Active Medics Inc.

Trademark Trial and Appeal Board

Apr 30, 2012

No. 77767314 (T.T.A.B. Apr. 30, 2012)

Mailed:
April 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Active Medics Inc.
________

Serial No. 77767314
_______

Thomas I. Rozsa of Rozsa Law Group LC for Active Medics
Inc.

Jennifer M. Martin, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Quinn and Grendel, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Active Medics Inc. has appealed from the final refusal
of the trademark examining attorney to register ACTIVLASH,
in standard characters, for “eyelash conditioner.”1
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 77767314, filed June 24, 2009,
asserting first use and first use in commerce as early as
April 30, 2009.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77767314
2
applicant’s mark so resembles the mark ACTILASH, in
standard characters, registered for “cosmetic preparations
for eye lashes,”2 that, as used on applicant’s goods, it is
likely to cause confusion or mistake or to deceive.
Applicant and the examining attorney have filed
briefs.
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). 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 identified “eyelash conditioner” is
encompassed within the “cosmetic preparations for eye
lashes” identified in the identified registration. In
fact, the specimen submitted in that registration file, and

2 Registration No. 3696457, issued October 13, 2009.
Ser No. 77767314
3
made of record by the examining attorney, shows the
registrant’s mark used on a product identified as “eyelash
conditioner.” Because the goods are, in part, legally
identical, they must be presumed to travel in the same
channels of trade. The du Pont factors of the similarity
of the goods and the channels of trade favor a finding of
likelihood of confusion. Further, the goods, by their very
nature, are consumer items sold to the general public,
rather than to sophisticated purchasers. The du Pont
factor of the conditions of purchase also favors a finding
of likelihood of confusion.
Applicant does not appear to disagree with these
points; at least it has not argued them in its brief.
Rather, it has concentrated its comments on the first du
Pont factor, the similarity of the marks. We therefore
turn to consider this factor, keeping in mind that when
marks would appear on virtually identical goods, as they do
here, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Also, the test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
Ser No. 77767314
4
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. In re Association of the United
States Army, 85 USPQ2d 1264, 1268 (TTAB 2007); Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark is ACTIVLASH, while the cited mark is
ACTILASH. The marks are extremely similar in appearance;
both begin with the same four letters, ACTI, and end with
the same four letters, LASH. The only difference in the
marks is the inclusion of the letter “V” in applicant’s
mark, but this letter is not particularly noticeable
because of its location in the center of the mark, and does
not serve to distinguish the marks visually. Further,
because of the similarities in the beginning and ending of
the marks, the marks are also similar, although not
identical, in pronunciation. With regard to connotation,
consumers are likely to view the prefix ACTI in the cited
mark as referring to “active,” a meaning reinforced by the
registrant’s company’s name, Active Organics. ACTIV in
applicant’s mark also has this meaning, again reinforced by
the first word of applicant’s company name, Active Medics,
Inc. As a result of the beginnings of the marks having the
Ser No. 77767314
5
meaning of “active” and the end of the marks having the
meaning of “lash,” i.e., eyelash, the marks as a whole have
the same connotation and convey the same commercial
impression.
We note applicant’s assertions that the marks are
“totally different in overall visual impression and
meaning,” brief, p. 4, but aside from pointing out that its
mark includes the letter “V” and the registrant’s mark does
not, it provides no support for its position. As we have
stated, the presence of the letter “V” in the center of
applicant’s mark does not stand out in terms of
distinguishing the marks visually, and the prefix ACTI and
ACTIV are both likely to be viewed as referencing the word
“active,” such that ACTIVLASH and ACTILASH have the same
connotation and commercial impression.
We have considered all of applicant’s arguments,
including those not specifically discussed here, and we
find that the marks are similar, and that this du Pont
factor favors a finding of likelihood of confusion. In
particular, we consider the present situation to be very
different from the cases cited by applicant in which a word
is added to an existing mark to form a mark that is
different in connotation, such as PEAK and PEAK PERIOD.
See Colgate-Palmolive Co. Carter-Wallace, Inc., 432 F.2d
Ser No. 77767314
6
1400, 167 USPQ 529 (CCPA 1970). The letter V that appears
in the middle of applicant’s mark is hardly analogous; both
ACTILASH and ACTIVLASH still convey the same meaning.
Neither applicant nor the examining attorney has
discussed any other du Pont factors. To the extent that
any are relevant, we treat them as being neutral.
In view of the legally identical goods and channels of
trade, the fact that these are goods purchased by the
general public, and the similarity of the marks, we find
that applicant’s mark ACTIVLASH for eyelash conditioner is
likely to cause confusion with the mark ACTILASH registered
for cosmetic preparations for eyelashes.
Decision: The refusal of registration is affirmed.