Alagio Corp.

Trademark Trial and Appeal Board

Sep 5, 2007

No. 76635742 (T.T.A.B. Sep. 5, 2007)

Mailed: September 5, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Alagio Corp.
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Serial No. 76635742
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Myron Amer of Myron Amer, P.C. for Alagio Corp.

James A. Rauen, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
____________

Before Rogers, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Rogers, Administrative Trademark Judge:

Alagio Corp. (applicant) has filed an application to
register the mark COLOR THERAPY on the Principal Register
for “shampoo for natural blond, brunette and red hair,” in
International Class 3.1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), in view of the prior registration of the mark

1 Serial No. 76635742, filed April 11, 2005, based on use of the
mark in commerce, alleging first use and use in commerce as of
December 1, 2004.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 76635742

2
ESSENTIAL COLOR THERAPY for both “hair treatment
preparations, namely, shampoo for color-treated hair” and
“hair conditioners” and the mark COLORCARETHERAPIE for “hair
care preparations, namely, shampoo and conditioner,
protective shine spray, hair treatment preparations,” all in
International Class 3.2 It is the examining attorney's
contention that applicant’s mark so resembles these
previously registered marks that its use on or in connection
with applicant's identified goods is likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs and applicant has filed
a reply brief. We affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

2 Registration Nos. 1965226 (issued April 2, 1996 and renewed),
2671345 (issued January 7, 2003), and 3071959 (issued March 21,
2006), all owned by L’Oreal USA Creative, Inc.
Serial No. 76635742

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In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
We turn, first, to a determination of whether
applicant’s mark, COLOR THERAPY, and the mark in the first
two cited registrations, ESSENTIAL COLOR THERAPY, when
considered in their entireties, are similar in terms of
appearance, sound, connotation and commercial impression.
We will discuss the mark in the third cited registration
separately.
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 impressions that confusion as to the
source of the goods or services 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. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
Serial No. 76635742

4
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Both applicant’s mark and the mark in the first two
cited registrations include the term COLOR THERAPY.
Applicant argues that confusion is unlikely because the term
ESSENTIAL is the most dominant portion of the registered
mark and thus distinguishes it from applicant’s mark. The
term ESSENTIAL is present in and a significant part of the
cited mark since it is the first word, however, it is only
one of three words and is somewhat laudatory in suggesting
that the hair care products are “must have” items. Thus, we
do not agree with applicant's contention that it is
dominant.
Applicant also argues that the marks are not
confusingly similar because the term ESSENTIAL in the
registered marks has a “synergistic relation” with the term
THERAPY while applicant’s mark lacks this connotation. This
argument fails to account for the presence of COLOR between
the two words assertedly sharing the synergistic relation
and is unpersuasive. Applicant’s entire mark is subsumed
within the registered marks because applicant has merely
Serial No. 76635742

5
removed the term ESSENTIAL from the registered marks and
adopted the remainder. Thus, consumers seeing the marks
could readily think that ESSENTIAL COLOR THERAPY shampoo and
conditioner were particular formulations within the COLOR
THERAPY line. We conclude that, although the presence of
ESSENTIAL necessarily creates differences in appearance and
pronunciation when spoken, the connotations of the marks are
fundamentally the same and the overall commercial
impressions are very similar.
We agree with the examining attorney that comparison of
marks should be made from the point of view of the average
consumer who normally will retain only a general rather than
a specific impression of trademarks. When used on hair care
products, we find all three marks convey the same impression
that the consumer’s hair color will benefit from the
therapeutic qualities of the shampoos and conditioners. In
this case, the shared connotation and commercial impression
of the marks is more important than the differences in
appearance or sound resulting from applicant's deletion of
the word ESSENTIAL. In re Sarkli, Ltd., 721 F.2d 353, 220
USPQ 111, 113 (Fed. Cir. 1983) (“the PTO may reject an
application ex parte solely because of similarity in meaning
of the mark sought to be registered with a previously
registered mark”).
Serial No. 76635742

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Turning next to consider the goods or services of the
involved application and first two of the cited
registrations, we note that the question of likelihood of
confusion must be determined based on an analysis of the
goods recited in applicant’s application vis-à-vis the goods
or services recited in the registrations, rather than based
on what the evidence may show about the actual nature of the
goods. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). See also Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. See Time Warner Entertainment
Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). See also,
Serial No. 76635742

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In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases
cited therein.
The goods in applicant’s application and the first two
cited registrations are all hair care preparations in
International Class 3. Applicant’s goods are “shampoo for
natural blonde, brunette and red hair” while the
registrant’s goods are “hair treatment preparations, namely,
shampoo for color-treated hair” and “hair conditioners.”
Regarding the nature of the shampoos and the supporting
declaration from applicant’s president, we note applicant’s
argument that confusion is unlikely because its goods are
intended to be used on natural color hair while the
registrant’s goods are intended to be used on color-treated
hair. There are a number of problems with this argument.
First, even if we were to agree that the two types of
shampoo are different for likelihood of confusion purposes,
applicant's specimens show potential use of its shampoo on
color-treated hair and, as pointed out by the examining
attorney, strongly suggest that any shampoo producer can
produce either type of shampoo. We are skeptical of
applicant's unsupported argument that different types of
shampoos would be sold in different sections of a store or
on different shelves. However, even if true, this may
actually heighten likelihood of confusion because there will
be no opportunity for consumers to readily compare the
Serial No. 76635742

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shampoos. Finally, we note that dyed hair can be changed
back or left un-dyed. That is, a consumer with dyed hair
can just as easily choose to return to his or her natural
color and so, notwithstanding the asserted differences
between types of shampoo, chemical composition and store
placement, different shampoos may still be used by or
purchased at different times by the same consumers.
Regarding applicant’s shampoo and the second cited
registration for “hair conditioners,” we note the term
conditioner is unrestricted as to use or channels of trade
and even applicant has not contested the examining
attorney's contention that registrant's conditioners and
applicant's shampoo must be considered complementary
products.
Finally, when products are inexpensive and subject to
impulse purchase, as they are here, purchasers exercise a
lesser standard of purchasing care and thus are more likely
to be confused as to the source of the goods. See Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899
(Fed. Cir. 2000). See also, Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281
(Fed. Cir. 1984).
We conclude that in view of the substantial similarity
in the commercial impressions of applicant’s mark, COLOR
THERAPY, and the mark in the first two cited registrations,
Serial No. 76635742

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ESSENTIAL COLOR THERAPY, their contemporaneous use on these
closely related goods is likely to cause confusion as to the
source or sponsorship of such goods.
Finally, we also agree with the examining attorney that
a latecomer cannot typically adopt a mark that consists of a
registered mark less one of its words, and hope to avoid a
finding of likelihood of confusion. See In re Optical
Int’l, 196 USPQ 775, 778 (TTAB 1977) (Applicant's mark
“Optique” and registered mark “Optique Boutique” when used
in connection with competing optical wear likely to cause
confusion). See also Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1133 (TTAB 1995) ("a
newcomer has both the opportunity and the obligation to
avoid confusion").
We now turn to a comparison of applicant’s mark, COLOR
THERAPY, and the mark in the third cited registration,
COLORCARETHERAPIE. We begin by noting that the registrant’s
hair shampoo and conditioner are unrestricted as to type and
channels of trade and we must presume that the registration
encompasses all types of hair shampoo and conditioner, that
they move in all channels of trade normal for these goods,
and that they are available to all classes of purchasers for
the described goods. See In re Linkvest S.A., 24 USPQ2d
1716 (TTAB 1992). In short, we must consider registrant's
shampoo to be identical to applicant's shampoo.
Serial No. 76635742

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When goods are closely related or legally identical,
the degree of similarity between the marks need not be as
great to support a conclusion of likelihood of confusion.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1992); and In re J.M. Originals Inc.,
6 USPQ2d 1393, 1394 (TTAB 1987).
Nonetheless, when viewed in their entireties,
applicant's mark and the third cited mark are similar in
terms of appearance, sound, connotation and commercial
impression.
Both marks begin with the term COLOR and end with the
term THERAPY (or THERAPIE), and the examining attorney
argues that there is little distinction between the terms
THERAPIE and THERAPY. Applicant has not contended to the
contrary. Although neither applicant nor the examining
attorney addressed the issue, we take judicial notice of the
fact that “therapie” is the French word for “therapy.”3 It
is well settled that an applicant may not register the
foreign equivalent of a term if consumers would be likely to
translate the foreign term into its English equivalent.
Palm Bay, supra, 73 USPQ2d 1696; In re Pan Tex Hotel Corp.,

3 Larousse English-French Dictionary (1998). The Board may take
judicial notice of dictionary definitions. See University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Serial No. 76635742

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190 USPQ 109, 110 (TTAB 1976). We agree with the examining
attorney that consumers would view the terms THERAPY and
THERAPIE as equivalents. In contrast to the Palm Bay case,
wherein there was not sufficient evidence to support a
conclusion that consumers would translate the French VEUVE
to "widow," in the case at hand the two words THERAPY and
THERAPIE are virtually the same in French and English and
the translation would therefore be easily and readily made
by most consumers.
In considering the connotation and commercial
impression of the two marks, we note that in the
registrant’s mark, CARE and THERAPIE reinforce each other
and the presence of CARE does not significantly alter the
connotation of the mark, vis-à-vis applicant's mark. As
with the first two cited marks, the applicant’s mark and the
third cited mark convey the same impression, namely, the
therapeutic qualities of the involved shampoos and
conditioners.
We conclude that in view of the presumptively identical
nature of the goods and the substantial similarity in the
commercial impressions of applicant’s mark, COLOR THERAPY,
and the third cited mark, COLORCARETHERAPIE, their
contemporaneous use on the identified goods is likely to
cause confusion as to the source or sponsorship of such
goods.
Serial No. 76635742

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Finally, we note applicant’s claim of common law
priority in regard to the third cited registration.4 This
argument is not relevant to an ex parte proceeding. Dixie,
supra, 41 USPQ2d at 1534. During ex parte prosecution, the
trademark examining attorney has no authority to review or
decide on matters that constitute a collateral attack on the
cited registration.
Decision: The refusal under Section 2(d) of the Act is
affirmed as to each of the cited registrations.

4 Applicant's claimed date of first use is well after that listed
in the first two cited registrations but a few months prior to
that asserted in the third registration.