Nu Skin Int’l., Inc.

Trademark Trial and Appeal Board

Sep 30, 1999

No. 75293155 (T.T.A.B. Sep. 30, 1999)

Paper No. 9
cmb
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nu Skin International, Inc.
________
Serial No. 75/293,155
_______
W. Norman Roth of Roth & Goldman for Nu Skin International,
Inc.
Jeffrey Dalton Martin, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney)
_______
Before Sams, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has filed a use-based application1 to
register on the Principal Register the mark HAIRFITNESS for
goods identified, as amended, as "hair care and styling
preparations, namely hair shampoos, hair and scalp

1 Serial No. 75/293,155, filed May 16, 1997. April 1995 is
alleged as the date of first use of the mark anywhere and first
use of the mark in commerce. In the application, applicant
claims ownership, by assignment, of Registration No. 1,944,458,
which is of the mark HAIR FITNESS (HAIR disclaimed) for goods
Ser. No. 75/293,155
2
conditioners, hair detangling preparations, styling gels,
holding sprays, and 3 in 1 shampoo, conditioner and
protectant hair care preparations."
The Trademark Examining Attorney has refused
registration on the ground that applicant’s mark, as
applied to applicant’s goods, so resembles the registered
mark HAIR FITNESS and design (HAIR disclaimed), depicted
below,
for "vitamin and nutritional supplements for the hair,"2 as
to be likely to cause confusion, to cause mistake, or to
deceive. See Trademark Act Section 2(d), 15 U.S.C.
§1052(d).3

identified as "non-medicated hair care preparations, namely
shampoos and conditioners."
2 Reg. No. 1,668,204, issued December 17, 1991; Section 8 and 15
affidavit accepted. September 25, 1990 is alleged in the
registration as the date of first use of the mark anywhere, and
October 1, 1990 is alleged as the date of first use in commerce.
3 Initially, the Trademark Examining Attorney had refused
registration under Section 2(d) based on a second registration
owned by the same registrant, i.e., Registration No. 1,658,635 of
the mark HAIR FITNESS (HAIR disclaimed) for "hair vitamin and
nutritional supplement." However, that registration has now been
cancelled under Section 8, as acknowledged by the Trademark
Examining Attorney in his brief. Accordingly, we deem the
Section 2(d) refusal to be moot as to that registration.
Ser. No. 75/293,155
3
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney
have filed briefs. No oral hearing was requested. 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). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Applicant’s mark is so similar to the cited registered
mark that confusion is likely to result from
contemporaneous use of the marks on related products. The
marks are phonetically identical and share the same
connotation, notwithstanding that applicant’s mark is
presented as one word and registrant’s mark is presented as
two words. The presence of the design feature in
registrant’s mark does not distinguish the two marks.
Notwithstanding applicant’s contention to the contrary, we
find that the word portion of registrant’s mark, not the
Ser. No. 75/293,155
4
design portion, is the dominant feature of that mark’s
commercial impression. See, e.g., In re Appetito
Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987).
Furthermore, the design feature itself, depicting a
physically fit woman with long, flowing hair, reinforces
rather than detracts from the connotation of the registered
mark, a connotation shared by applicant’s mark. In short,
when viewed in their entireties, the marks are similar in
terms of their overall commercial impressions. Applicant’s
arguments to the contrary are not persuasive.
Nor are we persuaded by applicant’s contention that
the words HAIR FITNESS are weak as applied to the goods
involved in this case and that registrant’s mark thus is
entitled to a narrow scope of protection. Applicant has
presented no evidence of third-party use of marks which
include the term FITNESS in connection with the types of
goods involved in this case, nor is there any other
evidence in the record which would warrant or require that
we accord registrant’s mark a narrow scope of protection.
Applicant’s goods are sufficiently related to the
goods identified in the registration that confusion is
likely to result from the use of the similar marks involved
in this case. It is well settled that goods need not be
identical or even competitive in order to support a finding
Ser. No. 75/293,155
5
of likelihood of confusion. Rather, it is sufficient that
the goods are related in some manner or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of the
goods or services. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
The commercial relationship between applicant’s goods
and the goods identified in the registration is evidenced
by applicant’s own statements in the record. Applicant
admits that it previously has marketed a "kit" product that
included both hair care products, such as shampoo and
conditioner, and nutritional supplements. (November 25,
1997 response to first Office action, at page 2.) Thus, it
is clear that the applicant’s type of products and the
registrant’s type of products can be and are marketed
together as complementary products. The relationship
between these goods is further established by the fact that
Registration No. 1,944,958 of the mark HAIR FITNESS for
"non-medicated hair care preparations, namely shampoos and
Ser. No. 75/293,155
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conditioners," now owned by applicant, was originally
registered and owned by the owner of the registration cited
against applicant in this case, which is of the mark HAIR
FITNESS and design for "vitamin and nutritional supplements
for the hair." Thus, a single entity, registrant, has
owned contemporaneous registrations of the mark HAIR
FITNESS for both hair care products and hair vitamins and
nutritional supplements. This is probative evidence to the
extent that it suggests that the respective goods emanate
from a single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993); In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
Applicant argues that the trade channels in which its
goods are marketed are different from the trade channels in
which the registrant’s goods are marketed. This argument
is unavailing, because neither the application nor the
registration includes any restriction or limitation as to
the trade channels or classes of customers for the
identified goods. Accordingly, we must presume that
applicant’s goods and registrant’s goods move in all normal
trade channels for such goods and that they are marketed to
all normal classes of customers for such goods. See In re
Elbaum, 211 USPQ 639 (TTAB 1981). As noted above in
connection with applicant’s own past practice, hair care
Ser. No. 75/293,155
7
products and nutritional supplements may be marketed
together in the same trade channels.
One other du Pont evidentiary factor requires
discussion in this case. Applicant has claimed ownership
of Registration No. 1,944,958, which is of the mark HAIR
FITNESS for "non-medicated hair care preparations, namely
shampoos and conditioners." As discussed above, it appears
from the Office’s assignment records that Jeannie Maxon,
the owner of the registration cited against applicant in
this case (Registration No. 1,668,204), also was the
original owner of Registration No. 1,944,958. She assigned
Registration No. 1,944,958 to applicant by assignment
executed on November 10, 1996 and recorded on March 13,
1997, prior to applicant’s filing of the present
application.4
Applicant argues that Ms. Maxon’s prior assignment of
Registration No. 1,944,958 to applicant should be deemed to
be Ms. Maxon’s "consent by assignment" to applicant’s
registration of the present mark, and that such consent by
the owner of the registration cited as a Section 2(d)
should be given substantial weight in our likelihood of
confusion analysis.

4 The mesne assignments are recorded at Reel 1561, Frames 0006
and 0035.
Ser. No. 75/293,155
8
We agree that Ms. Maxon’s previous assignment of
Registration No. 1,944,958 to applicant is probative
evidence on the question of likelihood of confusion, under
the tenth du Pont factor, and we have considered it as
such. However, we find that the assignment is entitled to
relatively little weight in our likelihood of confusion
analysis, and that it certainly is insufficient to outweigh
the evidence under the other du Pont factors, i.e., the
similarity of the marks, the relatedness of the goods, and
the identity of the trade channels and customers for the
goods, all of which clearly and strongly supports a finding
of likelihood of confusion.
Applicant has not submitted, or even alleged the
existence of, a proper consent agreement between itself and
Ms. Maxon from which we might determine that the parties
have expressly agreed that confusion is unlikely and that
they have agreed that they will take steps necessary to
avoid confusion. This case thus is distinguishable on its
facts from In re du Pont, supra, in which the assignment
from the registrant to the applicant was made pursuant to
and was accompanied by a detailed consent agreement between
the registrant and applicant. See 177 USPQ at 566.
In the absence of an appropriately-detailed consent
agreement between applicant and Ms. Maxon, from which we
Ser. No. 75/293,155
9
might conclude that the parties indeed believe that no
confusion is likely and that they have agreed to take
necessary steps to avoid confusion, Ms. Maxon’s previous
assignment of Registration No. 1,944,958 to applicant is
entitled to no more probative evidentiary weight than if it
had been a mere "naked" consent to register. That is, it
is entitled to very little probative weight. See In re du
Pont, supra, 177 USPQ at 568. Thus, although the
assignment is some evidence in support of applicant’s
position, it does not alter our conclusion, based on the
other du Pont evidentiary factors, that confusion is
likely.5
In summary, our consideration of the evidence of
record with respect to the relevant du Pont evidentiary
factors leads us to conclude that a likelihood of confusion

5 Applicant also suggests that it would serve no purpose to deny
registration to applicant in the present application when
applicant already owns the above-referenced registration.
However, contrary to applicant’s contention and apparent belief,
applicant would not be entitled to amend its Registration No.
1,944,458 to add to the identification of goods therein the goods
which are identified in the present application but which are not
included in the registration’s current identification of goods.
See Trademark Rule 2.173(b). Therefore, applicant’s ownership of
that registration does not, in itself, warrant issuance of a new
registration, covering additional goods, to be issued to
registrant.
Ser. No. 75/293,155
10
exists in this case.
Decision: The refusal to register is affirmed.
J. D. Sams
H. R. Wendel
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board