K & N Distributors

Trademark Trial and Appeal BoardJan 14, 2016

No. 86391009 (T.T.A.B. Jan. 14, 2016)

This Opinion is not a Precedent of the TTAB Mailed: January 14, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re K & N Distributors _____ Serial No. 86391009 _____ Matthew H. Swyers of The Trademark Company, PLLC, for K & N Distributors. Sani Khouri, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Seeherman, Zervas and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: K & N Distributors (“Applicant”) seeks registration on the Principal Register of the mark DR ROBERT FORMULA, in standard characters and with “formula” disclaimed, for “Cosmetics; Non-medicated skin care preparations” in International Class 3.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Specifically, 1 Application Serial No. 86391009 was filed on September 10, 2014 under Section 1(b) of the Trademark Act, based on Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86391009 - 2 - registration has been refused on the ground that Applicant’s mark, as applied to the goods identified in the application, so resembles the mark DR. ROBERT in standard characters, previously registered on the Principal Register by the same registrant for the following goods: 1. “cosmetics and toilet preparations, namely, body lotions, complexion mask in the nature of facial beauty masks, bath and hand soaps, makeup removing preparations, aftershave, bubble bath, skin lightening cream, petroleum jelly for cosmetic purposes, hair oil, hair cream, shampoo, styling gel, hair dye, eye make-up and nail polish removing cream, shaving powder, hair pomade, eye liner, eye pencil, nail polish remover, nail polish, nail glitters, lip balm, tooth paste, mouth wash, breath freshener, perfumes and colognes, baby powder, facial powder, baby oil and essential oils” in International Class 3 and “Dental floss; toothbrushes” in International Class 21;2 2. “bleaching preparation for household use; detergents, namely, detergent soap, dish detergent and laundry detergent; cleaning preparations, namely, limescale remover; soaps for household use; disinfectants for household use, namely, disinfectant soaps; antibacterial preparations, namely, antibacterial soaps; antibacterial soaps,” in International Class 3;3 and 3. “sanitary preparation, namely, chemical preparation for sanitary use; all purpose disinfectant for use in households and bathrooms; antibacterial preparations, namely, handwash and household spray; air freshener and air purifying preparations; air purifying preparations, namely, air deodorizers and air sanitizers for household use; chemical preparations for sanitary use featuring disinfecting properties,” in International Class 5.4 as to be likely to cause confusion, to cause mistake, or to deceive. After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. 2 Registration No. 3762047, issued March 23, 2010; combined Section 8 and 15 declaration accepted and acknowledged May 2, 2015. The name shown in the mark identifies registrant Robert Latchman, whose consent is of record in each of the three cited registrations. 3 Registration No. 4021105, issued September 6, 2011. 4 Registration No. 4077564, issued December 27, 2011. Serial No. 86391009 - 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. 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.”). Because some of the goods in Applicant’s application encompass the goods in Registration No. 3762047, we confine our likelihood of confusion analysis to that registration. If likelihood of confusion is found with respect to that registration, the refusal must be affirmed, while if no likelihood of confusion is found with in-part identical goods, there will be no likelihood of confusion with registrations for goods that are not as similar. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). We first address the second du Pont factor, the similarity of the goods. Applicant’s broadly worded goods “cosmetics” encompasses Registrant’s more specifically identified cosmetics, including eye liner, eye pencil, and facial powder. Similarly, Applicant’s “non-medicated skin care preparations” encompass Serial No. 86391009 - 4 - Registrant’s body lotions, complexion mask in the nature of facial beauty masks, and skin lightening cream. Applicant’s goods thus overlap with Registrant’s goods, and Applicant concedes as much. Under the heading “The Goods or Services of the Trademarks Overlap,” Applicant states in its brief that: “Unfortunately, Applicant must concede the similarity of the goods or services as recited in the Applicant’s applied-for trademark as well as the registered trademark.”5 Because there are no limitations as to channels of trade or classes of purchasers in the description of goods in either the cited registration or the application, we must presume that the cosmetics and skin care preparations move in all channels of trade normal for such goods and are available to all potential classes of ordinary consumers. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Moreover, because the goods described in the application and the cited registration are in-part identical, we must presume that the channels of trade and classes of purchasers are the same, considerations under the third du Pont factor. See American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). 5 Appeal Brief at 10, 4 TTABVUE 11. Serial No. 86391009 - 5 - In our likelihood of confusion analysis, these findings under the second and third du Pont factors strongly support a finding that confusion is likely. We turn next to 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). “The proper test is not a side- by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our 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 Nat’l 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.”). On the other hand, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a Serial No. 86391009 - 6 - consideration of the marks in their entireties. In re Nat’l Data, 224 USPQ at 751. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013). When, as here, marks would appear on goods that are, in part, legally identical, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The cited mark is DR. ROBERT, while Applicant’s mark is DR ROBERT FORMULA. As noted, Applicant has admitted the descriptiveness of “formula” for cosmetics and skin-care preparations by providing a disclaimer of this term in response to the Examining Attorney’s dictionary evidence that it is descriptive for these goods.6 It is well-settled that descriptive matter may have less significance in likelihood of confusion determinations, and we find that to be the case here. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed, highly 6 Definitions of “formula” include “A prescription of ingredients in fixed proportion; a recipe.” December 27, 2014 Office Action at 11, from THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2014) (ahdictionary.com). Serial No. 86391009 - 7 - descriptive matter is “less significant in creating the mark’s commercial impression”). Therefore, we do not agree with Applicant that consumers are likely to view “formula” as the dominant portion of Applicant’s mark.7 Based on its prominence as the first and the distinctive wording in Applicant’s mark, we instead find DR ROBERT to be the dominant portion of that mark.8 Thus, the dominant phrase in Applicant’s mark is identical to the entirety of the cited mark DR. ROBERT. Likelihood of confusion has been found where, as here, the entirety of one mark is incorporated within another. See, e.g., Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda, quinine water and ginger ale likely to cause confusion with BENGAL for gin); In re El Torito Rests. Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS, with “combos” disclaimed, likely to cause confusion with MACHO for restaurant entrees); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY DRUM for hairdressing products likely to cause confusion with EBONY for cosmetics). The fact that DR ROBERT is the first phrase in Applicant’s mark further enhances its similarity to the cited mark. See, e.g., Century 21, 23 USPQ2d at 1700 (stating that consumers will first notice the identical lead word on encountering the marks); 7 See Appeal Brief at 9, 4 TTABVUE 10. 8 The missing period after the commonly abbreviated title “Dr.” does not distinguish the commercial impression made by Applicant’s mark from that of Registrant’s mark DR. ROBERT. Cf. In re Vanilla Gorilla L.P., 80 USPQ2d 1637, 1639 (TTAB 2006); TMEP § 807.14(c) (“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”). Serial No. 86391009 - 8 - Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). Comparing the marks in their entireties, we find that consumers are likely to give more weight to the distinctive term DR ROBERT in Applicant’s mark and view DR ROBERT FORMULA as a variation on the registered mark DR. ROBERT. The marks are visually and aurally similar due to the inclusion of DR ROBERT in both. The connotation and commercial impression of the two marks also are highly similar. Therefore, we find Applicant’s mark, considered in its entirety, to be highly similar to the cited mark. The first du Pont factor thus supports a finding that confusion is likely. Finally, Applicant argues that purchaser sophistication minimizes the potential for a likelihood of confusion in this case. Applicant contends that: “Cosmetics and skin care buyers are very particular and usually have very high standards.”9 This argument pertains to the fourth du Pont factor, the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. Du Pont, 177 USPQ at 567. Applicant provided no evidence to support its argument, and neither the application nor the cited registration is restricted to goods of any particular price. Even assuming that consumers of cosmetic and skin care products are careful when it comes to their buying decisions, it is settled that careful or sophisticated 9 Appeal Brief at 10, 4 TTABVUE 11. Serial No. 86391009 - 9 - purchasers are not immune from source confusion, especially in cases such as the instant one involving highly similar marks and goods. See In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“‘Human memories even of discriminating purchasers . . . are not infallible.”’) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). We find that the similarities between the marks and the goods outweigh any care that might be exercised in the purchasing decision. See HRL Assocs. Inc. v. Weiss Assocs. Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). We have considered all of the arguments and evidence of record as they pertain to the du Pont likelihood of confusion factors. To the extent that any other du Pont factors for which no evidence was presented by Applicant or the Trademark Examining Attorney may nonetheless be applicable, we treat them as neutral. In sum, we have found that the marks in their entireties are highly similar; the goods overlap and move in the same channels of trade to the same customers; and the similarities between the marks and the goods outweigh any care that might be exercised in the purchasing decision. Therefore, we find that Applicant’s mark is likely to cause confusion with the mark in cited Registration No. 3762047 when used in association with cosmetics and non-medicated skin care preparations. Decision: The refusal to register Applicant’s mark DR ROBERT FORMULA on the basis of Registration No. 3762047 is affirmed.