Skin Within Services, Ltd.

Trademark Trial and Appeal Board

Sep 10, 2004

No. 78122490 (T.T.A.B. Sep. 10, 2004)

Mailed: September 10, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Skin Within Services, Ltd.
________
Serial No. 78122490
_______
Diana Palchik of Clouse Dunn Hirsch LLP for Skin Within
Services, Ltd.
Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______
Before Seeherman, Walters and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Skin Within Services, Ltd. has appealed from the final
refusal of the Trademark Examining Attorney to register
SKIN WITHIN as a trademark for “cosmetics, namely, skin
care lotions and creams and non-medicated skin care
preparations.”1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
1 Application Serial No. 78122490, filed April 18, 2002, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78122490
2
the ground that applicant’s mark so resembles the mark
WITHIN, previously registered for “cosmetics, namely,
perfume, eau de perfume, cologne, skin, hand and body
lotions and cremes, face powder and dusting powder, and
toilet preparations, namely, toilet water, bath oils, non-
medicated bath salts, bath crystals, talcum powder,
shampoos, perfumed soaps, and bath and shower gels”2 that,
if used on applicant’s identified goods, it is likely to
cause confusion or mistake or to deceive.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
Before turning to the substantive issue in this
appeal, we must address a procedural matter. With its
reply brief applicant filed a request for remand in order
to amend its identification of goods. The request for
remand was actually put into applicant’s reply brief, at p.
4, although the amendment was submitted in a separate paper
which was faxed to the USPTO on the same date the reply
brief was received. Applicant is advised that a request
for remand should always appear in a separate paper, since
briefs are generally not thoroughly reviewed until final
hearing, and a request for remand that is “buried” in a
brief is not likely to be noted.
2 Registration No. 2476328, issued August 7, 2001.
Ser No. 78122490
3
With respect to the merits of the request for remand,
such a request must be supported by a showing of good
cause. See TBMP §1209.94 (2d ed. rev. 2004). “In
determining whether good cause has been shown, the Board
will consider both the reason given and the point in the
appeal at which the request for remand is made.” Id.
Applicant asserts, as good cause for the remand request,
that the Examining Attorney stated in her brief that
“applicant is not limited by the Office to using the goods
listed in the Identification of Goods and Services Manual.”
As a result, applicant seeks remand in order to amend its
identification to “cosmeceuticals, namely skin care lotions
and creams for anti-aging purposes,” even though
“cosmeceuticals” is not listed in the Manual.
The Examining Attorney made the statement in her brief
in response to an argument made by applicant in both its
request for reconsideration and its appeal brief regarding
the differences between its goods and those in the cited
registration, and specifically that applicant’s goods are
“cosmeceuticals,” but that because such goods “are a
relatively recent invention and not yet a category in the
Trademark Office’s Acceptable Identification of Goods and
Services Manual, Applicant was required to choose a
category description that the Trademark Office has deemed
Ser No. 78122490
4
acceptable.” Brief, p. 6. Applicant has not provided any
explanation as to why it waited to amend its actual goods
from “skin care lotions and creams and non-medicated skin
care preparations” to “skin care lotions and creams for
anti-aging purposes”; we note that “anti-aging cream” is
listed as an acceptable identification in the USPTO manual.
As noted above, the point in the appeal at which the
request for remand is filed plays a significant role in
determining whether good cause has been shown. Here,
applicant has filed its request for remand at an extremely
late stage of the appeal, with its reply brief. Thus, if
the request were to be granted, the appeal would
essentially return to its beginning stages in order that
applicant and the Examining Attorney could file
supplemental appeal briefs, and applicant could file a
supplemental reply brief. The only reason applicant has
given for its delay is that it was unaware of USPTO policy
that the applicant is not limited to using the
identifications of goods listed in the Identification of
Goods and Services Manual, even though this policy is set
out in the Trademark Manual of Examining Procedure.
Ser No. 78122490
5
We find that applicant has not demonstrated the
requisite good cause, and its request for remand is
therefore denied.3
This brings us to the refusal based on likelihood of
confusion. Our determination of this issue 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 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 and/or services. 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).
Applicant’s goods are, in part, identical to those in
the cited registration, as applicant’s goods are
identified, in part, as “skin care lotions and creams” and
3 It should also be noted that cosmeceuticals would still be
considered cosmetics products falling in Class 3. Pharmaceutical
products, which are classified in Class 5, are subject to a
review and approval process by the U.S. Food and Drug
Administration which is not required for cosmetics products.
Further, applicant would not be allowed to amend its
identification to that of a pharmaceutical in Class 5, as this
would broaden the original identification. See Trademark Rule
2.71(a).
Ser No. 78122490
6
the cited registration includes “skin, hand and body
lotions and cremes.” Because the goods are legally
identical, they must be deemed to travel in the same
channels of trade and be sold to the same classes of
consumers. They must also be deemed to be sold at the same
price points, and we must disregard applicant’s arguments
regarding actual differences in the channels of trade and
prices for the goods.
Contrary to applicant’s arguments that “evidence that
the respective goods move in different trade channels and
are sold to different customers is also key,” brief, p. 5,
it is well-established that "the question of likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in
applicant's application vis-a-vis the goods and/or services
recited in an opposer's registration [or, in the case of an
ex parte appeal, the cited registration], rather than what
the evidence shows the goods and/or services to be."
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
N.A., 811 F.2d 1490, 1 USPQ2d 1318, 1814 (Fed. Cir. 1987;
In re William Hodges & Co., Inc. 190 USPQ 47 (TTAB 1976).
This is because "although a registrant's current business
practices [in connection with which the mark is used] may
be quite narrow, they may change at any time." Canadian
Ser No. 78122490
7
Imperial Bank of Commerce, quoting CBS, Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Thus, the goods must be presumed to be sold through
all channels of trade which are usual for goods of this
type. In re Davis-Cleaver Produce Company, 197 USPQ 248
(TTAB 1977). Applicant’s assertions that its goods are
sold only to physicians and aestheticians is of no moment;
goods of this type may also be sold in pharmacies,
department stores and on-line. The registrant’s goods, as
identified, may also be sold through aestheticians,
pharmacies, etc.
Accordingly, if confusion is not to be found, it must
be on the basis of the differences in the marks.4 Obviously
applicant’s mark consists of the cited mark, WITHIN, to
which the word SKIN has been added. Equally obvious, SKIN
is a descriptive term for skin care lotions and creams and
skin care preparations. As the Examining Attorney has
pointed out, generally the addition of a descriptive term
to another’s mark will not avoid the likelihood of
confusion. Moreover, when a mark consists of a descriptive
term and a distinctive term, the distinctive term will be
4 We have no evidence on many of the other duPont factors, e.g.,
fame of the registrant’s mark, and actual confusion or the lack
thereof.
Ser No. 78122490
8
considered the dominant part of the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Despite these general propositions, however, in this
case we think that the marks SKIN WITHIN and WITHIN convey
different commercial impressions, such that confusion is
not likely. SKIN WITHIN, as applicant contends, has a
certain incongruity, since “skin” is normally considered to
be on the “outside.” Moreover, SKIN WITHIN, used in
connection with skin care products, suggests that the
product reaches the interior layers of skin. This is a
connotation that WITHIN per se does not have.
We also point out that in applicant’s mark the word
SKIN precedes WITHIN. The usual expectation is that the
descriptive term SKIN for skin cream products would follow
the source-indicating and dominant word, e.g. “WITHIN Skin”
or “WITHIN SKIN.” The placement of SKIN before the word
WITHIN in the instant mark gives the impression that SKIN
WITHIN is a unitary term, referring to the interior layers
of skin rather than conveying that SKIN merely describes
the product as a skin cream.
Finally, the fact that SKIN WITHIN rhymes internally
also adds a certain phonetic distinction that WITHIN does
not have. This rhyming effect also emphasizes the presence
Ser No. 78122490
9
of the word SKIN, and adds to the unitary impression of the
mark.
Because of the differences in the marks, and
specifically their different connotations and commercial
impressions, we find that, even as used on legally
identical goods, confusion is not likely to result.
Decision: The refusal of registration is reversed.