No. 86954676 (T.T.A.B. May. 23, 2018)

Adriana Ortega

Trademark Trial and Appeal BoardMay 23, 2018

No. 86954676 (T.T.A.B. May. 23, 2018)

This Opinion is Not a Precedent of the TTAB Mailed: May 23, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Adriana Ortega _____ Serial No. 86954676 _____ Phillip Thomas Horton of the Law Office of Phillip Thomas Horton for Adriana Ortega. Janice L. McMorrow, Trademark Examining Attorney, Law Office 115, Daniel Brody, Managing Attorney. _____ Before Cataldo, Wellington and Heasley, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Applicant, Adriana Ortega, seeks registration on the Principal Register of the standard character mark LIFESTYLE AESTHETICS (“AESTHETICS” disclaimed), identifying “beauty consultation services,” in International Class 44.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that 1 Application Serial No. 86954676 was filed on March 28, 2016, based upon Applicant’s allegation of January 11, 2013 as a date of first use of the mark anywhere and March 27, 2013 as a date of first use of the mark in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Serial No. 86954676 - 2 - Applicant’s mark, when used in connection with the identified services, so resembles the standard character mark LIFESTYLE MAKEUP LESSON (“MAKEUP LESSON” disclaimed), registered on the Principal Register for “beauty consultation services in the selection and use of cosmetics and skin care products and in house facial skin care treatment services,” in International Class 44,2 as to be likely to cause confusion, mistake or deception. When the refusal was made final, Applicant appealed. The Examining Attorney and Applicant filed briefs. We affirm the refusal to register. A. Evidentiary Objection Applicant attached evidentiary exhibits to her appeal brief that she did not introduce into the record during prosecution of the involved application.3 Trademark Rule 2.142(d) reads as follows: The record in the application should be complete prior to the filing of an appeal. Evidence should not be filed with the Board after the filing of a notice of appeal. If the appellant or the examining attorney desires to introduce additional evidence after an appeal is filed, the appellant or the examining attorney should submit a request to the Board to suspend the appeal and to remand the application for further examination.4 2 Registration No. 3041692 issued on January 10, 2006. Section 8 affidavit accepted; Section 15 affidavit acknowledged. Renewed. 3 4 TTABVUE 15-26. 4 See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1209.04 (June 2017) and authorities cited therein. Serial No. 86954676 - 3 - This evidence includes two dictionary definitions that are proper subject matter of judicial notice.5 We hereby exercise our discretion to take judicial notice of these definitions.6 Otherwise, Applicant cannot make evidence of record by attaching it to her appeal brief. Thus, the Examining Attorney’s objection7 to the remaining evidence attached to Applicant’s appeal brief on the ground of untimeliness is sustained, and we give this evidence no consideration. B. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont 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 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). 1. Relatedness of the Services/Channels of Trade/Consumers With regard to the services, channels of trade and classes of consumers, we must make our determinations under these factors based on the services as they are 5 Id. at 15-16. 6 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), 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); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). 7 6 TTABVUE 8-10. Serial No. 86954676 - 4 - identified in the application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods or services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). In this case, the broadly identified services in the involved application, namely, “beauty consultation services,” must be presumed to include the more narrowly and specifically identified “beauty consultation services in the selection and use of cosmetics and skin care products and in house facial skin care treatment services” in the cited registration. Put another way, the services in the cited registration, relating to particular kinds of beauty consultation, are subsumed under the more generally identified services in the involved application. Applicant’s services thus are presumed to include the services in the cited registration and are legally identical thereto. Applicant so acknowledges in her brief: “Applicant must concede the similarity of the goods or services as recited in the Applicant’s applied-for trademark as well as the Serial No. 86954676 - 5 - registered trademark. Namely, that both marks deal with the services of beauty consultation services.”8 Because the services identified in the application and the cited registration are legally identical, we must presume that the channels of trade and classes of purchasers for these services are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011) (where there are legally identical services, marketing channels of trade and targeted classes of consumers are the same). See also Octocom Sys., Inc., 16 USPQ2d at 1787 (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.”). We find that the du Pont factors of the legal identity of the goods, channels of trade and consumers weigh heavily in favor of likelihood of confusion. 2. Conditions of Sale Applicant argues, based upon differences in the marks and the asserted weakness of the term LIFESTYLE, that “consumers looking at the mark[s] will be sophisticated enough to know the services do not originate from the same source.”9 Neither 8 4 TTABVUE 12. 9 Id. at 12-13. Serial No. 86954676 - 6 - identification of services restricts the identified services to “high end” beauty consultation. Applicant’s specimen of record indicates that her services include surgical consultation, “beauty concierge and make-up artistry,”10 suggesting that her broadly worded services may include more exclusive forms of beauty consultation. Nonetheless, the services recited in the application and cited registration are not limited to exclusive beauty consultation, and may include lower cost services that may be purchased without a high degree of care. We therefore presume that the recited services includes beauty consultation services at all price points, including services that are subject to casual, impulse purchase. As a result, this du Pont factor is neutral. 3. Absence of Actual Confusion Applicant argues that there is no evidence of any actual confusion and that there has been concurrent use for five years. We do not accord significant weight to Applicant’s contention, unsupported by any evidence, that there have been no instances of actual confusion despite contemporaneous use of the respective marks. The Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding: With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self- serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of 10 Applicant’s specimen of record, submitted with her application on March 28, 2016, consists of a screenshot from her internet website. Serial No. 86954676 - 7 - actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, [citation omitted], especially in an ex parte context. Majestic Distilling, 65 USPQ2d at 1205. Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not as compelling in support of a finding of no likelihood of confusion. Thus, we cannot conclude from the lack of instances of actual confusion that confusion is not likely to occur. This du Pont factor is neutral. 4. Similarity/Dissimilarity of the Marks We now consider Applicant’s mark LIFESTYLE AESTHETICS and the registered mark LIFESTYLE MAKEUP LESSON and compare them “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The marks “must be considered … in light of the fallibility of memory.” St. Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average consumer, who retains a general rather than specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Applicant’s mark LIFESTYLE AESTHETICS and Registrant’s mark LIFESTYLE MAKEUP LESSON are similar inasmuch as they share the term LIFESTYLE as Serial No. 86954676 - 8 - their first and most distinctive term. The disclaimed word “AESTHETICS” in Applicant’s mark, defined as “the philosophy of the beautiful or of art; a system of principles for the appreciation of the beautiful”11 has comparatively less trademark significance because it is descriptive of Applicant’s identified services. Similarly, the disclaimed wording “MAKEUP LESSON” in the registered mark describes Registrant’s services inasmuch as “MAKEUP” is defined as “facial cosmetics, as eye shadow or lipstick; cosmetics used on other parts of the body, as to cover birthmarks; or the application of cosmetics,”12 and “LESSON” is defined as “something from which a person learns or should learn from; an instructive lesson.”13 Thus, the wording “MAKEUP LESSON” merely describes the beauty consultation services in the selection and use of cosmetics” identified in the cited registration. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial 11 Examining Attorney’s July 12, 2016 first Office Action at .pdf 6-8. Definition from Oxford English Dictionary at oed.com. 12 We hereby take judicial notice of this definition from Dictionary.com, based on The Random House Dictionary (2018). See. e.g., In re Red Bull GmbH, 78 USPQ2d at 1378. 13 4 TTABVUE 15. Definition from Dictionary.com, source not listed. Serial No. 86954676 - 9 - impression”). There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. Further highlighting the importance of the term LIFESTYLE common to both Applicant’s mark and the registered mark is its location as the first part thereof. See Palm Bay Imports,, 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994) (upon encountering the marks, consumers will first notice the identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). “[I]f the dominant portion of both marks is the same, then confusion may be likely notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB 1985). The peripheral differences in this case, Applicant’s addition of the word “AESTHETICS” and the presence in the registered mark of the wording “MAKEUP LESSON,” fail to distinguish the marks. As discussed above, “AESTHETICS” is merely descriptive of Applicant’s services and the descriptive wording “MAKEUP LESSON” modifies LIFESTYLE in the registered mark and thus serves to reinforce it. Serial No. 86954676 - 10 - Based upon the above analysis, we find that LIFESTYLE AESTHETICS is more similar to than dissimilar from LIFESTYLE MAKEUP LESSON in terms of appearance, sound, connotation and commercial impression. As a result, consumers encountering LIFESTYLE AESTHETICS could mistakenly believe that it represents a variation on the registered mark used to identify a broader range of services emanating from the same source as Registrant’s more specific services. This is particularly the case because, “[w]hen marks would appear on virtually identical ... [goods or] services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d at 1700. See also ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980). In view thereof, the du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. 5. Strength or Weakness of the Mark in the Cited Registration There is no admissible evidence to support a finding that the mark in the cited registration, or any portion thereof, is weak or entitled to a narrow scope of protection. We find therefore, that the mark in the cited registration is entitled to a normal scope of protection. C. Conclusion In sum, we find that the services are legally identical and are presumed to be available in the same channels of trade at all price points to the same classes of consumers. We further find Applicant’s mark LIFESTYLE AESTHETICS and the Serial No. 86954676 - 11 - LIFESTYLE MAKEUP LESSON mark in the cited registration are more similar than dissimilar, and no evidence of record establishes that any portion of the registered mark is weak in connection with the services at issue. The lack of actual confusion and any sophistication of the relevant consumers are neutral factors. We find, therefore, that confusion is likely between Applicant’s mark and the mark in the cited registration as used in connection with their respective services. Decision: The refusal to register based on likelihood of confusion under Section 2(d) of the Trademark Act is affirmed.