Ranir, LLC

Trademark Trial and Appeal BoardSep 28, 2010

No. 77595989 (T.T.A.B. Sep. 28, 2010)

Mailed: September 28, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Ranir, LLC. ________ Serial No. 77595989 _______ H. W. Reick of Price, Heneveld, Cooper, DeWitt & Litton for Ranir, LLC. Alicia P. Collins, Trademark Examining Attorney, Law Office 115 (Tomas V. Vlcek, Managing Attorney). _______ Before Hairston, Taylor and Mermelstein, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Ranir, LLC has filed an application to register on the Principal Register the mark DRY TOUCH (in standard character format) for goods ultimately identified as “teeth whitening film and tray containing teeth whitening preparations.”1 Registration has been refused under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground of a likelihood of 1 Serial No. 77595989, filed October 20, 2008 with an allegation of a bona fide intention to use the mark in commerce. On April 1, 2009, applicant filed an amendment to allege use (accepted April 7, 2009) alleging February 10, 2009 as the date of first use of the mark anywhere and in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77595989 2 confusion with the mark in Registration No. 3098960, DRY TOUCH, (in standard character format), for “cosmetic.”2 When the refusal was made final,3 applicant appealed. Both applicant and the examining attorney filed briefs. We affirm the refusal to register. Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence that are 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We consider first whether applicant’s mark and the cited registered mark are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and 2 Issued May 30, 2006. The registration includes a disclaimer of “DRY.” 3 The final refusal also included a requirement for a more definite identification of goods inasmuch as the goods as then identified could be classified in more than one class. In response, applicant filed an amendment to the identification, which was accepted by the examining attorney, and requested reconsideration of the final refusal. Applicant’s request for reconsideration was denied prior to the expiration of its time to file the appeal. Serial No. 77595989 3 commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2003). In this case, applicant’s DRY TOUCH mark in standard character format is identical to the registrant’s mark, also in standard character format, in appearance, sound, connotation and commercial impression. Applicant, however, maintains that the connotation and commercial impressions of the marks are entirely different. Applicant particularly argues that “[i]n the tooth whitening category including whitening films and trays, [DRY TOUCH] suggests the product does not dissolve and become gooey in one’s mouth when used. In cosmetics, it suggests a dry or powdered form….” We find this argument unpersuasive. While consumers may perceive very slight differences in connotation given the broad identification of registrant’s goods, ultimately, both applicant’s mark and the cited mark convey the idea that the goods provided thereunder are “dry to the touch.” Accordingly, the du Pont factor of similarity/dissimilarity of the marks favors a finding of likelihood of confusion. Next we consider the goods, keeping in mind that the greater the degree of similarity between the parties’ marks the lesser the degree of similarity between the respective goods that is required to support a finding of likelihood of confusion. See In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB Serial No. 77595989 4 2001). If the marks are identical, as in this case, it is only necessary that there be a viable relationship between the goods in order to support a finding of likelihood of confusion. See In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The issue remains, of course, not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to their source. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Further, it is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods recited in the cited registration.4 Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Where the goods in an application or cited registration are broadly described, such that there are no restrictions as to trade channels and purchasers, it is presumed that the identification of goods encompasses not only all goods of the nature and type described therein, but that the identified goods are provided in all channels of trade which would be normal therefor, and that they would be purchased by 4 As such, we have not considered applicant’s argument and evidence regarding the exact nature of registrant’s goods. Serial No. 77595989 5 all potential customers thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981). With these principles in mind, we consider the goods. The examining attorney maintains that as identified in the application and cited registration, “the Registrant’s ‘cosmetic’ is broad enough to include and is presumed to encompass the Applicant’s teeth whitening films and trays containing teeth whitening preparations because Applicant’s goods are cosmetic in nature.” Br. unnumbered p. 5. In support of her position, the examining attorney made of record eight use-based third-party registrations illustrating that goods of the type identified in applicant’s application are considered cosmetic in nature. The registrations include: Registration No. 2987916 which includes cosmetic and skin care products, namely, teeth whitening sprays, gels and rinses; Registration No. 3167267 which includes cosmetic and skin care products, namely, teeth whitening sprays and teeth whitening gels; Registration No. 3093052 for cosmetic tooth whitener; Registration No. 3248418 for cosmetic tooth whiteners; Registration No. 3337193 for cosmetic tooth whiteners; Registration No. 3459603 for, inter alia, cosmetic tooth whitener preparations, gel, cream and pastes; Serial No. 77595989 6 Registration No. 3218074 for, inter alia, cosmetic tooth whiteners; and Registration No. 3440771 for cosmetic tooth whitener.5 The examining attorney also has submitted various use-based third-party registrations showing that a common mark has been registered for cosmetics and teeth whitening products and/or closely related oral care products. These third-party registrations may serve to suggest that the types of goods involved herein may emanate from a single source. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party registrations are “not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, [they] may nonetheless have some probative value to the extent that they may serve to suggest that such goods and/or services are of a type which may emanate from a single source”). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). These registrations include: Registration No. 3607583 for, inter alia, cosmetics and tooth whitening preparations; Registration No. 3057860 for, inter alia, cosmetics and tooth whitening preparations; Registration No. 3386328 for, inter alia, cosmetics and tooth whitening preparations; 5 We note that Registration Nos. 3093052, 3337193, 3459603 and 3440771 are owned by the same entity. Serial No. 77595989 7 Registration No. 3249522 for, inter alia, body and beauty care cosmetics, cosmetics and tooth whitening pastes; Registration No. 3473786 for, inter alia, cosmetics and dentifrices; Registration No. 3494012 for, inter alia, cosmetics and toothpaste; Registration No. 3532668 for, inter alia, cosmetics and dentifrices and Registration No. 2945331 for, inter alia, cosmetics, dentifrices, and non-medicated mouth care products, namely, toothpaste and mouthwash.6 Based on the goods as identified and the third-party registrations, we conclude that applicant’s teeth whitener and trays and registrant’s cosmetic[s] are closely related and overlapping goods, all being cosmetic preparations used to enhance one’s appearance, that are often sold by the same source under the same mark. Applicant nonetheless contends that the realities of the marketplace must be considered, and argues that its goods are available nationwide through a variety of drugstores, including Walgreens, while the registrant’s goods are only available from its manufacturer, Star Maker Products, at either its website or drugstore.com or physiciansprefer.com. 6 Additional registrations [Registration Nos. 3169365, 3169186, 3811325 and 3332471] submitted by the examining attorney have no probative value because they do not cover cosmetics and tooth whitening and/or related oral care products. In addition, Registration Nos. 3607583 and 3057860 are owned by the same entity. Serial No. 77595989 8 This argument is unavailing. As noted, because there are no restrictions as to the trade channels in the cited registration, we must presume that registrant’s cosmetic[s] travel in all the usual channels of trade therefor, including the drugstores in which applicant’s teeth whiteners and trays are offered for purchase, and to the usual classes of purchasers, including ordinary consumers. See In re Elbaum, supra. As such, the channels of trade and classes of purchasers are overlapping. Applicant also argues with regard to the du Pont factor of the conditions of sale that consumers of whitening strips or trays are careful shoppers and, given the state of the economy, applicant’s teeth whiteners, at a cost of at least $19.99,7 are relatively expensive. Applicant further argues that purchasers of cosmetics have favorite brands and will be careful in selecting cosmetics that are offered via the internet. First, the record is devoid of any information regarding cosmetics selection. Second, contrary to applicant’s contention, applicant’s teeth whiteners are relatively inexpensive items that will be purchased by ordinary consumers who will probably exercise no more than ordinary care. However, even assuming arguendo that the respective goods will be purchased with some 7 Exhibits to the Examining Attorney’s Final Action mailed June 29, 2009. Serial No. 77595989 9 degree of care, even careful purchasers can be confused as to source, where, as here, identical marks are used in connection with overlapping goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers … are not infallible."). In view thereof, the du Pont factors of the similarity of the goods, channels of trade, classes of purchasers and conditions of sale favor a finding of likelihood of confusion. Applicant additionally maintains that DRY TOUCH, although suggestive, is not a strong mark entitled to a broad range of protection. In support of its position applicant has introduced the following evidence which it asserts demonstrates use of DRY TOUCH by numerous companies for a variety of products: 1) A report generated by a product search of the Google search engine for “products dry touch” showing that 101,012 hits satisfied the query and results for item nos. 1-10; 2) excerpts from various websites showing products identified in whole, or in part, by DRY TOUCH, e.g., Wilson Micro Dry Touch for tennis grips (www.pdhsports) and Dry-Touch Serial No. 77595989 10 Jewelry Wipes (http://shopping.com/dry-touch-jewelry- wipes, etc.);8 and 3) an excerpt from superpages.com for Dry Touch Carpet & Upholstery. We find this evidence of little to no value. First, with regard to the results summary of applicant’s search of the Google search engine, although over 100,000 entries satisfied the query, in the absence of specific information regarding each entry, nothing is gleaned. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir. 2007) (Google search results that provide very little context of the use of ASPIRINA deemed “of little value in assessing the consumer public perception of the ASPIRINA mark”). As regards the products listed on the results page, they merely incorporate “Dry Touch” as part of the product name, e.g., Neutrogena Ultra Sheer Dry- Touch Sunblock and ULTA Sun Dry Touch Faces Sunscreen Lotion. In addition, nine of the listed products are for sunscreen, eight of which are owned by a single company.9 Use by two 8 Applicant also submitted an excerpt from the Crocus website (www.crocus.co.uk) for Gold Leaf Dry Touch Gloves. It is unclear to what extent consumers in the United States are familiar with this United Kingdom website and, in any case, use of DRY TOUCH in connection with gloves has little probative value to the issue in this case, i.e., whether DRY TOUCH is weak in the cosmetic field. 9 The last product does not use Dry Touch as a product name; rather the words are used in the description of the product, i.e., “air dry touch up paint.” Serial No. 77595989 11 entities, well-known or not, is insufficient to show that weakness in registrant’s DRY TOUCH mark. The remaining excerpts do not show use of DRY TOUCH for cosmetic products. Rather, they demonstrate use of DRY TOUCH on goods and services as diverse as tennis grips, jewelry wipes and carpet cleaning services. We thus find that applicant’s evidence does not establish that DRY TOUCH is weak in the field of cosmetics. Despite this evidentiary failure, we recognize that registrant’s DRY TOUCH mark, by its very nature, is somewhat suggestive of the identified goods, and therefore not entitled to the broadest scope of protection. However, notwithstanding any weakness, registrant’s mark is at least entitled to protection from registration of applicant’s identical mark for overlapping goods. See In re Colonial Stores, Inc., 216 USPQ 793 (TTAB 1992). See also King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks). Last, applicant contends that the owner of the cited registration apparently has discontinued use of DRY TOUCH in connection with its product. This argument is an impermissible collateral attack on the cited registration and will not be entertained. Section 7(b) of the Trademark Act provides that a certificate of registration on the Principal Register shall be Serial No. 77595989 12 prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in connection with the goods or services identified in the certificate. During ex parte prosecution, including an ex parte appeal, an applicant will not be heard on matters that constitute a collateral attack on the cited registration. In re Dixie Restaurants, supra; and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). After careful consideration of the briefs and all of the evidence of record, given the identical marks and the constraints under which we must assess the application, i.e., based on the identifications, coupled with the requirement that any doubt be resolved in favor of registrant, we conclude that the refusal of registration must be affirmed. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed.