Laura Geller Make-Up Studies, Ltd.

Trademark Trial and Appeal BoardAug 13, 2009

No. 78815030 (T.T.A.B. Aug. 13, 2009)

Mailed: August 13, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Laura Geller Make-Up Studios, Ltd. ___________ Serial No. 78815030 ___________ Jack L. Most of Goetz Fitzpatrick for Laura Geller Make-Up Studios, Ltd. William H. Dawes, III, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). ____________ Before Walters, Cataldo and Taylor, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Laura Geller Make-Up Studios, Ltd. has filed an application to register the standard character mark PHENOMENAL FOUNDATION on the Principal Register for “cosmetics,” in International Class 3.1 The application includes a disclaimer of FOUNDATION apart from the mark as a whole. 1 Serial No. 78815030, filed February 15, 2006, based on use of the mark in commerce, alleging first use and use in commerce as of December 31, 2005. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78815030 2 The examining attorney has issued a final refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark so resembles the standard character mark PHINOMENAL, previously registered for “perfumes and cosmetics, namely, fragrance, perfume oil, perfume solid, cologne, toilet spray, cosmetics, makeup, lipstick,” in International Class 3,”2 that, if used on or in connection with applicant’s goods, it would be likely to cause confusion or mistake or to deceive. Applicant has appealed. Both applicant and the examining attorney have filed briefs. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all of the probative 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 and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 2 Registration No. 3313740, issued October 16, 2007. The registration is owned by Michelle Roark Hormell. Serial No. 78815030 3 In considering the evidence of record on these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. Considering, first, the goods, we look to the goods as identified in the involved application and cited registrations. See Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”) See also Paula Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”) Moreover, likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the Serial No. 78815030 4 identification of goods both in the application and registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The registered mark includes in its identification of goods “… cosmetics, namely, … cosmetics….” Thus, applicant’s goods are identical to these same goods in the cited registration and it is unnecessary to consider applicant’s goods in relation to the other goods identified in the cited registration. Further, inasmuch as the identifications of goods in both the involved application and the cited registrations are not limited to any specific channels of trade, we presume that the goods would be offered in all ordinary trade channels for these goods and to all normal classes of purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). In other words, with respect to these identical goods, the trade channels and classes of purchasers are identical. Applicant argues that cosmetics consumers are sophisticated purchasers. There is no evidence of this in the record and it is likely that the class of purchasers for cosmetics is the general consumer, which encompasses purchasers of all levels of sophistication. Considering, next, the marks, we note that in determining likelihood of confusion, a lesser degree of similarity between two marks is required when the marks are Serial No. 78815030 5 applied to identical goods. HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). See also In re J.M. Originals, 6 USPQ 1393 (1987). The issue is whether applicant’s mark and the registered mark, when viewed in their entireties, are similar in terms of appearance, sound, connotation and commercial impression. The test 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 impressions that confusion as to the source of the goods offered under the respective marks is likely to result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008). See also Nike v. WNBA Enter. LLC, 85 USPQ2d 1187, 1199-1200 (TTAB 2007); and Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980). 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). Furthermore, although the marks at issue must be considered in their entireties, 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 Serial No. 78815030 6 the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). The registered mark consists of the single word PHINOMENAL which is a made-up word that differs by only one letter from, and is an obvious misspelling of, the actual word “phenomenal.” Thus, registrant’s mark is substantially similar to, or essentially the same as, the first and dominant word in applicant’s mark, PHENOMENAL. The additional term in applicant’s mark, FOUNDATION, is merely descriptive in connection with cosmetics, and it is generic of one type of cosmetic. In a similar case involving the marks LASER and LASERSWING, the Federal Circuit held that the addition of the word “Swing” to registrant’s mark “Laser” did not result in the marks being dissimilar. “[B]ecause both marks begin with ‘laser,’ they have consequent similarities in appearance and pronunciation. Second, the term ‘swing’ is both common and descriptive… 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.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845-45 (Fed. Cir. 2000) (citations and quotation marks omitted). We take judicial notice of the definition of “phenomenal” in The American Heritage Dictionary of the Serial No. 78815030 7 English Language (2007) as “(2) Extraordinary; outstanding: a phenomenal feat of memory.” Thus, there is no question that this term is somewhat laudatory, and, thus, weak, in connection with both applicant’s and registrant’s identified goods. However, even weak marks are entitled to protection. See King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks). Although the marks have certain differences, when we compare them in their entireties we find that on the whole they are similar in appearance, sound, connotation and commercial impression, and that the differences in the spelling of PHINOMENAL/PHENOMENAL and the addition of the merely descriptive word FOUNDATION to applicant’s mark, are not sufficient to distinguish these marks when considered in connection with identical goods. Applicant misdescribes the registered mark as PHI- NOMINAL, stating that this is the manner in which the mark is used by registrant. Applicant argues that the commercial impressions of the marks are quite different because the connotation of the registered mark is determined by the initial “PHI” portion of the mark, which applicant characterizes as a mathematical term meaning “the golden ratio.” Applicant’s argument is unpersuasive. We are bound Serial No. 78815030 8 to consider the marks as they appear in the cited registration and the application. First, the “PHI” portion of the registered mark is not separated from the remaining letters by a hyphen. If we were to consider the “PHI” portion of the word PHINOMENAL to have a unique meaning, the remaining portion of the word, “NOMENAL,” is nonsensical. It is much more likely that purchasers with view the mark PHINOMENAL as a unitary term that is a purposeful misspelling of the word “phenomenal.” Applicant also argues that the marks are marketed with their respective house marks appearing on the packaging, which is sufficient to distinguish the marks. However, the respective house marks are not part of the marks involved herein and, thus, the packaging of the products and wording appearing thereon is immaterial to our analysis in this case. When we consider the record and the relevant likelihood of confusion factors, and all of applicant's arguments relating thereto, including those arguments not specifically addressed herein, we conclude that in view of the substantial similarity in the commercial impressions of applicant’s mark, PHENOMENAL FOUNDATION, and registrant’s mark, PHINOMENAL, their contemporaneous use on cosmetics is likely to cause confusion as to the source or sponsorship of such goods. Serial No. 78815030 9 Decision: The refusal under Section 2(d) of the Act is affirmed.