Aesthetics Biomedical, Inc.Download PDFTrademark Trial and Appeal BoardJul 5, 201987403574 (T.T.A.B. Jul. 5, 2019) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: July 5, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Aesthetics Biomedical, Inc. _____ Serial No. 87403574 _____ Laura J. Zeman-Mullen of Zeman-Mullen & Ford LLP, for Aesthetics Biomedical, Inc. Lauren E. Burke, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Mermelstein, Kuczma and Hudis, Administrative Trademark Judges. Opinion by Hudis, Administrative Trademark Judge: Aesthetics Biomedical, Inc. (“Applicant”) seeks registration on the Principal Register of the mark MYOWN (in standard characters) for, as amended, “personal care products, namely, personalized skin creams and non-medicated skin serums that are marketed to individuals through a personalized patient beauty spa service and that are custom made to include an individual’s own blood, fat, or tissue which is Serial No. 87403574 - 2 - obtained from the individual by a medical professional who provides services for the personalized patient beauty spa” in International Class 3.1 The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied to the goods identified in the application (as amended), so resembles the mark MYOWN for “cosmetics and make-up” in International Class 32 on the Principal Register as to be likely to cause confusion, to cause mistake, or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. Both the Examining Attorney and Applicant filed briefs, but neither of them filed evidence except for the MYOWN Registration forming the basis for the refusal to register and two other registrations that the Examining Attorney ultimately withdrew as additional bases for the refusal. We affirm the refusal to register. 1 Application Serial No. 87403574 filed on April 7, 2017, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Registration No. 5096544, issued December 6, 2016. Office Actions of July 7, 2017, TSDR 1-3; November 17, 2017, TSDR 2-3; and Denial of Request for Reconsideration of October 2, 2018, TSDR 2-3. Page references herein to the application record refer to the online database of the United States Patent and Trademark Office’s (“USPTO’s”) Trademark Status & Document Retrieval (“TSDR”) system. All citations to documents contained in the TSDR database are to the downloadable .pdf versions of the documents. References to the briefs on appeal refer to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the docket entry number; and coming after this designation are the page references, if applicable. Serial No. 87403574 - 3 - I. Applicable Law We base our determination of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162- 63 (Fed. Cir. 2019). In applying the DuPont factors, we bear in mind the fundamental purposes underlying Section 2(d), which are to prevent confusion as to source and to protect registrants from damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. We have considered each DuPont factor that is relevant and of record, and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Communs., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). Serial No. 87403574 - 4 - Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less weighty roles in any particular determination”). Two key considerations are the similarities between the marks and the similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”)). I. Analysis We now review the arguments of Applicant and the Examining Attorney in view of applicable law and the evidence of record. A. Comparison of Applicant’s Mark to the Cited Registered Mark Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). See also In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Serial No. 87403574 - 5 - Here, Applicant’s mark and the mark in the cited registration are identical. Applicant concedes this in its Brief.3 The first DuPont factor thus weighs heavily in favor of a finding of likelihood of confusion. B. Comparison of the Goods and Channels of Trade The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods … as described in an application or registration…,” and the third factor concerns the “similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1359 (Fed. Cir. 2014). The comparison of goods factor considers whether they are “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] … emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). To be clear, the issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). We compare the goods as identified in the application and in the cited registration, see Stone Lion Capital Partners, 110 USPQ2d at 1162 (quoting Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 3 7 TTABVUE 9. Serial No. 87403574 - 6 - 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.”), not on extrinsic evidence of actual use. See In re Detroit Ath., 128 USPQ2d at 1052. Some applicants attempt to avoid a likelihood of confusion by narrowly describing their goods, channels of trade or its class of customers, as Applicant did here during prosecution.4 Our analysis, however, is the same. Such restrictions to an applicant’s identification may not avoid confusion where, as here, the cited registration contains no express limitations and the respective goods are otherwise related. See, e.g., In re i.am.symbolic, 123 USPQ2d at 1750 (affirming Board finding that an identification restricting the goods to those associated with William Adams, professionally known as ‘will.i.am,’” imposed no meaningful limitation on the nature of the goods, trade channels, or classes of purchasers). When considering channels of trade, we are mindful of “the controlling principle that where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein[,]” In re Solid State Design Inc., 125 USPQ2d 1409, 1413 (TTAB 2018), “and, in the absence of specific limitations in the application and registration, on consideration of the normal and usual channels of trade and methods of distribution” for goods of the type identified. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). 4 Response to Office Action of September 29, 2017, TSDR 2; Petition to Revive and Request for Reconsideration of August 10, 2018, TSDR 2. Serial No. 87403574 - 7 - The Examining Attorney maintains that the goods recited in the MYOWN Application, as amended, and the cited MYOWN Registration are very closely related and could travel through the same channels of trade to the same consumers under circumstances that could give rise to the mistaken belief that the goods emanate from a common source. The Examining Attorney buttresses her position by noting that the MYOWN registration uses broad wording to describe the goods,5 namely, cosmetics and make-up, which presumably encompasses all goods of the type described, including Applicant’s more narrowly described goods, “personal care products, namely, personalized skin creams and non-medicated skin serums that are marketed to individuals through a personalized patient beauty spa service and that are custom made to include an individual’s own blood, fat, or tissue which is obtained from the individual by a medical professional who provides services for the personalized patient beauty spa.” Thus, the Examining Attorney concludes, Applicant’s and the Registrant’s goods are legally identical, citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981), and Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).6 The goods in the cited registration are broadly identified as “cosmetics and make- up.” Applicant’s goods are a particular kind of “personalized skin creams and non- medicated skin serums.” We must construe the registrant’s “cosmetics and make-up” to include all such goods, and there can be no doubt that skin creams and skin serums 5 Applicant concedes this point in its Brief. 7 TTABVUE 12. 6 9 TTABVUE 8. Serial No. 87403574 - 8 - fall within the broad definition of cosmetics.7 Therefore, although Applicant’s goods are a specific and narrowly described type of cosmetic, they are encompassed within the registrant’s broadly identified goods, and are to that extent identical with them. Whether the registrant in fact makes or sells the same goods as Applicant is irrelevant. Our decision must be based on the goods identified in the cited registration, and Applicant’s skin creams and serums are included within the Registrant’s cosmetics. Applicant contends that for goods (in an application and cited registration) to be considered “related” for likelihood of confusion purposes they must be related in some specific manner or the conditions surrounding their marketing are such that they would be encountered by the same consumers under circumstances that give rise to the mistaken assumption that the goods originate from the same source, citing In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). However, Applicant goes on to argue that the Examining Attorney did not point to probative evidence to show that consumers would encounter the Registrant’s cosmetics and make-up 7 To illustrate, a “Cosmetic” includes substances that you put on your face or body that are intended to improve your appearance. CAMBRIDGE DICTIONARY https://dictionary.cambridge.org/dictionary/english/cosmetic (last visited July 3, 2019); “Make-up” comprises cosmetics (such as lipstick, mascara, and eye shadow) used to color and beautify the face; a cosmetic applied to other parts of the body. MERRIAM-WEBSTER https://www.merriam-webster.com/dictionary/makeup (last visited July 3, 2019); an applicable definition of “Cream” is a cosmetic or medication that resembles cream in consistency. COLLINS DICTIONARY https://www.collinsdictionary.com/us/dictionary/english- thesaurus/cream (last visited July 3, 2019). Finally, an applicable definition of “Serum” is a usually lightweight cosmetic preparation especially for use on the face. MERRIAM-WEBSTER https://www.merriam-webster.com/dictionary/serum (last visited July 3, 2019). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format, definitions in technical dictionaries, translation dictionaries and online dictionaries. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013). Serial No. 87403574 - 9 - together with Applicant’s personalized skin creams and custom made skin serums in such a way that they would perceive the goods as coming from the same source.8 Similarly, Applicant argues that the Examining Attorney has not provided any evidence to show that the normal trade channels for the Registrant’s cosmetics and make-up would be personalized beauty spas that utilize medical professionals to obtain an individual’s blood, fat, or tissue to put into the individual’s personalized skin care product. Accordingly, says Applicant, there is no evidence that Applicant’s trade channels would overlap with the Registrant’s trade channels, citing In re HerbalScience Group, LLC, 96 USPQ2d 1321 (TTAB 2010). Applicant’s arguments are not well taken. Given the legal identity of the goods, and the lack of restrictions or limitations in the cited MYOWN Registration as to their nature, channels of trade, or classes of purchasers for those goods, we must presume that the channels of trade and classes of purchasers for the goods in the MYOWN Application are also the same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in determining likelihood of confusion). See also L. & J.G. Stickley, Inc. v. Cosser, 81 USPQ2d 1956, 1971 (TTAB 2007) (“Because the goods of both parties are at least overlapping, we must presume that the purchasers and channels of trade would at least overlap.”). 8 7 TTABVUE 10; see also Applicant’s similar arguments at 10 TTABVUE 4-5. Serial No. 87403574 - 10 - Applicant’s citation to In re Total Quality Grp., 51 USPQ2d at 1476 is of no assistance to its arguments. That decision says: It is well settled that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods as they are identified in the involved application and cited registration, rather than on what any evidence may show as to the actual nature of the goods, their channels of trade and/or classes of purchasers. (Citation omitted, emphasis added). Id. Applicant’s reliance on In re HerbalScience Grp., 96 USPQ2d at 1324-25 is also misplaced. In HerbalScience, based on the record before it, the Board found that “[t]here is nothing in this record to show that a normal channel of trade for [the registrant’s goods] … is that they are sold to the companies that would purchase applicant’s identified goods[,]” concluding that “[b]ecause of the differences in the channels of trade and customers for applicant’s and the registrant’s goods, there is virtually no opportunity for confusion to arise.” Id. However, unlike HerbalScience, here Applicant’s mark and the Registrant’s mark are identical, and the scope of the Registrant’s described goods, without limitation as to trade channels, encompasses Applicant’s more narrowly-described goods and trade channels. Just as we must consider the goods in the application and registration to include all goods of the type identified, we likewise must consider them to move in all usual channels of trade for goods of that type. In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). Moreover, because the goods in this case are identical in part, their channels of trade are considered identical to the same extent. In re Viterra, 101 USPQ2d at 1908. Further, since, under these circumstances, the Serial No. 87403574 - 11 - goods at issue are presumed to be sold to all usual purchasers, we must consider the purchasers to overlap as well. CBS Inc. v. Parkville Imports, Inc., 223 USPQ 1143, 1144 (TTAB 1984). Thus, the second and third DuPont factors weigh in favor of finding a likelihood of confusion. C. The Conditions under Which and Buyers to Whom Sales are Made, i.e., “Impulse” vs. Careful, Sophisticated Purchasing The fourth DuPont factor looks at “the conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Neither Applicant nor the Examining Attorney presented evidence on this issue. Applicant argues that “Applicant’s products require an individual consumer to patronize a personalized beauty spa” such that “[i]t is obviously clear that Applicant’s consumers are sophisticated consumers” thus concluding that “[i]n making purchases of this nature, consumers will demonstrate a high degree of care and consideration” and “[t]herefore, purchasers encountering the respective goods will not be misled or confused.”9 However, Applicant argues these points without any supporting evidence in the record, and “[a]ttorney argument is no substitute for evidence.” Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). 9 7 TTABVUE 11-12; see also Applicant’s similar arguments at 10 TTABVUE 5-6. Serial No. 87403574 - 12 - The Examining Attorney contends “[t]he fact that purchasers may be sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. … Therefore, even if consumers of Applicant’s goods are knowledgeable about the process by which the goods are created, a likelihood of confusion regarding the source of the goods in the marketplace can still exist. Further, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.10 On this record, we find that the relevant purchasing public of Applicant’s and the Registrant’s goods could consist of both discriminating and ordinary consumers; and therefore we focus on the latter, as the applicable standard of care for a likelihood-of- confusion analysis is that of the least sophisticated consumer. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018); Somerset Distilling, Inc. v. Speymalt Whiskey Distrib., Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989) (alcoholic beverage aficionados vs. ordinary purchasers who purchase alcoholic beverages to stock a bar or for gifts). We note, however, that even if we considered Applicant’s purchasers to be sophisticated we would reach the same result. While customer sophistication is a factor to be considered, even sophisticated customers are not immune from confusion. In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986). Here, the applied-for mark is identical to that in the cited registration and for goods which are encompassed by it, and sold in the same channels of trade to the same 10 9 TTABVUE 10-11. Serial No. 87403574 - 13 - purchasers. Even sophisticated purchasers are not immune from source confusion under such circumstances. In re Wilson, 57 USPQ2d 1863, 1865–66 (TTAB 2001). We therefore consider this factor as neutral. D. No Other Likelihood of Confusion Factors have been discussed, and are Therefore Presumed to be Neutral Neither Applicant nor the Examining Attorney submitted evidence or argument on the other likelihood of confusion factors discussed by the Court of Customs and Patent Appeals in DuPont, 177 USPQ at 567. We therefore treat them as neutral. II. Decision The refusal to register Applicant’s mark MYOWN is affirmed. Copy with citationCopy as parenthetical citation