Mysteek Naturals, LLC

Trademark Trial and Appeal BoardJul 30, 2020

87925530 (T.T.A.B. Jul. 30, 2020)

This Opinion is not a Precedent of the TTAB Mailed: July 30, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Mysteek Naturals, LLC _____ Serial No. 87925530 _____ Jasmine C. Jandrlich, Esq. and Rosezena J. Pierce of R.J. Pierce Law Group, P.C., for Mysteek Naturals, LLC. Mark S. Tratos, Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Taylor, Wellington and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Mysteek Naturals, LLC (“Applicant”) seeks registration on the Principal Register of the mark MYSTEEK COLOR POP (in standard characters, COLOR disclaimed) for “Hair color; Hair colorants; Hair coloring preparations; Hair colourants; Hair colouring; Hair colouring and dyes; Hair colouring preparations” in International Class 3.1 1 Application Serial No. 87925530 was filed on May 17, 2018, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as May 17, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Serial No. 87925530 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the registered mark COLOURPOP (in standard characters, COLOUR disclaimed) for “eye shadows, lip liner, lip stains, lipsticks” in International Class 3.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed.3 We affirm the refusal to register. I. Evidentiary Issue Before proceeding to the merits of the refusal, we address an evidentiary matter. The Examining Attorney has objected to the 80 pages of exhibits attached to Applicant’s brief. These exhibits consist of third-party registrations and one third- party application containing the terms COLOR and POP and third-party registrations for marks containing the term POP, many of which are not part of the record. The Examining Attorney’s objection is sustained. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that the record in an application should be complete prior Page references to the application record refer to the online database pages of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal refer to the Board’s TTABVUE docket system. 2 Registration No. 4789245. 3 Applicant filed a reply brief late but requested acceptance of its brief under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) which provides for an extension of time to file certain trademark documents. 11, 12 and 13 TTABVUE. Serial No. 87925530 - 3 - to the filing of an appeal. The exhibits submitted by Applicant with its brief that are not previously in the record are untimely. Accordingly, we have not considered these exhibits, nor Applicant’s arguments based on such materials. II. Likelihood of Confusion Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In every Section 2(d) case, two key factors are the similarity or dissimilarity of the marks and the goods or services. 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.”). A. Relatedness of the Goods, Channels of Trade and Classes of Consumers We first consider the second and third DuPont factors. The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration,’” while the third DuPont factor considers Serial No. 87925530 - 4 - “the similarity or dissimilarity of established, likely-to-continue trade channels.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting DuPont, 177 USPQ at 567). Our analysis under these factors is based on the identifications of goods in the application and the cited registration. Id.; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161- 63 (Fed. Cir. 2014). In analyzing the second DuPont factor it is not necessary that the goods of Applicant and Registrant be similar or even competitive to support a finding of likelihood of confusion. It is sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used thereon, give rise to the mistaken belief that they emanate from, or are associated with, the same source. Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7- Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). In addition, “it is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)). Serial No. 87925530 - 5 - Applicant’s goods are “Hair color; Hair colorants; Hair coloring preparations; Hair colourants; Hair colouring; Hair colouring and dyes; Hair colouring preparations” and Registrant’s goods are “eye shadows, lip liner, lip stains, lipsticks.” The Examining Attorney submitted fourteen third-party registrations to establish relatedness. Most of these registrations show that lipstick and eyeshadow are offered under the same mark as hair color and hair dyes. September 12, 2018 Office Action at TSDR 4-22; April 4, 2019 Office Action at TSDR 4-21. Examples include BLENDWELL (Reg. No. 4565632) for goods that include hair color, eye makeup, eyeshadow; KRUSH (Reg. No. 4565633) for goods that include hair color and eyeshadow; ROLDA and design (Reg. No. 4698497) for goods that include hair color, eye makeup, and lipstick; BESTLAND (Reg. No. 5151017) for goods that include eyeshadow and hair color; MICROCARE (Reg. No. 3099585) for goods that include lipstick, eye shadow, hair colorings, and hair dye; and SKM (Reg. No. 5133726) for goods that include hair colorants, eye shadow and lipsticks. Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods are of a type which may emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). The Examining Attorney also submitted Internet website evidence of to show that companies that offer lipstick and eyeshadow also offer hair color or hair dye under a common house mark, e.g., Revlon, L’oreal, Lush, Aveda, and Salerm Cosmetics. September 12, 2018 Office Action at TSDR 28-38; April 4, 2019 Office Action at 22- Serial No. 87925530 - 6 - 44, 68-69; November 4, 2019 Denial of Reconsideration at TSDR 5-9. The Examining Attorney’s evidence establishes that Applicant’s and Registrant’s goods may emanate from a common source. Applicant argues the goods are unrelated and that the Examining Attorney’s evidence is insufficient, however, we find this evidence is sufficient to establish the relatedness of the goods. Applicant also asserts that a “viable relationship standard does not apply” to the goods as it would for identical marks because its mark includes the additional term MYSTEEK. 7 TTABVUE 16. In this regard, although the marks are obviously not identical, we find the evidence establishes more than just a “viable relationship” between the goods in view of our finding that the goods are the type that may emanate from a common source. As to trade channels, in the absence of a restriction in Applicant’s identification of goods and in the identification of goods in the cited registration, we must assume that the goods travel in “the normal and usual channels of trade and methods of distribution.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Applicant’s arguments regarding Applicant’s and Registrant’s actual trade channels are unavailing, 7 TTABVUE 17, because an applicant may not restrict the scope of the goods or services by argument or extrinsic evidence. In re Bercut- Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). We are bound to consider all appropriate channels of trade for such goods based on the identifications in the Serial No. 87925530 - 7 - application and the registration, and not the actual trade channels. Id at 765; Stone Lion Capital Partners, 110 USPQ2d at 1162. The Examining Attorney’s evidence shows that companies offering eye shadow, lipstick and hair coloring products may offer the goods for purchase on their Internet websites. Thus, the Internet website evidence shows that hair color and hair dye are marketed in the same channels of trade to the same class of purchasers as eyeshadow and lipstick. Applicant acknowledges in its brief that company websites are a trade channel for both Applicant and Registrant. 7 TTABVUE 17. Therefore, we conclude that the channels of trade and purchasers would at least overlap. The relatedness of the goods, channels of trade and classes of purchasers favor a finding of likelihood of confusion. B. Strength and Weakness of the Mark and Similarity of the Cited Mark We next consider the strength or weakness of the cited mark. Applicant argues that COLOURPOP is “highly suggestive” of beauty and cosmetic goods. Applicant submits that the terms COLOUR and POP separately and combined are diluted and that COLOURPOP is entitled to a narrow scope of protection. 7 TTABVUE 11-12. Applicant argues that consumers can distinguish Applicant’s and Registrant’s marks due to the additional term MYSTEEK in Applicant’s mark as well as the additional letter “u” in the term COLOUR in Registrant’s mark. 7 TTABVUE 12. Serial No. 87925530 - 8 - We agree that the disclaimed term COLOUR/COLOR is intrinsically weak and has little source-identifying value for purposes of distinguishing the two marks. It is clearly descriptive of the hue or shade of cosmetics, makeup, and hair color. As to the term POP, Applicant relies on the dictionary definition in the record and submits that POP is highly suggestive of the function of makeup and cosmetic goods as it means “something that stands out or is distinctive .” 7 TTABVUE 11. September 12, 2018 Office Action at TSDR 55-57. Applicant also asserts that the term POP is highly suggestive as it has been commonly registered by third parties for beauty and cosmetic goods, relying on third-party registrations for marks that contain the term POP to support its argument that this term is weak.4 Third-party registrations alone may be relevant, in the manner of dictionary definitions, “to prove that some segment of the [marks] has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 , 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (internal quotation marks omitted). See also Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); 4 Applicant also included in the record an application for a mark containing the term POP. However, a third-party application is only evidence that an application was filed for registration of the mark. See In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). In its March 12, 2019 Response to Office Action, Applicant also submitted a list of registrations containing COLOR and POP. As the Examining Attorney noted in the April 4, 2019 Office Action, a list of registrations is not sufficient to make them of record in the proceeding. See In re Gold’s Gym Enterprises, Inc., 3 USPQ2d 1716, 1716 n.2 (TTAB 1987). As stated above, we have only considered those third-party registrations submitted during prosecution. Serial No. 87925530 - 9 - In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016) (“[T]hird-party registrations are relevant evidence of the inherent or conceptual strength of a mark or term because they are probative of how terms are used in connection with the goods or services identified in the registrations.”). See also In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x (Fed. Cir. 2019). (“In determining the degree of weakness, if any, in the shared terms, we must ‘adequately account for the apparent force of [third-party use and registration] evidence,’ regardless of whether ‘specifics’ pertaining to the extent and impact of such use have been proven.”). In connection with these submissions, we have not considered third-party POP- formative registrations issued under Section 44(e) or Section 66(a)5 nor have we considered those third-party POP-formative registrations which are for goods other than makeup or cosmetics, for which there is no evidence or explanation of relatedness. In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for other types of goods where the proffering party had neither proven nor explained how they were related to the goods in the cited registration). We find eighteen of these registrations most relevant.6 Relevant examples include Body Pop (Reg. No. 4515554) for goods including cosmetics; Champagne Pop (Reg. No. 5420902) for cosmetics; Cheek Pop (Reg. No. 5 Registrations issued under Sections 44(e) or 66(a) do not demonstrate exposure of the mark prior to registration through use in commerce and, therefore, have no probative value. Calypso Tech., Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 (TTAB 2011); In re Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010). 6 Three of the registrations are owned by the same entity. Serial No. 87925530 - 10 - 4572818) for cosmetics; Dollipop (Reg. No. 4682109) for cosmetics, namely eye shadow and nail polish; Flashpop! (Reg. No. 4750354) for cosmetics; Glitter Pop (Reg. No. 5459547) for cosmetics and cosmetic preparations; and Mentha Pop (Reg. No. 3972036) for goods that include lipstick. The number of third-party registered marks owned by different entities indicates that POP is highly suggestive as applied to cosmetics and makeup and related goods and reflects some conceptual weakness in this context. See Juice Generation, 115 USPQ2d at 1674-75. However, these registrations, all evoke a different commercial impression than Registrant’s mark as they do not contain the term COLOR/COLOUR and contain other terms in addition to POP. These third-party registrations do not support a finding of conceptual weakness as to Registrant’s COLOURPOP mark as a whole. See In re Merck & Co., Inc. 189 USPQ 355, 356 (TTAB 1975) (third-party registrations showing frequent adoption of the letter “M” as a portion of composite mark do not establish that registrant’s mark M-VAC as a whole is weak and entitled to limited protection). We now turn to the first DuPont factor, which requires us to determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). Applicant’s mark is MYSTEEK COLOR POP and Registrant’s mark is COLOURPOP. Serial No. 87925530 - 11 - As indicated, Applicant argues that the difference in spelling of COLOR/COLOUR is “a sufficient difference” between Applicant’s and Registrant’s marks due to the additional vowel “u.” 7 TTABVUE 12. The term COLOUR in Registrant’s mark is the British spelling of “color.” April 4, 2019 Office Action at TSDR 45, 46, 49, and 51, Merriam-Webster Dictionary, merriamwebster.com and American Heritage Dictionary, ahddictionary.com. However, we find the additional letter does not create a significant difference in sound and appearance because of its placement next to the vowel “o.” The dictionary definitions in the record show that this word would be pronounced the same. April 4, 2019 Office Action at TSDR 51, 52, American Heritage Dictionary, ahddictionary.com. Applicant also argues that “MYSTEEK” is a strong distinctive term and the dominant portion of its mark, as it is the first word in the mark and the first part of a mark that will be impressed upon the mind of a purchaser and remembered. 7 TTABVUE 10. Applicant argues that this addition in its mark is a sufficient difference to avoid likelihood of confusion due to differences in sound, appearance and connotation of the term MYSTEEK. 7 TTABVUE 12. The test, under the first DuPont factor, 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 Serial No. 87925530 - 12 - confusion as to the source of the goods offered under the respective marks is likely to result. Applicant’s and Registrant’s marks are visually and aurally similar because they share the terms COLOR POP/COLOURPOP. Indeed, Applicant’s mark incorporates Registrant’s mark in its entirety. Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women’s clothing stores and women’s clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women’s clothing). The fact that Applicant’s mark subsumes Registrant’s mark increases their similarity. Applicant argues that the connotations and commercial impression of Applicant’s and Registrant’s marks are different when considered in connection with the goods. Applicant submits that its mark connotes “that the hair color and hair color preparations will make the hair color stand out, not alter or change the physical appearance. It impresses upon consumers colorful or vibrant hair.” 7 TTABVUE 14. Applicant submits that Registrant’s mark relates to facial features and altering the appearance with makeup, and “suggesting “that the makeup will make the facial features more distinctive or stand out with the color… and impresses upon consumers bright and notable hues with distinct contrasts to the face.” 7 TTABVUE 14-15. Serial No. 87925530 - 13 - Overall, we find that the marks have a similar connotation and commercial impression in that both marks suggest that the goods offer colors that will stand out for the user. While MYSTEEK appears first in Applicant’s mark and injects a possible different connotation not found in the cited mark, its presence does not, by itself, remove the possibility of confusion. Applicant argues that the addition of MYSTEEK in its mark is sufficient to distinguish the marks as “there is no per se rule that if two product marks [are] allegedly confusingly similar, the addition of a house mark would not be sufficient to differentiate the marks.” 7 TTABVUE 13. Generally, the addition of a house mark or other matter may “only serve to aggravate the likelihood of confusion” rather than avoid it. In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (LE CACHET DE DIOR confusingly similar to CACHET). See also In re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE for automotive service centers confusingly similar to ACCUTUNE for automotive testing equipment); and Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168 (TTAB 1982) (MENNEN SKIN SAVERS for hand and body lotion confusingly similar to SKIN SAVERS for face and throat lotion). However, where additional distinctive elements such as house marks are added to matter that is descriptive or diluted, confusion may be avoided. See, e.g., In re Hartz Hotel Services, Inc., 102 USPQ2d 1150, 1155 (TTAB 2012) (the mark “Grand Hotel,” itself, is weak and entitled to a very narrow scope of protection; consumers are able to distinguish between different GRAND HOTEL marks based on small differences Serial No. 87925530 - 14 - in the marks); Knight Textile Corp. v. Jones Investment Co., 75 USPQ 1313, 1316- 1317 (TTAB 2005) (the mark ESSENTIALS found so highly suggestive that the addition of house mark NORTON MCNAUGHTON was sufficient to distinguish the marks). Although Applicant argues that the term COLOURPOP is weak, there is no evidence in the record of registered marks containing the term COLOURPOP/COLORPOP as a whole for cosmetic or makeup. Therefore, Applicant has not established that COLOURPOP/COLOR POP as a whole has been so commonly used in the makeup or cosmetic field by third-parties that the cited registration is entitled to a narrower scope of protection. Here, the addition of MYSTEEK to Applicant’s mark does not distinguish Applicant’s mark from Registrant’s mark as an indicator of source. Rather, consumers already familiar with Registrant’s mark may interpret the addition of MYSTEEK as a house mark that simply identifies what had previously been an anonymous source for Registrant’s goods. See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1367 (TTAB 2007) (“Indeed, a consumer who has been told about the advantages of registrant’s MVP casino services is likely to believe that the CLUB PALMS MVP casino services is simply the now identified source of the previously anonymous MVP casino services.”). Therefore, the similarity of the marks weighs in favor of a finding of likelihood of confusion. Serial No. 87925530 - 15 - C. Absence of Actual Confusion Applicant also argues that there has been no evidence of actual confusion between its mark and the Registrant’s mark and this Dupont factor is “meaningful.” 7 TTABVUE 18. However, it is not necessary to show actual confusion to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1843 (Fed. Cir. 1990). Particularly in an ex parte proceeding, Applicant’s assertion of the absence of actual confusion is of little probative value in our determination on the issue of likelihood of confusion because we cannot readily determine whether there has been a significant opportunity for actual confusion to have occurred, such that the absence of confusion is meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984); and In re Jeep Corp., 222 USPQ 333, 337 (TTAB 1984). We find this DuPont factor neutral. III. Conclusion We have considered all of the arguments and evidence of record, and all relevant DuPont factors of which there is evidence of record. Because we have found that the marks at issue are similar and that Applicant’s identified goods are related to Registrant’s goods and would move in some of the same trade channels to the same class of purchasers, we conclude that confusion is likely. Decision: The refusal to register Applicant’s mark MYSTEEK COLOR POP is affirmed.