Sanyet Ferdinand

Trademark Trial and Appeal Board

Sep 7, 2012

No. 77965837 (T.T.A.B. Sep. 7, 2012)

Mailed:
September 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sanyet Ferdinand
________

Serial No. 77965837
_______

Morris I. Pollack for Sanyet Ferdinand

Kathryn E. Coward, Trademark Examining Attorney, Law Office
115 (John Lincoski, Managing Attorney)
_______

Before Seeherman, Zervas and Shaw, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Sanyet Ferdinand has appealed from the final refusal
of the trademark examining attorney to register mark shown
below for “retail store services featuring perfumes.”1
Applicant has disclaimed the exclusive right to use PERFUME
and PARIS apart from the mark as shown.

1 Application Serial No. 77965837, filed March 23, 2010, based
on Section 1(a) of the Trademark Act, and asserting first use and
first use in commerce as early as November 20, 2009.
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Ser. No. 77965837
3
We reverse the refusal of registration.

Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
Turning first to the services, applicant’s services
are retail store services featuring perfumes, and the
registrant’s services are identified as distributorship
services in the field of perfumes. To show that these
services are related, the examining attorney has submitted
a large number of third-party registrations that show a
single mark has been registered for both retail store
services and distributorship services. However, the
subjects of most of the store and distributorship services
are very different from perfume. For example, Registration
No. 2919027 is retail and distributorship services
featuring books and compact disks, and Registration No.
3027745 is for these services featuring elevators. There
are only two registrations for goods arguably similar to
perfume: Registration No. 3140379 is for, inter alia,
retail store services and wholesale distributorship
Ser. No. 77965837
4
services featuring personal care products, and Registration
No. 3379332 is for wholesale distributorship services and
retail store services featuring, inter alia, beauty
products and beauty and personal care accessories. Thus,
there is very limited evidence to show that, with respect
to perfume, companies have adopted a single mark for both
distributorship and retail store services or, indeed, that
companies offer both types of services in the field of
perfume.
With respect to the du Pont factor of the channels of
trade, there is some question as to whether the public at
large, who are customers of retail store services, would
encounter distributorship services in the field of perfume.
The examining attorney has made of record Internet evidence
in an attempt to show that the general public is able to
purchase perfume from distributors. A website called
“ineed2know,” www.ineed2know.org, and having the slogan
“The Answers You’re Looking For-Fast, Friendly and Free,”
states that “Many wholesale distributors sell discount
perfume and can be found online.” In a webpage from
PerfumeDistributor.com, www.perfumedistributor.com, that
company describes itself as “the largest wholesaler of
discounted perfume and cologne.” It appears from this
Ser. No. 77965837
5
website that this company offers products to the public at
large.4
On the other hand, the definitions for “distributor”
made of record by the examining attorney are “a wholesaler
who has exclusive rights to market, within a given
territory, the goods of a manufacturer or company,”5 and “a
wholesaler or middleman engaged in the distribution of a
category of goods, esp. to retailers in a specific area.”6
These definitions show that distributorship services are by
wholesalers who are middlemen who sell products to
retailers who in turn sell them to the general public.
Applicant argues that distributorships market to
retailers rather than to the public at large. With respect
to the website evidence reporting distributors marketing to
ultimate consumers, or wholesale sales to the public,
applicant states that these companies are merely using the
“guise” of wholesalers in order to sell perfumes at
discount prices. It appears to be applicant’s position

4 A third webpage submitted by the examining attorney,
called inet Health, http://inethealthtips.com, with the
subtitle “Community Health Information, Tips, Resources and
News,” uses such poor English that we question how
legitimate the information is. Thus, we give this evidence
no probative value.

5 Dictionary.com, http://dictonary.reference.com, based on the
Random House Dictionary, (2011).
6 Dicitonary.com, based on Collins English Dictionary, 10th ed.
(2009).
Ser. No. 77965837
6
that a company would or could not be considered a
distributorship if it were selling to the ultimate
consumer. The examining attorney essentially accepts that
this is an accurate distinction:
The applicant further argues that retail stores
and distributorships are different channels of
trade because retailers provide goods to the
consumer whereas distributorships are business
entities that market to business entities who are
themselves the retailers. This distinction is
technically accurate according to the dictionary
evidence found in the September 19, 2011 Office
action.

Brief, unnumbered p. 6, referencing the dictionary
definitions reported above.
After reviewing the evidence, we conclude that
“distributorship services,” as identified in the cited
registration, are not rendered to the public at large. The
mentions of “wholesale distributors’ on the “ineed2know”
website, and “wholesaler” on the PerfumeDistibutor.com
website can be viewed, as applicant suggests, as mere
puffery in advertising that the perfume is sold at discount
prices. The website evidence does not outweigh the clear
meaning of “distributorship services” shown by the
dictionary definitions, or serve to broaden the ordinary
meaning of “distributorship services” identified in the
registration.
Ser. No. 77965837
7
Accordingly, we view the registrant’s distributorship
services as being rendered to retail businesses and others
in the trade, rather than to the public at large. Thus,
retailers or others in the trade are the only entities that
would be aware of or who could encounter both the
applicant’s retail store services rendered under his mark
and the registrant’s distributorship services rendered
under its mark. We must therefore assess the likelihood of
confusion from the standpoint of these entities.7
Those in the perfume trade, whether distributors or
retail store operators, must be treated as sophisticated
and careful purchasers, and thus would be aware of
trademarks and likely to notice differences between them.
With this in mind, we turn to a consideration of the
marks. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has

7 Although customers of distributorship services in the field of
perfume would be retail stores, and therefore are presumably not
customers of retail stores featuring perfume, they would know of
other retail stores that sell perfume, and could believe that
there was an association between the distributorship services and
the retail store services if they were rendered under the same or
a similar mark. Such confusion could have a deleterious effect
on the registrant, since a retail store might decide not to
purchase goods from the distributor if it thought that the
distributor also had a competing retail store.

Ser. No. 77965837
8
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the present
case, applicant’s mark consists of the words PERFUMES and
PARIS, and the design of the Eiffel Tower. The word
PERFUME, which has been disclaimed, is generic for the
goods that are the focal point of applicant’s retail store
services, and PARIS, which has also been disclaimed,
describes the geographic origin of some of the perfume.
Although these words form part of the mark, and cannot be
ignored in our comparison, because they are
descriptive/generic they are entitled to less weight in our
analysis. In other words, consumers will look to other
source-identifying features of the mark, i.e., the Eiffel
Tower design. Thus, although normally if a mark comprises
both a word and a design, the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services, see In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987), that principle
does not apply to this mark.
We reach a similar conclusion for the cited mark, such
that we give greater weight to the design element for this
mark as well. The word portion of the mark consists of a
Ser. No. 77965837
9
term, PARIS, that describes the geographic origin of the
goods that are the subject of the services, and a term,
PERFUMES, which is disclaimed, that is generic for those
goods. We recognize that the registrant’s Section 2(f)
claim as to the words PARIS PERFUMES was accepted by the
examining attorney during the prosecution of the underlying
application, so we do not treat these words as merely
descriptive/geographically descriptive, but the acquired
distinctiveness must be recognized to derive from the
registrant’s use of the mark as a whole, and the conclusion
of acquired distinctiveness is to the stylized manner in
which the words are depicted, and not to the words per se.
That is, the Section 2(f) claim in the registration does
not give the registrant exclusive rights to the word PARIS
or PARIS PERFUMES (as noted, the registration in fact
includes a disclaimer to exclusive rights to the word
PERFUMES).
Thus, when the marks are compared in their entireties,
and giving appropriate weight to the dominant elements in
each, it is clear that the design portions of the
respective marks are quite different in appearance and
significance. Further, although both marks consist of the
words PARIS and PERFUME(S), they appear in a different
Ser. No. 77965837
10
order, with the cited mark depicting PARIS PERFUMES,8 with
the “normal” English-language construction of the adjective
before the noun, and with PARISPERFUMES shown in a stylized
format that emphasizes the word PARIS. In applicant’s mark
the word PERFUME appears in larger type font and physically
separated from the word PARIS, which appears under the
depiction of the Eiffel Tower, such that it is unclear
whether the mark would be pronounced PERFUME PARIS; even if
it were, the odd syntax of PERFUME PARIS creates a somewhat
different impression from PARIS PERFUMES.
Accordingly, the only similarity between the marks is
that they both include the words PARIS and PERFUME(S).
However, these common elements are not a sufficient basis
for us to conclude that the marks are confusingly similar.
In particular, the sophisticated purchasers who would be
the only overlapping customers for the parties’ services
would not assume that, merely because marks includes the
words PERFUME(S) and PARIS, that the marks indicate that
the services emanate from the same source. Given the
limited scope of protection to which the registrant’s mark
is entitled, e.g., the registrant does not have exclusive

8 We acknowledge that the cited mark does not have a space
between PARIS and PERFUMES; however, because PARIS is shown in
darker lettering than PERFUMES, the term will be read and
understood as two separate words.

Ser. No. 77965837
11
rights to use the word PERFUMES, and the acquired
distinctiveness of PARIS PERFUMES is limited to the way the
phrase is used in the mark, we find that the overall
differences in appearance, connotation and commercial
impression are sufficient to distinguish the marks.
Accordingly, in the particular circumstances of this
case, we find that the Office has not proved that
applicant’s mark for his services is likely to cause
confusion with the registered mark.
Decision: The refusal of registration is reversed.