L’ Oreal

Trademark Trial and Appeal Board

Mar 2, 2011

No. 77664833 (T.T.A.B. Mar. 2, 2011)

Mailed:
March 2, 2011
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re L’Oréal
________

Serial No. 77664833
_______

Robert L. Sherman and Bradford E. Young of Paul Hastings
Janofsky & Walker LLP for L’Oréal.

Michael J. Souders, Trademark Examining Attorney, Law
Office 115 (John T. Lincoski, Acting Managing Attorney).
_______

Before Walters, Bucher and Taylor, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
L’Oréal seeks registration on the Principal Register
of the mark IMPULSION (in standard character format) for
goods identified as “shampoos; gels, mousses, balms, cream,
wax, serums and lotions for hair styling and hair care;
hair lacquers; hair colouring and hair decolorant
preparations; permanent waving and curling preparations;
essential oils for personal use” in International Class 3.1

1 Application Serial No. 77664833 was filed on February 6,
2009 based upon priority under Section 44(d) of the Trademark
Act, based upon French Application No. 083593682 filed on August
11, 2008, along with an allegation of a bona fide intention to
use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77664833
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The Trademark Examining Attorney issued a final refusal to
register the mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). He has taken the position that
applicant’s mark, when used in connection with the
identified goods, so resembles the mark IMPULSE registered
for “fragrance and cosmetic products, namely-- cologne,
eau de perfume, eau de toilette, and perfume; face, hand
and body lotions and creams; bath lotions powders, oils and
creams; skin cleansing lotions and gels; facial and body
oils; skin soap; personal anti-perspirant/deodorant; and
essential oils for personal use” also in International
Class 5,2 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. The
Trademark Examining Attorney and applicant have fully
briefed the issues in this appeal.
We affirm the refusal to register.
In urging registrability, applicant argues: that the
Trademark Examining Attorney has improperly dissected the
marks to find similar appearances; that instead, there are

2 Registration No. 2897931 issued on October 26, 2004;
Section 8 affidavit (six-year) accepted.

Serial No. 77664833
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notable differences between the respective marks as to
appearance, sound, connotation, and commercial impression;
that the cited mark is not a strong mark for personal care
products; that consumers are accustomed to discerning
between different marks formed from the same root word for
goods within the larger class of personal care products;
and that consumers of beauty products are sophisticated and
exercise a high degree of care when purchasing those
products.
By contrast, the Trademark Examining Attorney
contends: that the marks are similar as to appearance,
sound, connotation, and commercial impression; that
applicant’s arguments concerning other word pairs owned by
separate parties in this field are of no probative value;
that the cited mark is strong for skin care and fragrance
products; that the goods are identical in part and
otherwise are closely-related; and that even if some of
applicant’s consumers may be particularly knowledgeable
about the products, these types of goods will also be
purchased by other, much more functional shoppers.
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood
of confusion is based upon our analysis of all of the
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probative facts in evidence that are relevant to the
factors bearing on this issue. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We first consider the goods as identified in the
application and in the cited registration. Although the
Trademark Examining Attorney is correct that in its initial
brief, applicant does not discuss this du Pont factor, in
its reply brief, applicant argues that registrant’s mark is
used “in connection with perfumery and other scented
products” while its own mark is “used in connection with
hair care products.”
However, as pointed out by the Trademark Examining
Attorney, both applicant and registrant list “essential
oils for personal use” in their respective identifications.
In addition to this overlap, the Trademark Examining
Attorney had placed into the record third-party
registrations and web pages showing the close relationship
of the other goods. In fact, multiple web pages from the
L’Oréal Group’s own website (e.g., with screen-prints
showing its VICHY, RALPH LAUREN and BIOTHERM brands)
demonstrate clearly the close relationship between hair
care products and skin care products / fragrance products.
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Accordingly, this factor weighs in favor of a finding of a
likelihood of confusion.
Similarly, the websites for AVEDA, SEPHORA,
BEAUTYSAK, AVON, L’OCCITANE, and THE BODY SHOP demonstrate
that these respective goods move through the same channels
of trade. As to the du Pont factor dealing with the
conditions under which and buyers to whom sales are made,
applicant argues that purchasers of personal care products
are sophisticated consumers. However, neither applicant’s
nor registrant’s identifications of goods are limited in
any way, and there is no evidence in the record supporting
such a conclusion. Hence, we must presume these respective
goods will be available to all classes of ordinary
consumers. These two related du Pont factors also support
the position of the Trademark Examining Attorney herein.
In relation to the strength of the registered mark,
the Trademark Examining Attorney and applicant disagree on
what we should conclude based on the evidence of record.
The Trademark Examining Attorney is correct that there are
not similar marks on the register covering goods related to
those of registrant.
However, applicant attached web pages from various
Internet sites to its request for reconsideration where
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third-party merchants and manufacturers had adopted and
were using the word “Impulse” in connection with beauty
products and services. In several cases, we note that
additional words in the third-party composite marks create
somewhat different commercial impressions (e.g., PURE
IMPULSE,3 NATURAL IMPULSE,4 etc.). In another case, an
online wig merchant uses the word “Impulse” as part of its
trade name.5 The category having the largest number of
third-party uses involves four separate beauty salons
around the country that have adopted the term “Impulse” as
a dominant portion of each trade name.6 This evidence does
not show that the term has any descriptive significance
when used in connection with personal care services. Nor
does it prove that the term “Impulse” is so weak and
diluted that applicant’s change to “Impulsion” is
sufficient to distinguish the marks when they are used in
connection with the same or closely related products.

3 http://www.thebeautylookbook.com/2010/02/edward-bess-pure-
impulse-soft-whisper.html

4 http://www.naturalimpulse.com/soaks.html

5 Impulse Beauty Supply (http://impulsebeautysupply.com/).

6 Impulse Hair Studio & Day Spa, Newburgh, IN
(http://www.impulsehair.com/); Impulse Hair Salon, Burbank, CA
(http://www.impulsehairsalon.com/); Impulse Hair Designs,
Providence, RI (http://impulsehairdesigns.com/); and Impulse
Salon, Marietta, GA (http://www.impulse-a-salon.com/).
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Rather, when used in the manner of a dictionary, these
multiple uses may well suggest being impelled to enjoy
these beauty services based on the feelings of the moment.
Finally, applicant attached to its
request for reconsideration multiple screen
prints from a discount website selling
IMPULSE brand body spray fragrances.7
Interestingly, this example of a most
relevant product appears to be registrant’s
cited mark being used in connection with one
of registrant’s listed fragrance products!

In view of the foregoing,8 there is no basis upon which
to conclude that consumers encounter marks comprising the
word IMPULSE, or variations thereof, so often that they have
learned to distinguish between the different marks.
We turn to a determination of what we find to be the
key likelihood of confusion factor in this case, i.e.,
whether applicant’s mark and opposer’s mark are confusingly
similar, when compared in their entireties as to

7 http://www.bargainside.com/ (as accessed by applicant on
April 16, 2010).

8 As noted above, when discussing the Internet evidence
showing the relationship between hair care products, on the one
hand, and skin care products / fragrance products on the other
hand, this particular evidence again demonstrates a close
relationship between these categories of personal care products.
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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, 1692 (Fed.
Cir. 2005). The Trademark Examining Attorney reminds us
that whenever the goods of the respective parties are
similar in kind and/or closely related, the degree of
similarity between the marks required to support a finding
of likelihood of confusion is not as great as would be
required with diverse goods. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ 1698
(Fed. Cir. 1992); and In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987).
The test for confusing similarity is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). The marks at issue may not be
dissected but rather must be considered in their
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entireties. However, it is not improper to consider the
component parts of the respective marks as a preliminary
step in the analysis of the similarity of the marks as a
whole. See 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:41
(4th ed. 2001). Likewise, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
The Trademark Examining Attorney contends that the
first six letters are identical; that consumers are
generally more inclined to focus on the first word, prefix
or syllable in any trademark; and that with hazy
recollection, the average purchaser will simply retain the
general impression that both marks share the same six
letter formative connoting “an impelling force.”
By contrast, applicant repeatedly criticizes the
Trademark Examining Attorney’s focus on “the first six
letters” of the marks and the claim that the marks share a
“common formative” as proof of the Office’s improper
dissection of those marks. Rather, applicant argues that
its mark has nine letters, while the cited mark has only
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seven, and that the Trademark Examining Attorney, by
ignoring the “-ion” portion of applicant’s mark, has
stripped applicant’s mark of its different visual impact in
order to bring it closer to the cited mark.
We do not agree that the Trademark Examining Attorney
has dissected the mark or ignored the different suffix of
applicant’s mark. Moreover, we are not persuaded by
applicant’s argument that the “ion” suffix of applicant’s
marks is sufficient to differentiate applicant’s mark from
the registered marks in any meaningful way. The “ion”
suffix in place of the letter “e” does not significantly
distinguish the word “Impulsion” from “Impulse” as both are
noun forms, they are synonyms, and share the same root. As
indicated earlier, the degree of similarity between the
marks required to support a finding of likelihood of
confusion is not as great where the goods, as here, are
identical and otherwise closely related.
As to sound, the Trademark Examining Attorney
contends: that the first two syllables are identical in
sound, and that any slight difference in the ending sounds
will not avoid a likelihood of confusion. The Trademark
Examining Attorney expressly argues that this analysis is
sanctioned by our primary reviewing Court, and does not
involve a dissection of the mark. By contrast, applicant
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argues that its mark differs significantly in sound and
pronunciation from the cited mark. Applicant’s mark does
have an additional syllable, and the spoken emphasis is on
different syllables. However, while we acknowledge that
these two marks do have different pronunciations, we do not
find this dissimilarity to be as significant as argued by
applicant.
As to connotation, the Trademark Examining Attorney
argues from multiple dictionary entries that the words
“impulse” and “impulsion” are highly similar, if not
synonymous, in meaning. Specifically, he argues that they
convey the same overall idea or meaning, namely, that of an
impulse, driving forward, or impelling act. He takes the
position that the fact that “impulsion” has other
definitions is not relevant. By contrast, applicant argues
that the word “impulsion” suggests momentum or movement,
while the word “impulse” conveys no such impression.
Applicant objects to the subjective narrowing by the
Trademark Examining Attorney to focus on several meanings
for each of the words out of each of their many meanings.
However, we find unpersuasive applicant’s argument that the
average “consumer may believe that the literal meaning of
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Applicant's Mark is, for example, ‘the pushing power of a
horse’ ”9 when used in connection with applicant’s goods.
While the Trademark Examining Attorney concludes that
the marks will convey the same commercial impression,
applicant argues that the word IMPULSE is used in “common
parlance” in the English language, while IMPULSION is a most
uncommon word. This latter statement appears to be a true
one, but given the similarities in appearance, sound and
meaning, this diminished familiarity with the term
“impulsion” on the part of the average consumer does not
override the strong similarities between the marks.
Applicant spends a great deal of time in its responses
to Office actions and in its briefs arguing that the United
States Patent and Trademark Office regularly allows
registration in the personal care products field of two
marks sharing the same formative or root. Suffice it to
say that we agree with the Trademark Examining Attorney
that there are a myriad of reasons why applicant’s
elaborately-constructed argument is unpersuasive. In some
pairs cited by applicant, the goods appear unrelated. In
others, the marks are quite dissimilar. Without benefit of
the filewrapper histories, we cannot know the strength or

9 Applicant’s Request for reconsideration at unnumbered 3.
Serial No. 77664833
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weakness of the senior mark, the possibility of consent
agreements or related parties, or the presence of other
explanations for the coexistence of any given pair of
marks. If there remain other pairs that on the face of the
registrations appear to be as likely to cause confusion as
those in the instant case, we are certainly not bound by
the actions of a Trademark Examining Attorney who approved
a particular mark for publication at some point in the
past.
In conclusion, the involved goods are overlapping and
otherwise closely related, the marks are similar in many
respects, and we have no reason to find the cited mark to
be a weak one. Accordingly, weighing all the relevant
du Pont factors, we find a likelihood of confusion.
Finally, to the extent that the likelihood of confusion
issue remains close, we are obligated to resolve doubts in
favor of the registrant and prior user. In re Hyper
Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988).
Decision: The refusal to register under Section 2(d)
of the Lanham Act is hereby affirmed.