Rocky Mountain Oils, LLC

Trademark Trial and Appeal Board

Jan 13, 2022

88714739 (T.T.A.B. Jan. 13, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: January 13, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Rocky Mountain Oils, L.L.C. _____ Serial No. 88714739 _____ Erica L. Tritt and Jeffrey B. Sladkus of Sladkus Law Group, for Rocky Mountain Oils, L.L.C. Shaila E. Lewis, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Zervas, Wellington, and Dunn, Administrative Trademark Judges. Opinion by Dunn, Administrative Trademark Judge: Rocky Mountain Oils, L.L.C. (“Applicant”) seeks registration on the Principal Register of the mark (ROCKY MOUNTAIN OILS disclaimed) for “Cosmetics; Essential oils; Fragrances; Oils for cleaning purposes” in International Class 3.1 The application states “The mark consists of the terms ROCKY MOUNTAIN OILS appearing to the right of a fanciful design of an upper case R.” 1 Application Serial No. 88714739 was filed December 4, 2019 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as August 24, 2017. Application Serial No. 88714739 - 2 - The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in the application, so resembles two registered standard character marks (details set forth below) owned by different registrants as to be likely to cause confusion, to cause mistake, or to deceive. ROCKY MOUNTAIN SOAP CO2 (SOAP CO disclaimed) issued under Trademark Act Section 2(f), 15 U.S.C. 1052(f) based on a claim of acquired distinctiveness as to the entire mark, for goods that include “essential oils for aromatherapy … bath oils … [and] cosmetics,” in International Class 3 ROCKY MOUNTAIN BARBER COMPANY3 (BARBER COMPANY disclaimed) for “Body and beauty care cosmetics,” International Class 3. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. Likelihood of Confusion Section 2(d) of the Trademark Act prohibits registration of a mark that “so resembles a mark registered in the Patent and Trademark Office” 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 The Trademark Status and Document Retrieval (TSDR) citations refer to the downloadable .pdf version of the documents available from the electronic file database for the involved application. The TTABVUE citations refer to the Board’s electronic docket, with the first number referring to the docket entry and the second, if applicable, to the page within the entry. 2 Registration No. 5421216 issued March 13, 2018. 3 Registration No. 5035683 issued September 6, 2016 (Section 8 and 15 received). Application Serial No. 88714739 - 3 - record that are relevant to the likelihood of confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each relevant DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re i.am.symbolic, llc, 127 USPQ2d 1627, 1628 (TTAB 2018). A. Similarity or Dissimilarity between the Goods and Channels of Trade and Classes of Purchasers With regard to the similarity or dissimilarity between Applicant’s goods and the goods in the cited registrations, their channels of trade and classes of purchasers, we must make our determination under these factors based on the goods as they are identified in the application and cited registrations. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017). Turning first to the goods, in assessing their relationship and nature, the Board “considers whether ‘the consuming public may perceive [the respective goods of the parties] as related enough to cause confusion about the[ir] source or origin ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 Application Serial No. 88714739 - 4 - (Fed. Cir. 2002)). As stated, Applicant seeks registration for “cosmetics; essential oils; fragrances; oils for cleaning purposes.” The goods in both cited registrations include “cosmetics.” In addition, Applicant’s “essential oils” encompass the “essential oils for aromatherapy” and “perfumery using essential oils” listed in Registration No. 5421216. If an application or registration describes goods broadly, and there is no limitation as to their nature, it is presumed that the registration encompasses all goods or services of the type described. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). The identity of certain goods within the identifications means that no more is necessary to demonstrate a finding of similarity of goods to support a likelihood of confusion.4 See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a single good from among several may sustain a finding of likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application). Where, as here, the goods of the application at issue and the cited registrations are in part identical, we must presume that the channels of trade and classes of purchasers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101 4 Applicant does not dispute that the goods are in part identical. Application Serial No. 88714739 - 5 - USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Information Builders Inc., 2020 USPQ2d 10444, *3 (TTAB 2020). We find the DuPont factors regarding the goods, channels of trade and classes of purchasers weigh strongly in favor of finding a likelihood of confusion. B. Strength or Weakness of the Cited Marks and Similarity or Dissimilarity between the Marks We now consider the factors involving the strength or weakness of the cited marks, and the similarity or dissimilarity of the mark with each of the registered marks: ROCKY MOUNTAIN SOAP CO and ROCKY MOUNTAIN BARBER COMPANY. We make our comparison based on the marks in their entireties as to 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, 1689 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d, Slip Op. No. 18-2236 (Fed. Cir. Sept. 13, 2019) (mem) (quoting In re Davia, 110 USPQ2d at 1812). We also keep in mind that “[w]hen the goods are identical, the appearance of a mark of similar sound, appearance, or connotation is more likely to cause confusion than if the goods are significantly different.” Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); New Era Cap Co. v. Pro Era, LLC, 2020 USPQ2d 10596, at *14 (TTAB 2020). Application Serial No. 88714739 - 6 - Because the cited marks have different levels of distinctiveness, we treat them separately.5 1. ROCKY MOUNTAIN SOAP CO The strength of the cited mark is always relevant to assessing the likelihood of confusion. In re Morinaga Nyugyo K. K., 120 USPQ2d 1738, 1743 (TTAB 2016). “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). “In order to determine the conceptual strength of the cited mark, we evaluate its intrinsic nature, that is, where it lies along the generic-descriptive-suggestive- arbitrary (or fanciful) continuum of words.” In re Davia, 110 USPQ2d 1810, 1814 (TTAB 2014). See also Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1181 (Fed. Cir. 2004) (“marks have traditionally been categorized along the following range of increasing distinctiveness: (1) generic, (2) 5 That one cited registration is a third-party registration to the other cited registration is of no significance here because it is the only third-party registration. While a larger number of third party registrations with similar marks for the same goods may support a finding of conceptual weakness for that term, no such impact on the public is likely from a single registration. In re Embiid, 2021 USPQ2d 577, *38 (TTAB 2021) (“’Applicant has presented no evidence of third-party use, and at most, [three] third-party registrations’ of PROCESS-formative marks for clothing, which ‘is a far cry from the large quantum of evidence of third-party use and third-party registrations that was held to be significant in both’ Jack Wolfskin and Juice Generation.’”) (citations omitted); In re Sela Prods., LLC, 107 USPQ2d 1580, 1587 (TTAB 2013) (“Although in determining the strength of the mark third-party registrations can be used in the same manner as dictionary definitions, to show that a term has a significance in a particular industry, we cannot conclude, on the basis of the two FORZA registrations, that FORZA has a particular significance for the registrant's goods.”). Application Serial No. 88714739 - 7 - descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.”). The stronger the mark on the fanciful to generic continuum, the greater its ability to preclude registration of a similar mark. In re Morinaga Nyugyo K. K., 120 USPQ2d at 1743-44; In re Smith & Mehaffey, 31 USPQ2d 1531, 1533 (TTAB 1991) (“the descriptiveness or suggestiveness of a mark or portion of a mark may result in what is sometimes termed a more narrow scope of protection.”). Here, the record includes evidence that “Rocky Mountain” identifies a geographic area comprising a range of mountains stretching from British Columbia in Canada to New Mexico in the United States known for its beautiful vistas.6 Because the cited mark ROCKY MOUNTAIN SOAP CO registered under Trademark Act Section 2(f), we may consider the mark as not inherently distinctive. In re RiseSmart Inc., 104 USPQ2d 1931, 1932 (TTAB 2012). However, a registered mark on the Principal Register is statutorily presumed to be distinctive. Trademark Act Section 7(b) and 33(a), 15 US.C 1057 (b) and 1115(a); see also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016).7 With a claim of acquired distinctiveness, the relevant public is presumed to recognize the mark as denoting a single source, similar to a showing of market strength. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, 6 March 11, 2020 TSDR 7-16 (third party website Touropia). Applicant’s unsupported contention that the term ROCKY MOUNTAIN is weak as applied to the goods because “Applicant has found fourteen registrations incorporating ROCKY MOUNTAIN in International Class 3” is unavailing. 8 TTABVUE 7. No third party registrations are in the record to support Applicant’s argument. “Attorney argument is no substitute for evidence.” Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). 7 Without a claim of acquired distinctiveness, a registered mark is presumed to be inherently distinctive. New Era Cap Co. v. Pro Era LLC, 2020 USPQ2d 10596, *10 (TTAB 2020). Application Serial No. 88714739 - 8 - LLC, 110 USPQ2d 1458, 1476 (TTAB 2014). Accordingly, while geographic terms are conceptually weak, we must consider the undisclaimed portion of the mark distinctive. See In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“while the cited mark appears to be a surname and is registered with a claim of acquired distinctiveness under Section 2(f), the evidence does not show that it is entitled to such a narrow scope of protection as to permit registration of a confusingly similar mark for related services.”). The registered mark ROCKY MOUNTAIN SOAP CO also includes the disclaimed terms “SOAP CO.” Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), states, in part, "The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable." See In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986) ("[W]e conclude that it is within the discretion of an Examining Attorney to require the disclaimer of an unregistrable component (such as a common descriptive, or generic, name) of a composite mark sought to be registered on the Principal Register under the provisions of Section 2(f)."). Here we find the disclaimed term SOAP CO combines an entity designation with a generic term. Entity designations have no source-indicating capacity. See In re Detroit Athletic Co., 903 F.3d 1297, 1304, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (“while it is true that the words ‘Co.’ and ‘Club’ technically differentiate the marks, those words do little to alleviate the confusion that is likely to ensue. Both words are descriptive insofar as they merely describe the business form of the entity that owns the marks.”). Application Serial No. 88714739 - 9 - We take judicial notice that “cosmetics” are defined as “of, relating to, or making for beauty especially of the complexion: BEAUTIFYING,”8 and so include personal grooming products like soap. Moreover, the record includes pages from the third party websites KIND SOAP COMPANY and SOUTHHAMPTON SOAP CO. selling soap and other personal grooming products, or cosmetics.9 This definition and third party use shows that when combined with the entity designation “co,” the term “soap” names a company for personal grooming products, and so has no source indicating capacity as applied to the registered “essential oils for aromatherapy … bath oils … [and] cosmetics.” When confronted with marks consisting of generic terms coupled with entity designations, the Board has found the resulting designations incapable of functioning as marks. In re The Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988) (“Here, we believe the Examining Attorney's LEXIS/NEXIS evidence, combined with the obvious significance of the abbreviation ‘Co.’, establish that purchasers encountering the words ‘PAINT PRODUCTS CO.’ on the goods for which registration is sought would view those words not as a trademark, but in their ordinary dictionary sense: a company that sells paint products.”). Because it appears first in the mark and has not been disclaimed, we find the term ROCKY MOUNTAIN forms the dominant part of the registered mark ROCKY 8 Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam- webster.com/dictionary/cosmetic. Accessed 11 Jan. 2022. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format or have regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016). 9 May 20, 2021 Office Action TSDR 4-53. Application Serial No. 88714739 - 10 - MOUNTAIN SOAP CO. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“It is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to the dominant feature in determining the commercial impression created by the mark as long as the mark is considered in its entirety.”). Applicant’s mark comprises what Applicant has identified in its application as a fanciful design of an upper case R along with the disclaimed wording ROCKY MOUNTAIN OILS. We take judicial notice that “OIL” is defined as “a substance (such as a cosmetic preparation) of oily consistency,”10 and so includes oils for beautifying or cosmetic purposes. The term OILS appears in the identification of goods, and we find it generic as applied to Applicant’s goods. In re Johanna Farms, Inc., 222 USPQ 607, 609 (TTAB 1984) (“The term ‘yogurt’ is concededly the name of the goods. That fact is uncontrovertible where, as here, the same term has been used in the identification of goods for which registration is sought.”). Similar to the cited mark ROCKY MOUNTAIN SOAP CO, the literal term ROCKY MOUNTAIN OILS combines a geographically descriptive term with a term with no source-indicating capacity. In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (Generic terms are “by definition incapable of indicating source,” and so “are the antithesis of trademarks, and can never attain trademark 10 Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam- webster.com/dictionary/oil. Accessed 11 Jan. 2022. Application Serial No. 88714739 - 11 - status.”). Accordingly, we find that the dominant part of the wording in the mark is the single term ROCKY MOUNTAIN. With respect to the impact of the fanciful letter “R” in the mark, the degree of stylization and the wording in the mark makes it unlikely that it a consumer would articulate and remember the letter; the consumer would simply use the words ROCKY MOUNTAIN OILS. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion … given that the literal component of brand names likely will appear alone when used in text and will be spoken when requested by consumers.”); Bos. Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, (TTAB 2007) (“It has frequently been stated that it is the word portion of marks, rather than the particular display of the words, that is likely to have a greater impact on purchasers and be remembered by them.”). While the fanciful letter R has some visual impact on the mark, it functions, and would be perceived as, emphasizing the first letter in ROCKY. It hence has a lesser role in forming the commercial impression of the mark than the wording in the mark. See UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1887 (TTAB 2011) (“The ‘M’ in the first design mark above merely reinforces the first letter in MOTOWN, and the font and square border are insignificant.”); In re Continental Graphics Corp., 52 USPQ2d 1374, 1376 (TTAB 1999) (“Indeed, the dominant role of the word CONTINENTAL in the overall commercial impression created by the registered mark is reinforced, rather than negated, by the inclusion in the mark of the globe design Application Serial No. 88714739 - 12 - depicting stylized continents and the inclusion of the large letter ‘C,’ which is the first letter of the word CONTINENTAL.”). Comparing Applicant’s mark to the registered mark ROCKY MOUNTAIN SOAP CO, the dominant elements of the marks are identical. While the additional terms SOAP CO and OILS are different, they carry much less weight in each mark based both on their position at the end of the mark and the fact that for different reasons (SOAP CO serving as a generic term and entity designation and OILS serving as a generic designation), they are not source indicators. Finally, as discussed, we find the fanciful letter R in Applicant’s mark has minimal impact and does not serve to distinguish it from the registered mark. Although we consider the marks and ROCKY MOUNTAIN SOAP CO 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., 224 USPQ at 751. Addressing the marks in their entireties, we find that the similarity created by the inclusion of the dominant, shared term first ROCKY MOUNTAIN is not outweighed by the differences between the marks. With respect to the cited mark ROCKY MOUNTAIN SOAP CO, the first DuPont factor, similarity of the marks, also weighs in favor of finding likelihood of confusion. Application Serial No. 88714739 - 13 - 2. ROCKY MOUNTAIN BARBER COMPANY We now compare Applicant’s mark to the ROCKY MOUNTAIN BARBER COMPANY mark, beginning with an analysis of the strength of the ROCKY MOUNTAIN BARBER COMPANY mark. Unlike ROCKY MOUNTAIN SOAP CO, ROCKY MOUNTAIN BARBER COMPANY is registered on the Principal Register without a claim of acquired distinctiveness. As such, it is presumed to be inherently distinctive. Trademark Act Sections 7(b) and 33(a); New Era Cap Co. v. Pro Era LLC, supra. The mark comprises the term ROCKY MOUNTAIN, which has not been treated as geographically descriptive, and the combination of a generic term and entity designation. We take judicial notice that the term BARBER is defined as “to perform the services of a barber for; trim or groom the hair or beard.”11 The record includes pages from the third party website The Natural Barber Co. selling cosmetic and hair care products,12 This definition and third party use shows that when combined with the entity designation “company,” the term “barber” names a company for hair grooming and cosmetic supplies, and so has no source indicating capacity as applied to the registered “body and beauty care cosmetics.” See In re The Paint Products Co., supra. We also note that BARBER COMPANY has been disclaimed in the mark. See Trademark Act Section 6(a). Because it appears first in the mark and has not been disclaimed, we find the term ROCKY MOUNTAIN forms the dominant part of the registered mark ROCKY MOUNTAIN BARBER COMPANY. 11 Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam- webster.com/dictionary/barber. Accessed 11 Jan. 2022. 12 May 20, 2021 Office Action TSDR 54-55. Application Serial No. 88714739 - 14 - Comparing Applicant’s mark to the registered mark ROCKY MOUNTAIN BARBER COMPANY, the dominant elements of the marks are identical. While the additional terms BARBER COMPANY and OILS are different, they carry much less weight in each mark based both on their position at the end of the mark and the fact that for different reasons (BARBER COMPANY serving as a generic term and entity designation and OILS serving as a generic designation), they are not source indicators. Again, we find the fanciful letter R in Applicant’s mark has minimal impact and does not serve to distinguish it from the registered mark. The consumer encountering the same cosmetics under the marks and ROCKY MOUNTAIN BARBER COMPANY will notice the common term ROCKY MOUNTAIN is identical. As discussed in connection with the first cited mark, the additional elements of fanciful letter R, generic term OILS, and the entity designation are insufficient to distinguish the marks. With respect to the cited mark ROCKY MOUNTAIN BARBER COMPANY, the first DuPont factor, similarity of the marks, also weighs in favor of finding likelihood of confusion. C. Balancing the Factors We have considered all of the arguments and evidence of record, and all relevant DuPont factors. When we balance the DuPont factors, we conclude that as applied to identical goods Applicant’s mark is likely to create confusion with both registered Application Serial No. 88714739 - 15 - marks - ROCKY MOUNTAIN SOAP CO and ROCKY MOUNTAIN BARBER COMPANY. Decision The refusal to register Applicant’s mark is affirmed.