K.C.P.L., Inc.

Trademark Trial and Appeal Board

Jan 18, 2002

No. 75790857 (T.T.A.B. Jan. 18, 2002)

1/18/02
EWH
Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re K.C.P.L., Inc.
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Serial No. 75/790,857
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Howard N. Aronson for K.C.P.L., Inc.

Ellen Awrich, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
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Before Hanak, Hairston and Wendel, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge.

K.C.P.L., Inc. (applicant) seeks to register KENNETH
in typed drawing form for the goods listed below. The
intent-to-use application was filed on September 2, 1999.
cosmetics, namely, makeup, compacts, cosmetic
pencils,
eye makeup remover, non-medicated lip balm, beauty
masks, facial scrubs, skin soap, bath gel, bath
salts,
shampoo, non-medicated hair care preparations;
shaving
cream, shaving balm; baby, bath, body and massage
oils;
skin lotion; body, eye, hand and skin cream, baby
and
face powder; deodorants and antiperspirants;
fragrances
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
namely, perfumes, colognes and toilet water; sun
screen
preparations in International Class 3.-

coats, jackets, overcoats, rainwear and topcoats,
suits, blazers, shirts, slacks, dresses, sweaters,
jeans, t-shirts, sweatshirts, swim wear, shorts;
underwear, loungewear, lingerie, robes and pajamas;
neckwear, scarves, gloves, mittens, headwear, belts;
footwear, socks and hosiery in International Class
25.-
Ser. No. 75/790,857

With regard to applicant’s International Class 3
goods, the Examining Attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the
basis that applicant’s mark, as applied to applicant’s
goods, is likely to cause confusion with the identical
mark KENNETH previously registered on two occasions in
typed drawing form to the same entity. The first
registration is for “hair spray.” Registration No.
767,981. The second registration encompasses, among
other goods, “moisture lotion, foundation make-up, filled
compacts, make-up remover, hair spray, hair setting
lotion, hair conditioner, perfume, cologne and hair
shampoo.” Registration No. 918,342.
With regard to applicant’s International Class 25
goods, the Examining Attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the
basis that applicant’s mark, as applied to applicant’s
goods, is likely to cause confusion with the mark KENETH
KNITS, previously registered in the form shown below for
“knitted tops.” Registration No. 1,148,983.

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Ser. No. 75/790,857

When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not
request a hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the marks and the similarities of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”)
Considering first the refusal with regard to
applicant’s International Class 3 goods, this case
presents a most unusual situation in that applicant seeks
to register the identical mark KENNETH for goods which,
in part, are identical to the goods of Registration Nos.
767,981 and 918,342. To be more precise, applicant seeks
to register KENNETH for “non-medicated hair care
preparations,” a term broad enough to encompass “hair
spray” (the sole good of cited Registration No. 767,981)
and “hair spray, hair setting lotion and hair
conditioner” (some of the goods of cited Registration No.
918,342). In addition, applicant
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Ser. No. 75/790,857

seeks to register KENNETH for, among other goods,
“makeup, compacts, eye makeup remover, shampoo, perfumes
and colognes.” These goods are identical to certain of
the goods encompassed within cited Registration No.
918,342, namely “foundation make-up, filled compacts,
make-up remover, hair shampoo, perfume and cologne.”
Given the fact that applicant seeks to register the
identical mark KENNETH for goods which are, in part,
identical to the goods of the two cited registrations
owned by the same entity, confusion is not merely likely,
but rather it is an absolute certainty. At page 2 of its
brief, applicant argues that “even marks which are
identical ... may create sufficiently different
commercial impressions when applied to the respective
party’s goods so that there is no likelihood of
confusion.” Even assuming for the sake of argument that
applicant’s premise is correct, the flaw in applicant’s
logic is that applicant seeks to register the identical
mark KENNETH for goods which are, in part, identical to
the goods of Registration No. 767,981 and to certain of
the goods of Registration No. 918,342. At page 3 of its
brief, applicant argues that goods identified in
Registration Nos. 767,981 and 918,342 are “only available
at
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Ser. No. 75/790,857

the Kenneth Beauty Salons & Products store located in
Manhattan in New York.” Even assuming the correctness of
this statement, what applicant fails to realize is that
these two registrations contain no such restrictions on
where the goods may be distributed. In Board
proceedings, “the question of likelihood of confusion
must be determined based on an analysis of the mark as
applied to the goods and/or services recited in
applicant’s application vis-a-vis the goods and/or
services recited in [registrant’s] registration, rather
than what the evidence shows the goods and/or services to
be.” Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
As for applicant’s argument at page 4 of its brief
that “cosmetic consumers are sophisticated purchasers,”
applicant qualifies this argument by assuming that the
products listed in its application and the products
listed in the two cited registration are “high-end
cosmetic products.” Applicant’s application and the two
cited registrations contain no such limitation.
Moreover, if such a limitation appeared in the
application and the two cited registrations, we would
find that even the most sophisticated consumers could not
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Ser. No. 75/790.857

distinguish applicant’s products from registrant’s
products when the marks are identical and the goods are,
in part, identical.
Finally, at pages 4-7 of its brief, applicant notes
that there are a number of registrations containing the
name KENNETH which encompass various types of goods in
International Class 3. However, all of these various
marks are not for KENNETH per se, but rather are for
KENNETH combined with a surname or some other
distinguishing matter.
We turn now to the refusal to register applicant’s
mark KENNETH for various types of apparel in
International Class 25 based upon Registration No.
1,148,983 for KENETH KNITS for “knitted tops.” Two of
applicant’s International Class 25 goods are “shirts and
sweaters.” Obviously, shirts and sweaters can be
knitted, and thus are knitted tops. Indeed, the word
“sweater” is defined as “a knitted or crocheted outer
garment for the upper body.” Webster’s New World
Dictionary, (1996). Thus, the goods of cited
Registration No. 1,148,983 (knitted tops) encompass
certain of applicant’s goods, namely, sweaters and at
least certain types of shirts.
Considering next the marks, we note at the outset
that
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when the goods are at least in part legally identical as
is the case here, “the degree of similarity [of the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992). In comparing marks, we are
obligated to compare the marks in their entireties,
including any matter which is descriptive. American Home
Products v. B. F. Ascher, 473 F.2d 903, 176 USPQ 532, 533
(CCPA 1973). However, there is nothing improper in
comparing marks to give more weight to the dominant
element of the mark consisting of two or more words. In
the case of the cited mark, KENETH KNITS, the arbitrary
word KENETH clearly dominates over the disclaimed,
descriptive word KNITS. 3 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 23:45 at page
23-99 (4th ed. 2001). A consumer familiar with
registrant’s mark KENETH KNITS on knitted tops, upon
seeing applicant’s mark KENNETH on sweaters and knitted
shirts, could well assume that both applicant’s products
and registrant’s products emanate from a common source.
Said consumer would be of the belief that in some
instance the common manufacturer of the knitted tops
(which include sweaters and
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Ser. No. 75/790,857

certain shirts) simply decided to use KENETH (or KENNETH)
per se, and in other instances elected to include the
generic term KNITS. Moreover, we do not believe that
ordinary purchasers of knitted tops (which includes
sweaters and certain shirts) would notice that registrant
depicts KENETH with one N whereas applicant depicts
KENNETH with two Ns.
Finally, applicant goes on to make similar arguments
as to why there is no likelihood of confusion with regard
to its International Class 25 goods as it did with regard
to its International Class 3 goods. Put quite simply,
our comments with regard to these arguments are the same.
Decision: The refusal to register is affirmed both
as to applicant’s International Class 3 goods and
applicant’s International Class 25 goods.

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