Legacy United, LLC

Trademark Trial and Appeal BoardJun 22, 2020

88094134 (T.T.A.B. Jun. 22, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: June 22, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Legacy United, LLC _____ Serial No. 88094134 _____ Dorian B. Kennedy of Baker Donelson Bearman Caldwell & Berkowitz, PC, for Legacy United, LLC. Ronald McMorrow, Trademark Examining Attorney, Law Office 118, Michael W. Baird, Managing Attorney. _____ Before Ritchie, Kuczma and English, Administrative Trademark Judges. Opinion by English, Administrative Trademark Judge: Legacy United, LLC (“Applicant”) seeks registration on the Principal Register of the standard character mark DERMAZENE1 for “topical pharmaceutical preparations for the treatment of dermatological diseases, disorders and conditions; pharmaceutical preparations for use in dermatology” in International Class 5. 1 Application Serial No. 88094134, filed August 27, 2018 claiming a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 88094134 - 2 - The Examining Attorney refused registration of the mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the standard character mark DERMASYN for “medical cleansers for skin and wounds; medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels; medicated skin preparation for use in treating pressure sores, surgical incisions, diabetic ulcers, thermal burns, tissue trauma, and venous stasis ulcers; pharmaceutical preparations for wounds”2 in International Class 5. When the refusal was made final, Applicant appealed. We affirm the refusal to register. I. Analysis 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 likelihood of confusion. In re E. I. DuPont de Nemours & Co, 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co. Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor that is relevant or for which there is evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2 Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). 2 Principal Register Registration No. 4601083, issued September 9, 2014. Serial No. 88094134 - 3 - In any likelihood of confusion analysis, two key considerations are the similarities between the marks and between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). We address these factors, and the other relevant Du Pont factors below. A. Similarity or Dissimilarity of the Goods, Trade Channels, and Classes of Consumers We first address the similarity or dissimilarity of the goods. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed in the identification of goods in a particular class. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019); In re Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015). Applicant argues “it is apparent that the goods themselves are dissimilar” because the cited registration is limited to “wound related preparations” while “Applicant’s mark describes a very specific type of preparation, one which is used to treat Serial No. 88094134 - 4 - dermatological problems, i.e., skin disorders or diseases.”3 We are not persuaded that there is a meaningful distinction between the goods. “Dermatology” is the “branch of medicine dealing with the skin, its structure, functions, and diseases”’ (emphasis added) and a “wound” is “an injury to the body (as from violence, accident, or surgery) that typically involves laceration or breaking of a membrane (such as the skin) and usually damage to underlying tissues” (emphasis added).4 Accordingly, the goods in the cited registration, namely, a “medicated skin preparation for use in treating” various wounds and “pharmaceutical preparations for wounds” are encompassed within Applicant’s more broadly worded “topical pharmaceutical preparations for the treatment of dermatological diseases, disorders and conditions; pharmaceutical preparations for use in dermatology.” In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Moreover, Registrant’s “medical cleansers for skin and wounds” and “medicated skin care preparations, 3 Applicant’s Brief, 4 TTABVUE 7. Citations to the prosecution record are to the Trademark Status & Document Retrieval (“TSDR”) system by page number in the downloadable .pdf versions of the documents. All other citations are to TTABVUE, the Board’s online docketing system. 4 The Examining Attorney’s request that we take judicial notice of the dictionary definitions (attached to his brief) for “dermatology,” “pharmaceutical,” and “medicate” is granted. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.24 (TTAB 2013) (The Board may take judicial notice of online dictionaries that exist in printed format or have regular fixed editions). We also take judicial notice of the definition for the word “wound.” See Merriam-Webster Online dictionary, at https://www.merriam-webster.com/dictionary/wound, last visited June 18, 2020. Serial No. 88094134 - 5 - namely, creams, lotions, gels, toners, cleaners and peels” are closely related to, if not encompassed within, Applicant’s goods. Because the goods are legally identical, in part, and there are no restrictions in Applicant’s application or the cited registration, we must presume that the goods travel in the same channels of trade to the same prospective purchasers for those goods, i.e. doctors, pharmacists, hospitals, and patients. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). In view of the foregoing, we find that the similarities between the goods, trade channels, and classes of consumers weigh strongly in favor of finding a likelihood of confusion. B. Sophistication of the Purchasers Applicant argues that confusion is less likely because Applicant’s and Registrant’s goods are “typically” purchased by “medical doctors” who are sophisticated purchasers “carefully considering all aspects of the medicine and reviewing the products” before making a purchase.5 Medical providers and pharmacists may be sophisticated purchasers likely to prescribe medication and fill prescriptions with 5 Applicant’s Brief, 4 TTABVUE 8-9. Serial No. 88094134 - 6 - care, but they are not “immune from mistaking one trademark for another.” Schering Corp. v. Alza Corp., 207 USPQ2d 504, 509 (TTAB 1980) (“Furthermore, the fact that the purchasers of both applicant’s and opposer’s [time-release drug] products are discriminating in their selection and make their purchases only after careful consideration, and know from whom they buy, does not mean that they are equally knowledgeable as to trademarks and immune from mistaking one trademark for another, when marks are as similar as those here in issue and cover merchandise in the same general field.”); see also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988) (“[B]eing knowledgeable and/or sophisticated in a particular field does not necessarily endow one with knowledge and sophistication in connection with the use of trademarks.”). Moreover, where, as here, pharmaceutical and medicinal preparations are involved, greater care must be taken to avoid confusion because mistakes in the selection and use of these goods may result in serious and harmful consequences. Glenwood Labs., Inc. v. American Home Prods. Corp., 455 F.2d 1384, 173 USPQ 19, 21-22 (CCPA 1972) (“The goods here involved being drugs, confusion as to which could unquestionably give rise to serious consequences, we thing [sic] due consideration ought properly be given that fact in the determination of likelihood of confusion.”); In re Cook Med. Techs. LLC, 105 USPQ2d 1377, 1382 (TTAB 2012) (“[W]e are cognizant that likelihood of confusion takes on additional significance when the goods are pharmaceuticals or medical instruments.”); Schering Corp. v. Alza Corp., 207 USPQ2d at 509 (“[W]e must not lose sight of the fact that in the present case we are Serial No. 88094134 - 7 - dealing with pharmaceutical products, and it is well established that in such a field great care must be taken to prevent any possibility of confusion in the use of trademarks.”); TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1207.01(d)(xii) (Oct. 2018). Accordingly, we find that this factor weighs in favor of finding a likelihood of confusion. C. Strength of the Cited Mark We next assess the strength of the cited mark considering both its conceptual strength based on the nature of the mark itself and its commercial strength based on the marketplace recognition value of the mark. In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”). Applicant argues that “there is extensive evidence of third-party registrations and use of marks containing the word ‘derma’ in connection with some type of skin preparations.”6 In support of this position, Applicant submitted a number of active registrations owned by different third-parties for marks incorporating “derma,” including use-based registrations:7 6 Id. at 10. 7 Applicant reattached the third-party registrations to its appeal brief. This was not a convenience, but rather a hindrance to our review of the record. Applicant should have cited the record in the TSDR system as we have done in this opinion. We have cited only those marks starting with the term “derma,” but we have considered all of the use-based third-party registrations of record. Serial No. 88094134 - 8 - • for the following marks for pharmaceutical and medicated skincare preparations: DERMA GENIUS, DERMA-SMOOTHE/FS, DERMA GUARD, DERMA-GLOVE, DERMA PLUS, DERMA KLEAR, DERMA CELLA, DERMA SCIENCES & Design, and DERMA VEIL CUTANEOUS BIO-STIMULANT & Design;8 and • for the following marks for non-medicated skincare preparations: DERMA-E, DERMA BRILLIANCE & Design, DERMA FAIRE & Design, DERMA FAITH, DERMA RESCUE, DERMA MD, DERMA-LAC, DERMA CHROMATIC, DERMA SUBMLINE, DERMA-LUCIA, DERMA BOOST & Design, DERMA CARE, DERMA-PURE, DERMA Q-NOL, DERMA FADE, DERMA GENESIS, DERMA-BELLA SKIN REPAIR FORMULA (Stylized), DERMA C, DERMA SWISS 3000 & Design, DERMA FLEUR, DERMA CLINIC PRESCRIBED BEAUTY (Stylized), DERMA SOOTHE, and DERMA-GENIC.9 “Derma” is defined as “skin or skin ailment of a (specified) type.”10 Accordingly, the ubiquity of registrations for marks incorporating “derma” for skincare 8 June 11, 2019 Office Action Response at TSDR 25-32, 43-46, 53-54, 61-64, 69-70, 75-78 and 129-130. The registrations for the following marks include a disclaimer of “derma”: DERMA GENIUS, DERMA GUARD, DERMA PLUS, DERMA KLEAR, DERMA CELLA, DERMA SCIENCES & Design, and DERMA VEIL CUTANEOUS BIO-STIMULANT & Design. 9 Id. at 85-88, 91-110, 115-118, 123-128, 131-136, 141-148, and 151-154. The registrations for the following marks include a disclaimer of “derma”: DERMA FAIRE & Design, DERMA FAITH, DERMA RESCUE, DERMA MD, DERMA CHROMATIC, DERMA SUBMLINE, DERMA BOOST & Design, DERMA Q-NOL, DERMA FADE, DERMA SWISS 3000 & Design, and DERMA SOOTHE. In addition, the mark DERMA C is registered on the Supplemental Register. 10 We take judicial notice of the definition of “derma.” Merriam-Webster online dictionary, last visited June 18, 2020 at https://www.merriam-webster.com/dictionary/-derma. Serial No. 88094134 - 9 - preparations, many of which include a disclaimer of “derma,” is not surprising. RxD Media, LLC v. Application Dev. LLC, 125 USPQ2d 1801, 1812 (TTAB 2018) (“Third- party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade, industry, or ordinary parlance.”) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)). This evidence supports that the shared component “derma” is inherently weak for skincare preparations. That said, Applicant’s mark is more similar to the cited mark than any of the third-party registered marks of record. Furthermore, although the “derma” portion of the cited mark is conceptually weak with regard to the cited goods, there is insufficient evidence that the cited mark is conceptually weak when considered in its entirety, and it is not registered on the Supplemental Register or with a claim of acquired distinctiveness. Therefore, we accord it the normal scope of protection for an inherently distinctive mark. As to commercial strength, Applicant has not submitted any evidence of third- party use. The only third-party evidence is third-party registrations, which “standing alone, are not evidence that the registered marks are in use on a commercial scale, let alone that consumers have become so accustomed to seeing them in the marketplace that they have learned to distinguish among them by minor differences.” In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016). Accordingly, there is no basis for finding that the cited mark is commercially weak. Serial No. 88094134 - 10 - D. Similarity or Dissimilarity between the Marks We next consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); DuPont, 177 USPQ at 567. “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). In comparing the marks, we keep in mind that the degree of similarity necessary to support a likelihood of confusion lessens when, as here, the goods are legally identical, in part. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). The issue 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. Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). We do not predicate our analysis on a dissection of the involved marks; we consider the marks Serial No. 88094134 - 11 - in their entireties. Stone Lion, 110 USPQ2d at 1160; 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.”). There is, however, “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 consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Both Applicant’s mark and the cited mark are three-syllable terms starting with the prefix “derma.” Applicant argues that the marks are overall dissimilar in appearance and sound because “‘derma’ is a generic term” and the last syllable in Applicant’s mark appears and sounds “distinctly different” from the last syllable in the cited mark.11 We recognize that the prefix “derma” is conceptually very weak for the identified goods, but we cannot ignore this portion of the marks. See In re Electrolyte Labs., Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990) (“[N]o feature of a mark is ignored, and appropriate weight is given to the effect of features common to both marks.”) (internal citation omitted). Moreover, we are not persuaded that the suffixes are “distinctly different.” Applicant asserts that the “zene” suffix in its mark is pronounced “zeen” while the prefix “syn” in the cited mark is pronounced as “sin.” There is, however, no correct way to pronounce a trademark. See, 11 Applicant’s Brief, 4 TTABVUE 6-7. Serial No. 88094134 - 12 - e.g., Viterra, 101 USPQ2d at 1912 (“[T]here is no correct pronunciation of a trademark, and consumers may pronounce a mark differently than intended by the brand owner.”); Centraz Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006) (acknowledging that “[t]here is no correct pronunciation of a trademark” and finding ISHINE (stylized) and ICE SHINE confusingly similar for identical goods); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984) (“[A]s we have said many times, there is no ‘correct’ pronunciation of a trademark”). The letters “z” and “s”12 and the letters “e” and “y” may be pronounced similarly and the suffixes in both marks incorporate the letter “n.” Given the identical first syllable “derma,” consumers encountering the marks might not hear or otherwise notice the rather slight differences in the marks’ suffixes, particularly as we have found that the mark in the cited registration is entitled to a normal scope of protection. See Viterra, 101 USPQ2d at 1912 (recognizing that “minor differences” in the sound of the marks “may go undetected by consumers”); In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983) (“Slight differences in the sound of similar marks do not avoid a likelihood of confusion.”). Rather, it is foreseeable that a purchaser may believe the marks are the same or, if a purchaser realizes that there are some differences in the marks, she may believe that the second mark is simply a slightly varied version of the first, “with both serving to indicate origin in the same source.” In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1468 (TTAB 1988). 12 The letter “s” is pronounced as a “z” in a number of words, for example: “cousin,” “use,” and “because.” Serial No. 88094134 - 13 - In sum, when we consider the marks in their entireties we find that the similarities between the marks in overall appearance, sound, connotation and commercial impression outweigh the differences between the marks. Accordingly, the similarities between the marks weighs in favor of finding a likelihood of confusion. E. Cancelled Third-Party Registration for DERMAZENE The thirteenth DuPont factor relates to “any other established fact probative of the effect of use.” DuPont, 177 USPQ at 567. It is under this factor that we consider Applicant’s argument that “the U.S. Trademark Office has previously determined that no likelihood of confusion exists between [the marks] DERMAZENE and DERMASYN” because the cited mark was allowed to register notwithstanding the existence of third-party Registration No. 3863857 for the mark DERMAZENE (Stylized) for goods including “dermatological pharmaceutical preparations” and “medicated skin care preparations, namely, creams, lotions, gels, toners, cleaners and peels.”13 This argument is unpersuasive. We are not bound by a previous examining attorney’s determination that the cited mark was entitled to register. Each application must be examined on its own record. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board must evaluate the evidence in the present record to determine whether there is sufficient evidence ….”); In re Shinnecock Smoke 13 Applicant’s Brief, 4 TTABVUE 15 and 151-152. Applicant did not introduce this registration during prosecution, and the Board does not take judicial notice of Office records. But because the Examining Attorney treats the registration as if it is of record, we do too. In re Olin Corp., 124 USPQ2d 1327, 1335 n.22 (TTAB 2017). Serial No. 88094134 - 14 - Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“[E]ach application must be considered on its own merits.”); In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (same). II. Conclusion The goods in Applicant’s application and the cited registration are legally identical, in part, and the trade channels and classes of consumers overlap. Notwithstanding the inherent weakness of the shared prefix “derma,” the overall similarities between the marks in appearance, sound, connotation and commercial impression are sufficiently striking that consumers are likely to mistakenly believe that the goods emanate from a common source. Accordingly, we find that confusion between Applicant’s mark and Registrant’s mark is likely. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.