. 86355677 _____ John D. Gugliotta, Law Offices of John D. Gugliotta, P.E., Esq. LPA, for International Products Group. Ellen Awrich, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. _____ Before Seeherman, Wellington, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: International Products Group (“Applicant”) seeks registration on the Principal Register of the mark GREEN QUEEN, in standard characters and with “green” disclaimed, for the following goods in International Class 3: Bath and shower gels and salts not for medical purposes; Beauty gels; Beauty masks; Beauty serums; Body emulsions; Body lotions; Body oils; Cosmetic creams; Cosmetics; Deodorants for body care; Essential oils; Eye gels; Eye lotions; Face and body lotions; Hair care preparations; Hair lotions; Hair styling preparations; Hand lotions; Make up foundations; Make-up powder; Non- medicated foot lotions; Non-medicated serums for use on face, skin, eye, lips; Non-medicated skin care preparations; Serial No. 86355677 - 2 - Non-medicated toiletries; Perfume; Shampoos; Skin care products, namely, non-medicated skin serum; Skin creams; Skin moisturizer; Skin soap; Under-eye enhancers; and all excluding tanning preparations.1 The Trademark Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in the application, so resembles the mark GREEN QUEEN, in standard characters and with “green” disclaimed, previously registered on the Principal Register for “non-medicated indoor and outdoor skin tanning preparations” in International Class 3,2 as to be likely to cause confusion, to cause mistake, or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. Applicant filed an appeal brief; a supplemental brief, as permitted in the Board’s Order of July 7, 2016 (15 TTABVUE); and a reply brief.3 The Examining Attorney also filed a brief. We affirm the refusal to register. 1 Application Serial No. 86355677 was filed on August 2, 2014, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Registration No. 4024489, issued September 13, 2011. 3 We have given no consideration to the documents attached to Applicant’s appeal briefs, which were not timely submitted. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 1207.01 (2016); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014); In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013). Serial No. 86355677 - 3 - Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort 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 and differences in the marks.”). We first address 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.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Here, Applicant’s mark and the cited mark both consist entirely of the identical phrase GREEN QUEEN. The first du Pont factor thus weighs strongly in favor of a finding that confusion is likely. We next consider the second du Pont factor, the similarity of the goods. The test is not whether consumers would be likely to confuse the goods, but rather whether they are likely to be confused as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. It is sufficient that the Serial No. 86355677 - 4 - goods are related in some manner, or that the circumstances surrounding their marketing are such that they would be encountered by the same persons in situations that would give rise, because of the marks, to a mistaken belief that they originate from the same source or that there is an association or connection between the sources of the goods. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). We must make our determination regarding the similarities between the goods based on how they are identified in the subject application and cited registration, respectively, not on any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). A likelihood of confusion may be found with respect to a particular class based on any item within the identification of goods for that class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Where, as here, the involved marks are identical, the degree of similarity between the goods required to support a finding that confusion is likely declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is necessary only that there be a viable relationship between the two to support a finding of likelihood of confusion. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015); In re Thor Tech, 90 USPQ2d at 1636. Serial No. 86355677 - 5 - As noted, the goods identified in the cited registration are “non-medicated indoor and outdoor skin tanning preparations.” Applicant’s identified goods, listed supra, include a variety of beauty, skin, and hair care products, specifically excluding tanning preparations. Although Applicant’s identified goods are not identical to Registrant’s, the Examining Attorney introduced Internet evidence that the respective identified goods are related. Website printouts of record demonstrate that third parties produce or market under a single mark both the types of goods identified in the application and those in the cited registration, such as: • SISLEY, with products including self-tanning preparations on the one hand and cosmetics, beauty masks, and hair care preparations on the other;4 • H&B, offering both suntan oils and cosmetic and skin creams, beauty masks, skin soaps, body lotions, deodorants, shampoos, and hair care preparations;5 • KIEHL’S, offering a sun-free self-tanning preparation as well as skin creams, beauty masks, skin soap, shampoos, and hair care preparations;6 • CLARINS, with a self-tanning preparation and also cosmetics, skin cream, and beauty gel;7 and • NEUTROGENA, offering a sunless tanning preparation along with shampoos, hair care preparations, bath gel, body lotion, and skin moisturizers.8 4 January 27, 2016 Reconsideration Letter at 14-21, 9 TTABVUE 19-26 (from sisley- paris.com). 5 Id. at 22-50, 7 TTABVUE 2 through 8 TTABVUE 9, 9 TTABVUE 27 (from hbdeadsea.com). 6 Id. at 60-72, 6 TTABVUE 2-12, 8 TTABVUE 19 (from kiehls.com). 7 November 18, 2014 Office Action at 15-26 (from clarinsusa.com). 8 Id. at 46-56 (from neutrogena.com). Serial No. 86355677 - 6 - This evidence demonstrates that there is a viable relationship between the kinds of goods identified in the application and cited registration, which may emanate from the same sources under the same marks. We find that the offer of Applicant’s beauty and skin care goods under an identical mark is likely to lead to a mistaken belief that Applicant’s identified goods originate from the same source as Registrant’s skin tanning preparations. In our likelihood of confusion analysis, these findings under the second du Pont factor support a finding that confusion is likely. Applicant argues that the publication of a third-party application for the mark for goods in International Class 3 in 2013, after registration of the cited mark, shows that “the Office has already previously determined that the buyers of sun tan lotions would not be confused by the purveyor of soaps, shampoos, and other beauty products in IC 003.”9 A decision to allow another application, however, is not controlling. In re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007); see also 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.”); In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (“Although consistency in examination is a goal of the Office, the decisions of previous Trademark Examining Attorneys are not binding on us, and we must decide each case based on the evidence presented in the record before us.”). 9 Reply Brief, referring to application Serial No. 79131631, 25 TTABVUE 4. Serial No. 86355677 - 7 - We have considered all of the arguments and evidence of record, including those not specifically discussed herein, as they pertain to the relevant du Pont likelihood of confusion factors. We have found that Applicant’s mark is identical to the cited mark, and that the goods identified in the subject application and cited registration are related. To the extent that any other du Pont factors are relevant, we treat them as neutral. We find that Applicant’s mark, when used in association with the goods identified in the application, is likely to cause confusion with the mark in cited Registration No. 4024489. Decision: The refusal to register Applicant’s mark is affirmed.