Max Mix-Produtos De Beleza Ltda-Epp

Trademark Trial and Appeal BoardMar 12, 2019

No. 87241105 (T.T.A.B. Mar. 12, 2019)

This Opinion is not a Precedent of the TTAB Mailed: March 12, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Max Mix-Produtos De Beleza Ltda-Epp _____ Serial No. 87241105 _____ Vivian Ortiz Ponce of Marcas Estados Unidos for Max Mix-Produtos De Beleza Ltda-Epp. Yatsye I. Lee, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Ritchie, Shaw and Greenbaum Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Max Mix-Produtos De Beleza Ltda-Epp (“Applicant”) seeks registration on the Supplemental Register1 of the mark PIELE, in standard characters, for “On-line ordering services featuring cosmetics; On-line retail store services featuring cosmetics; On-line wholesale store services featuring cosmetics; Retail stores featuring cosmetics; Wholesale store services featuring cosmetics,” in International 1 Applicant amended its application to the Supplemental Register to overcome a Section 2(e)(1) refusal. Response to Office Action, dated April 2, 2018. Serial No. 87241105 - 2 - Class 35.2 The application includes the following translation: “The English translation of ‘PIELE’ in the mark is ‘SKIN’.” Registration has been refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with the identified services, so resembles the mark PIEL BOUTIQUE, also in standard characters and on the Supplemental Register, for “On-line retail store services featuring a wide variety of consumer goods of others,” in International Class 35, as to be likely to cause confusion, mistake or deception.3 The cited registration disclaims “BOUTIQUE” and includes the following translation: “The English translation of ‘Piel’ in the mark is ‘Skin’.” When the refusal was made final, Applicant appealed and requested reconsideration. The request was denied and the appeal resumed. We affirm the refusal to register. I. Evidentiary Issue Before proceeding to the merits of the refusal, we address an evidentiary matter. With its Appeal Brief, Applicant submitted copies of two trademark registrations for marks including the term PIEL that were not previously introduced into the record during prosecution.4 2 Application Serial No. 87241105, filed on November 18, 2016 under Section 44(e) of the Trademark Act, 15 U.S.C. § 1026(e), based on Brazilian Reg. No. 904731243 issued June 30, 2015. 3 Registration No. 4456786, issued December 24, 2013. 4 16 TTABVUE 9-10 Serial No. 87241105 - 3 - Relying on Rule 2.142(d), 37 C.F.R. § 2.142(d), the Examining Attorney objects to the evidence submitted by Applicant with its Appeal Brief. Rule 2.142(d) states: The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination. As set forth in the Rule, the record should be complete prior to the filing of the appeal. If Applicant desired to introduce additional evidence after the appeal was filed, it should have submitted a request to the Board to suspend the appeal and to remand the application for further examination. Thus, we sustain the Examining Attorney’s objection and the registrations attached to Applicant’s Appeal Brief will not be considered. See In re Luxuria s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011); Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 1207.01 (June 2018). II. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the goods or services and the similarities between the marks. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The Serial No. 87241105 - 4 - fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”). A. The similarity or dissimilarity of the marks in their entireties We begin with the first du Pont factor and consider the marks, comparing them for similarities and dissimilarities in appearance, sound, connotation and commercial impression. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The emphasis of our analysis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. Although we consider the mark as a whole, “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark.” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant’s mark is the word PIELE in standard characters. Registrant’s mark is the wording PIEL BOUTIQUE, also in standard characters. Both PIELE and PIEL translate to “skin.” The dominant portion of the marks is the term PIELE or PIEL. Although we must consider the marks in their entireties, the wording BOUTIQUE in Registrant’s mark is less significant because it is descriptive of Registrant’s services and has been disclaimed. In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed matter that is descriptive of or generic for a party’s goods or services is typically less significant or less dominant when comparing marks). Serial No. 87241105 - 5 - Given that both PIELE and PIEL translate to “skin,” we find that both marks convey the same commercial impression and connotation, namely of an online store devoted to skin care products or cosmetics. The presence of the term BOUTIQUE in Registrant’s mark does not change the commercial impression inasmuch as it describes a type of retail establishment. Regarding similarity in appearance and sound, both marks begin with the term PIELE or PIEL which will likely be pronounced by United States consumers in a very similar, if not identical, manner. Applicant argues that PIELE has two syllables whereas PIEL has only one, but it is well settled that there is no correct pronunciation of a mark. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Even assuming that the mark in the cited registration may be pronounced with two syllables, the marks are still pronounced similarly in dominant part, and when considered as a whole. Nor does the presence of the term BOUTIQUE in Registrant’s mark distinguish the marks in terms of sound because the first word is often used in calling for the goods or services. See Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label). In addition, both marks are similar in appearance because they are in standard characters and could be displayed in similar fonts. See Viterra, 101 USPQ2d at 1909; see also 37 C.F.R. § 2.52(a). Applicant argues that its mark is entitled to registration because marks on the Supplemental Register are entitled to a narrower scope of protection. This argument Serial No. 87241105 - 6 - is unpersuasive. Even taking into account some degree of conceptual and commercial weakness of the translation, “skin,” the overall strong similarity of the marks result in this factor supporting a finding of likelihood of confusion. “It has often been emphasized that even weak marks are entitled to protection against confusion.” Hunt Control Sys. Inc. v. Koninklijke Philips Elecs. N.V., 98 USPQ2d 1558, 1567-68 (TTAB 2011) (quoting King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (“[E]ven suggestive or weak marks are entitled to protection from the use of a very similar mark for legally identical services”); see also In re Clorox Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for a laundry soil and stain remover held confusingly similar to STAIN ERASER, registered on the Supplemental Register, for a stain remover). In sum, given their resemblance in sound, appearance, connotation and commercial impression, Applicant’s mark and the cited mark are similar. This du Pont factor favors a finding of likelihood of confusion. B. Similarity of the services, trade channels, and classes of purchasers We next consider the similarity of Applicant’s and Registrant’s services, keeping in mind that the services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). The respective services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [they] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 Serial No. 87241105 - 7 - USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). Applicant’s services are retail, wholesale, and online store services featuring cosmetics. Registrant’s services are “On-line retail store services featuring a wide variety of consumer goods of others.” The Examining Attorney’s evidence establishes that the wording “consumer goods” includes cosmetics.5 Thus, Registrant’s more broadly worded online retail store services featuring consumer goods encompass Applicant’s narrower online store services featuring cosmetics. See 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.’”). The services, therefore, are identical in part. It is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of services within a particular class in the application. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Considering the channels of trade and classes of purchasers, because the services are identical in part and contain no limitations, it is presumed that they move in all channels of trade normal for those services, and that they are available to all classes of purchasers. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 5 Attachments to October 2, 2017 Office Action, TSDR pp. 6-7; Attachments to February 27, 2017 Office Action, TSDR pp. 6-52; Attachments to October 2, 2017 Office Action, TSDR pp. 10-57; and Attachments to May 7 2018, Denial of Request for Reconsideration, TSDR pp. 5- 173. Serial No. 87241105 - 8 - 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). See also Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods [and services] are presumed to travel in all normal channels . . . for the relevant goods [and services].”). In light of the evidence which demonstrates that the services identified in both the registration and application often are sold by the same source, we find the channels of trade or classes of purchasers to be the same or similar. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Accordingly, we find the Examining Attorney’s evidence establishes that Applicant’s services are related to Registrant’s services, that the respective services travel in the same trade channels, and they are likely to be purchased by the same consumers. See In re Albert Trostel, 29 USPQ2d at 1785-86. Moreover, Applicant does not argue that the services, trade channels, and classes of purchasers are unrelated. The du Pont factors relating to the similarity of the services, channels of trade, and classes of purchasers favor a finding of likelihood of confusion. C. Balancing the Factors We have carefully considered all of the evidence and arguments of record relevant to the pertinent du Pont likelihood of confusion factors. Given the similarity of the marks, the overlapping nature of the services and their channels of trade and classes of purchasers, we find that the Office has met its burden in showing a likelihood of confusion between Applicant’s mark and the cited mark. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Trademark Act is affirmed.