JB Line, Inc.

Trademark Trial and Appeal BoardApr 3, 2013

No. 85152005 (T.T.A.B. Apr. 3, 2013)

Mailed: April 3, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re JB Line, Inc. ________ Serial No. 85152005 _______ Clifford D. Hyra of Hyra IP PLC for JB Line, Inc. Alyssa Steel, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Wellington, Ritchie, and Kuczma, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: JB Line, Inc. (“applicant”) has filed an application to register the mark iLASHCARE (in standard character form) on the Supplemental Register for “cosmetic preparations for eye lashes, namely, coating sealer for eyelash extensions, aftercare for eyelash extensions, eye gel patches for application of eyelash extensions, protein remover and THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 85152005 2 primer for application of eyelash extensions, and mascara for eyelash extensions” in International Class 3.1 Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the registered mark: “eye make-up remover and eyelash cleaner” in International Class 3.2 Applicant appealed the final refusal and both applicant and the examining attorney have filed briefs. Our determination of the examining attorney's refusal to register the mark under Section 2(d) of the Trademark Act is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the 1 Serial No. 85152005, filed October 13, 2010, based on an allegation of a bona fide intent to use the mark in commerce on the identified goods. 2 Registration No. 966232 for LASHCARE in stylized form, issued August 14, 1973; renewed. Serial No. 85152005 3 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). We first consider the relatedness of applicant's and registrant’s goods. Applicant asserts that its goods are for “people who have or want eyelash extensions” whereas registrant’s goods are “standard eye-makeup remover and eyelash cleaner.” Brief, p. 8. However, we do not find this argument availing because registrant’s goods are not limited to natural eyelashes; and, to limit registrant’s goods in this manner would contravene well settled law that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods identified in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). In other words, while applicant’s goods are clearly limited to eyelash extensions, we must consider the possibility that registrant’s “eyelash cleaner” is also being used in connection with both natural and artificial eyelashes (eyelash extensions). Indeed, as the examining attorney pointed out and showed with evidence Serial No. 85152005 4 from registrant’s website, this is the case, i.e., registrant offers goods for use with artificial eye lashes.3 Accordingly, the products of applicant and registrant, as identified, are closely related in that they may be used in connection with artificial eyelashes. Based on the record and the identifications of goods, we find that applicant’s goods are related to registrant’s identified goods and we resolve the du Pont factor regarding the similarity of the goods against applicant. To the extent that we must construe both applicant’s goods and registrant’s goods as possibly being directed to consumers of false eyelashes or eyelash extensions, the purchasers of both goods would be the same and the presumption follows that the respective goods would be found in the same, normal trade channels for such goods. We now consider the similarity and dissimilarity between the marks. Our focus is on whether the marks are similar in sound, appearance, meaning, and commercial impression. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 3 Copies of registrant’s website attached to Office Action dated October 28, 2011. Serial No. 85152005 5 We find that applicant’s proposed iLASHCARE mark and the registered mark LASHCARE (stylized) are extremely similar in appearance, sound and commercial impression. Applicant has essentially incorporated registrant’s mark and prefaced it with a lowercase letter “I.” The stylization employed in registrant’s mark and the fact that applicant’s proposed mark begins with a lower case letter “I” have very limited effect in distinguishing the two marks because we must consider that applicant’s standard- character mark could be displayed in any stylization (i.e., any size, color, typeface, or case) including stylization identical to that in registrant’s mark. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011). As to their meaning or connotation, both marks will be clearly understood by consumers in the context of the identified products as being suggestive of care products for eyelashes. There is a line of cases holding that the addition of other matter to a registered mark will not necessarily be sufficient to distinguish the marks as a whole. See, generally, First International Services Corp. v. Chuckles Inc., 5 USPQ2d 1628 (TTAB 1988); In re Champion Oil Company, 1 USPQ2d 1920 (TTAB 1986); In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985); and In re C. F. Hathaway Serial No. 85152005 6 Company, 190 USPQ 343 (TTAB 1976). Applicant principal challenge to the examining attorney’s refusal, however, is that the registered mark is “descriptive and weak and entitled to only a narrow scope of protection” and that there is no likelihood of confusion between the two marks as a result. Reply, p. 4. Applicant is not without reason to the extent that it has been held that the addition of matter to a registered mark may be sufficient to distinguish the marks under circumstances where the registered mark, or appropriated matter, is highly suggestive or merely descriptive or has been frequently used or registered by others in the field for the same or related goods or services. See, e.g., Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005); In re Merchandising Motivation, Inc., 184 USPQ 364 (TTAB 1974) (MEN'S WEAR for a semi-monthly magazine not confusingly similar to MMI MENSWEAR for fashion consulting for men because “MENSWEAR” is merely descriptive of such services). Before addressing any relative weakness to the registered mark, we hasten to point out that applicant’s characterization of the registered mark as being descriptive constitutes an impermissible collateral attack on the registration that the Board cannot entertain in an ex parte hearing. In an ex parte setting, such as this Serial No. 85152005 7 proceeding, applicant cannot be heard on matters such as this type of attack on the cited registration. See In re Dixie Rests., Inc., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007); In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988). See also TMEP §1207.01(d)(iv) (October 2012). More specifically, the cited registration on the Principal Register and this constitutes prima facie evidence that, inter alia, registrant has exclusive right to use said mark on the identified goods. 15 U.S.C. §1057(b). Because a merely descriptive mark may not be registered on the Principal Register absent a claim of acquired distinctiveness, any assertion in this vein is considered an improper attack on the registration’s validity and will not be heard in this ex parte proceeding.4 With the above in mind, we now consider the issue of any relative strength or weakness of the registered mark, LASHCARE. We readily find that it is highly suggestive of the identified goods in both the application and cited 4 The Section 7(b) prima facie presumption of validity and exclusive use may be rebutted in a cancellation proceeding. However, we note that the cited registration in this proceeding is over five years old, and any possible ground for cancellation Serial No. 85152005 8 registration. Given that “Lash” is synonymous with “eyelash” and “care” may defined as “to provide needed assistance,” these terms, taken together and in the context of the identified goods, conjure “care” products for eyelashes.5 While we find that registrant’s mark is certainly suggestive of the identified goods and this can be considered as evidencing a degree of weakness, this does not mean it is not worthy of protection. As often stated, even a weak mark is entitled to protection against the registration of a similar mark for related goods. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). As already noted, applicant is essentially adopting registrant’s mark and prefacing it with the letter “I”; this additional element does very little little to change the commercial impression or connotation from that generated already by registrant’s mark. Rather, the letter “I” will be understood as the phonetic equivalent of “eye” and, when immediately followed by “lash,” will be understood and spoken as “eyelash care.” Moreover and quite importantly, there is no evidence of of this registration is now limited to that specified in Section 14(3) or (5) of the Trademark Act. 15 U.S.C. §1064(3) and (5). 5 Both definitions taken from The American Heritage Dictionary of the English Language (4th Ed. 2000). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85152005 9 record suggesting that the terms “lash” and “care” are commonly used together in the relevant industry such that we could infer that consumers have grown to be accustomed to the two terms being used together and would therefore distinguish marks containing said terms based on minor additional elements, such as being prefaced by the letter “I”. In view of the foregoing, we find that the marks, when considered as a whole, are extremely similar in appearance, meaning, sound and commercial impression, and we resolve this du Pont factor against applicant. While registrant’s mark may be viewed as suggestively weak, it is entitled to protection and applicant’s addition of the letter “I” is insufficient for purposes of distinguishing the two marks. In conclusion, due to the similarity in the marks and relatedness of the identified goods, as well as the similarity in the trade channels in part with respect to eyelash products, we find that purchasers familiar with registrant's eye make-up remover and eyelash cleaner offered under the mark LASHCARE (stylized) would be likely to believe, upon encountering applicant's mark iLASHCARE for cosmetic preparations for eye lashes, namely, coating sealer for eyelash extensions, aftercare for eyelash extensions, eye gel patches for application of eyelash Serial No. 85152005 10 extensions, protein remover and primer for application of eyelash extensions, and mascara for eyelash extensions, that they originate with or are somehow associated with the same entity. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.