Randall Products Int'l., Inc.

Trademark Trial and Appeal Board

Jul 29, 1999

No. 74674920 (T.T.A.B. Jul. 29, 1999)

Paper No. 13
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Randall Products International, Inc.
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Serial No. 74/674,920
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George J. Netter, Esq. for applicant.
Geoffrey McNutt, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Randall Products International, Inc. has filed a
trademark application to register the mark SPA CARIBBEAN
for “shampoo, conditioner, body lotion, bath and shower
Serial No. 74/674,920
2
gel, and sun block.”1 The application includes a disclaimer
of CARIBBEAN apart from the mark as a whole.2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for
“health spa services, namely, sauna, body massage and body
waxing services, hair and nail salon services, skin care
and facial treatment services,” and “health club services
and exercise and fitness facilities,”3 that, if used on or
in connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive. The cited
registration includes a disclaimer of CARIBBEAN SPA apart
from the mark as a whole.

1 Serial No. 74/674,920, in International Class 3, filed May 17, 1995,
based on use of the mark in commerce, alleging first use and first use
in commerce as of November 17, 1993.
2 Applicant initially offered a disclaimer of SPA in response to a
requirement by the Examining Attorney. The Examining Attorney then
indicated that a disclaimer of SPA was unnecessary and that the
disclaimer of SPA would not be printed. He required, instead, a
disclaimer of CARIBBEAN. Applicant complied by submitting the required
disclaimer. By these actions of the Examining Attorney and applicant
we consider the disclaimer of SPA to be revoked.
3 Registration No. 1,637,166 issued March 5, 1991, to Pier House Joint
Venture, in International Classes 42 and 41, respectively. [Sections 8
and 15 affidavits accepted and acknowledged, respectively.]
Serial No. 74/674,920
3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Regarding the marks, the Examining Attorney contends
that the word portion of registrant’s mark is the dominant
portion of that mark; that applicant’s mark is essentially
a transposition of the dominant word elements of
registrant’s mark; and that this transposition does not
alter the commercial impression of the mark, thus, the
commercial impression of applicant’s mark is substantially
the same as that of registrant’s mark.
Applicant contends, on the other hand, that the
disclaimer of the words CARIBBEAN SPA in the cited
registration establishes that the words are not the
dominant or most significant feature of the registered
mark. Applicant argues, further, that, even if one
considers only the word portion, CARIBBEAN SPA, of

Serial No. 74/674,920
4
registrant’s mark, the reversal of those words in
applicant’s mark, SPA CARIBBEAN, creates a totally
different commercial impression from the registered mark.
Applicant states that the initial word in each mark gives
the respective marks “a different appearance and
accordingly applicant’s mark emphasizes ‘SPA’ over
‘CARIBBEAN’ whereas the registration’s emphasis is on
‘CARIBBEAN’ rather than ‘SPA.’”
The proper test for determining the issue of
likelihood of confusion is the similarity of the general
commercial impression engendered by the marks. Due to the
consuming public’s fallibility of memory, the emphasis is
on the recollection of the average customer, who normally
retains a general rather than a specific impression of
trademarks or service marks. Spoons Restaurants, Inc. v.
Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92-
1086 (Fed. Cir. June 5, 1992); and In re Steury
Corporation, 189 USPQ 353 (TTAB 1975). Both applicant and
the Examining Attorney recognize the well established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, while
the marks are compared in their entireties, including
descriptive or disclaimed portions thereof, “there is
nothing improper in stating that, for rational reasons,
Serial No. 74/674,920
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more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). If a mark comprises both words and a design,
the words are normally accorded greater weight because the
words are likely to make an impression upon purchasers that
would be remembered by them and would be used by purchasers
to request the goods and/or services. In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985). See also: Giant Food, Inc. v. Nation’s
Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983).
The cited registration in the case before us is a
compound mark consisting of the words, “Carribean Spa” in a
stylized print with a design of a beach scene and palm
tree. The wording, “Caribbean Spa,” is disclaimed.
Clearly, in connection with the issue of descriptiveness,
registrant’s disclaimer is an admission that, at the time
of registration, the phrase “Caribbean Spa” was merely
descriptive in connection with the services identified in
the registration. However, as the wording of the
disclaimer indicates (i.e., “no claim is made to the
Serial No. 74/674,920
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exclusive use of “Caribbean Spa” apart from the mark as
shown” – emphasis added), the phrase “Caribbean Spa” is
accorded significance as an integral part of the composite
mark. See, American Dietaids Company, Inc. et. al. v. Plus
Products, 191 USPQ 146 (DCNY 1976). The disclaimer of this
phrase in the composite mark does not have the effect of
removing the phrase from the mark. Bordon, Inc. v. W.R.
Grace & Co., 180 USPQ 157 (TTAB 1973). It is well
established that a disclaimer is of no legal significance
in determining likelihood of confusion, rather, the
disclaimed matter must be considered. See, Kellog Co. v.
Pack “Em Enterprises Inc., 14 USPQ 2d 1545 (TTAB 1990); and
Glamorene Products Corporation v. Boyle-Midway, Inc., et.
al., 188 USPQ 145 (DCSDNY 1975).
As in the case before us, in the case of In re
National Data Corp., supra, the mark in the cited
registration, CASH MANAGEMENT ACCOUNT, contained a
disclaimer, in that case of CASH MANAGEMENT. Following the
Office’s refusal on the ground of likelihood of confusion,
applicant disclaimed CASH MANAGEMENT in its mark, THE CASH
MANAGEMENT EXCHANGE, presented evidence purported to show
the descriptive character of the phrase “cash management”
in connection with financial services, and argued that
there was no likelihood of confusion because the only
Serial No. 74/674,920
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similarity between the two marks was the descriptive or
generic words CASH MANAGEMENT. In rejecting this argument
and affirming the Board’s finding of likelihood of
confusion, our primary reviewing court stated:
The technicality of a disclaimer in National’s
application to register its mark has no legal
effect on the issue of likelihood of confusion.
The public is unaware of what words have been
disclaimed during prosecution of the trademark
application at the PTO.
…
The power of the PTO to accept or require
disclaimers is discretionary under the statute, …
and its practice over the years has been far from
consistent. Thus, it is inappropriate to give
the presence or absence of a disclaimer any legal
significance.
Id. at 751. (Footnotes omitted.)
Turning to consider the marks in the case before us,
we note that, in addition to the words CARIBEEAN SPA, the
design element of registrant’s mark, which includes a
design of a beach scene with a palm tree, is also highly
evocative of the Caribbean and, thus, tends principally to
reinforce the word portion of the mark. Thus, in
considering the commercial impression of registrant’s mark,
we find the stylized words to be the dominant portion of
the mark. Although there is no evidence in the record on
this point, when viewed in its entirety, we believe that
registrant’s mark is at least suggestive in connection with
the identified services. However, even suggestive marks
Serial No. 74/674,920
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are entitled to protection, albeit a narrower scope of
protection than a completely arbitrary mark.
As applicant acknowledges, its mark, SPA CARIBBEAN, is
a transposition of the word portion of registrant’s mark.
We find that, regardless of whether the phrase appears as
SPA CARIBBEAN or CARIBBEAN SPA, the connotation remains the
same, i.e., both phrases evoke a Caribbean style of spa.
While applicant claims that the transposed phrase creates
an entirely different meaning, applicant has given us no
credible argument or evidence in support of this statement.
We find the overall commercial impressions of applicant’s
mark and registrant’s mark to be substantially similar.
Thus, if used or registered in connection with the same,
similar or related goods and/or services, prospective
customers are likely to be confused as to the source of the
goods and/or services.
Turning to applicant’s goods and registrant’s
services, the Examining Attorney contends that “it is not
uncommon for the same businesses that provide health and
beauty services such as the registrant’s to also sell
cosmetic and beauty products, and to use the same mark to
identify themselves as the source of both the goods and the
services.” The Examining Attorney submitted copies of
third-party registrations wherein a single mark is
Serial No. 74/674,920
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registered in connection with both goods and services of
the types identified herein.4
Applicant contends that there is absolutely no
relationship between applicant’s “cosmetic products” and
“registrant’s Class 41 services relating to body building
or the like.”5 Applicant characterizes registrant’s Class
42 services as “beauty services” that “relate to
facilities.” Applicant submitted copies of telephone book
advertisements under the headings “beauty salons” and
“beauty services” that include references to cosmetic
products available in connection with the advertised
services.6 Applicant notes that the products are referred
to by names that differ from the name of the facility
offering the services.

4 A number of the applications and registrations submitted by the
Examining Attorney are for goods or services, but not both, or are
intent-to-use applications. These submissions are of little probative
value because they do not indicate that consumers may be used to seeing
the identified goods and services emanating from a single source under
the same mark. However, we find in the Examining Attorney’s submission
a sufficient number of use-based registrations, which include both
goods and services of the types identified herein, to be persuasive of
the Examining Attorney’s contentions.
5 We find applicant’s attempt to distinguish registrant’s Class 41
health club, fitness and exercise services from applicant’s goods by
characterizing them as “body building or the like” to be disingenuous.
6 Several advertisements were submitted with applicant’s brief.
Ordinarily matter submitted with a brief is untimely and not
considered. However, as it is primarily duplicative of the evidence
submitted earlier by applicant and the Examining Attorney considered
the evidence in his brief, we have considered this evidence herein.
Serial No. 74/674,920
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We find sufficient evidence in the record to conclude
that goods of the type identified in the application are
likely to be sold in connection with the rendering of the
services identified in the cited registration. The
evidence submitted by applicant supports this conclusion
even though it shows such goods identified by marks other
than the marks used in connection with the services. The
evidence submitted by the Examining Attorney supports this
conclusion as well as the further conclusion that such
goods and services may be offered under the same mark.
Applicant’s evidence does not contradict this conclusion.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, SPA CARIBBEAN, and registrant’s mark, CARIBBEAN SPA
and design, their contemporaneous use on the related goods
and services involved in this case is likely to cause
confusion as to the source or sponsorship of such goods and
services.
Finally, to the extent that we may have any doubt
concerning our conclusion that confusion is likely, we are
obligated to resolve such doubt in favor of the registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed Cir. 1988). It is well established that one who
adopts a mark similar to the mark of another for the same
Serial No. 74/674,920
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or closely related goods or services does so at his own
peril, and any doubt as to likelihood of confusion must be
resolved against the newcomer and in favor of the prior
user or registrant. W.R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308 (TTAB 1976).
Decision: The refusal under Section 2(d) of the Act
is affirmed.
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board