Alagio Corp.

Trademark Trial and Appeal Board

Oct 18, 2006

No. 76638311 (T.T.A.B. Oct. 18, 2006)

Mailed: October 18, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Alagio Corp.
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Serial No. 76638311
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Myron Amer of Myron Amer, P.C. for Alagio Corp.

Gretta Yao, Trademark Examining Attorney, Law Office 105 (Thomas
G. Howell, Managing Attorney).
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Before Hairston, Grendel and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Alagio Corp. to register
the mark ROCK HARD (in typed or standard character form) for
goods ultimately identified as "hair spray" in Class 3.1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles

1 Serial No. 76638311, filed May 10, 2005, based on an allegation of
first use and first use in commerce on January 1, 2005.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76638311
2
the marks in the following three registrations, all owned by the
same entity, as to be likely to cause confusion.
Registration No. 2453616 for the mark ROCK HARD NAILS
(NAILS disclaimed), in standard character form, for
"cosmetics, namely, nail polish, eye liner, lip liner,
blush, lipstick[,] eyeshadow and mascara";2

Registration No. 2561676 for the mark shown below
(NAILS disclaimed), for "cosmetics, namely, nail
polish, lip liner, eye liner, blush, lipstick,
eyeshadow and mascara" in Class 3;3

Registration No. 2759746 for the mark shown below
(COSMETICS disclaimed), for "cosmetics, namely nail
polish, eye liner, lip stick, eye shadow, blush,
mascara, foundation, concealer, glitter, body lotion,
lip gloss, lip liner and moisturizer" in Class 3.4

When the refusal was made final, applicant appealed. Briefs
have been filed.

2 Issued May 22, 2001.

3 Issued April 16, 2002.

4 Issued September 2, 2003.
Serial No. 76638311
3
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. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, applicant argues that the marks
are different in sound, appearance and connotation as a result of
the presence of the words NAILS and COSMETICS in the registered
marks. In particular, applicant argues that the public is not
aware that those terms are disclaimed in the registrations and
that the examining attorney has not explained why ROCK HARD is
the dominant portion of the marks; that registrant's marks have
three words whereas applicant's mark is two words; and that
applicant's mark is a coined term while registrant's marks are
suggestive of registrant's products. Applicant relies on a
dictionary definition of "spray" as "liquid broken up into minute
droplets and blown," and a definition of "hard" as "not soft;
solid and firm to the touch,"5 arguing that the meanings of the

5 Applicant identifies the source of these definitions as "RANDOMHOUSE
WEBSTER'S College Dictionary [sic]" but has not submitted copies of the
Serial No. 76638311
4
two words "are almost opposites." (Response dated February 17,
2006 at 1-2.) Applicant appears to contend that ROCK HARD in
registrant's marks refers to the "hard" containers that dispense
registrant's products but that ROCK HARD has no meaning in
relation to applicant's "spray" product.
While marks must be considered in their entireties, it is
well settled that "there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties." In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). When we compare applicant's mark ROCK HARD with
registrant's marks ROCK HARD NAILS, ROCK HARD NAILS and design,
and ROCK HARD COSMETICS and design in their entireties, giving
appropriate weight to the features thereof, we find that the
marks are highly similar in sound, appearance, meaning and
commercial impression, and that the differences in the marks are
far outweighed by their similarities.
Applicant's entire mark is the phrase ROCK HARD. The same
phrase, ROCK HARD, is visually and aurally the most significant
portion of each of the registered marks. While the disclaimed
and descriptive, if not generic, terms NAILS and COSMETICS in

relevant pages from the dictionary. Nevertheless, there is no dispute
as to the meanings of these words and we accept that the words are
defined as applicant claims.
Serial No. 76638311
5
registrant's marks are not ignored in the analysis, the fact is
that consumers are more likely to rely on the nondescriptive
portion of registrant's marks, that is, the phrase ROCK HARD as
an indication of source. See In re National Data Corp., supra at
751 ("That a particular feature is descriptive or generic with
respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a
mark"). See also, e.g., In re Chatam International Incorporated,
380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ("Because
ALE [in the mark GASPAR'S ALE for beer and ale] has nominal
commercial significance, the Board properly accorded the term
less weight in assessing the similarity of the marks under
DuPont"); and In re Dixie Restaurants Inc., 105 F.3d 1405, 1407,
41 USPQ2d 1531 (Fed. Cir. 1997) (dominant portion of applicant's
mark THE DELTA CAFE and design (CAFE disclaimed) for restaurant
services, is DELTA). Similarly, the words NAILS and COSMETICS in
the registered marks are of little trademark significance and do
not serve to distinguish applicant's and registrant's marks in
sound or appearance.
As to the two cited marks ROCK HARD NAILS and ROCK HARD
COSMETICS that include designs, it is the wording itself, rather
than the design elements in those marks, that is more likely to
have a greater impact on purchasers and be remembered by them.
See CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed.
Serial No. 76638311
6
Cir. 1983) ("in a composite mark comprising a design and words,
the verbal portion of the mark is the one most likely to indicate
the origin of the goods to which it is affixed"). The word
portion of a composite word and design mark is generally accorded
greater weight because it is used to call for and refer to the
goods. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987). See also, e.g., In re Dixie Restaurants Inc., supra.
This is particularly true where, as here, the design elements do
nothing to add to or change the commercial impression created by
the wording, ROCK HARD NAILS and ROCK HARD COSMETICS, alone. In
addition, because applicant's mark ROCK HARD is presented in
typed or standard character form, the words could reasonably be
displayed in the same style and manner as ROCK HARD in the two
registered marks, thereby increasing the visual similarity of
applicant's and registrant's marks. See Phillips Petroleum Co.
v. C. J. Webb Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971); and
INB National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992).
The fact that ROCK HARD may have no meaning in relation to
the spray component of applicant's product is not relevant, and
we disagree that the phrase would be perceived as referring to
the containers for registrant's goods as applicant appears to
contend. We instead find that ROCK HARD conveys the same meaning
and creates the same commercial impression in relation to both
applicant's hair spray and registrant's cosmetics, more or less
Serial No. 76638311
7
suggesting in each mark the long-lasting qualities of the
respective products.
We turn next to a consideration of the goods. Applicant
argues that its product, hair spray, is "radically physically
different or diverse" from registrant's cosmetic products.
However, the question is not whether purchasers can differentiate
the goods themselves but rather whether purchasers are likely to
confuse the source of the goods. See Helene Curtis Industries
Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Thus, it
is not necessary that the goods of the applicant and registrant
be similar or even competitive to support a finding of likelihood
of confusion. It is sufficient if the respective goods are
related in some manner and/or that the conditions surrounding
their marketing are such that the goods would be encountered by
the same persons under circumstances that could, because of the
similarity of the marks used thereon, give rise to the mistaken
belief that the goods emanate from or are associated with, the
same source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
Registrant's goods are cosmetic products which consist of or
include in each of the cited registrations nail polish, eye
liner, lip liner, blush, lipstick, eyeshadow and mascara. Hair
spray is a cosmetic product as well. We take judicial notice of
the definition of "cosmetics" from The Columbia Encyclopedia
Serial No. 76638311
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(Sixth Edition 2001-05) as "preparations externally applied to
change or enhance the beauty of skin, hair, nails, lips, and
eyes."6 In any event, the respective products are all closely
related personal beauty care products. The examining attorney
has submitted several use-based, third-party registrations
showing that, in each instance, a single entity has adopted the
same mark for hair spray or hair care preparations, on the one
hand, and for one or more of the cosmetic items listed in the
cited registrations, on the other.7 Although third-party
registrations are not evidence that the marks shown therein are
in commercial use or that the public is familiar with them, they
serve to suggest that the goods listed therein may emanate from a
single source. See In re Albert Trostel & Sons Co., supra, and
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Moreover, in the absence of any limitations in the
respective identifications of goods, we must presume that the
goods are sold in all the normal channels of trade to all the
usual purchasers for such goods, and that the channels of trade

6 Obtained from www.bartleby.com. See also The Penguin English
Dictionary (2000) (obtained from xreferplus.com) defining "cosmetic" as
"a preparation designed to be applied to the skin or hair to improve
its appearance or texture." The Board may take judicial notice of
dictionary definitions, including online dictionaries which exist in
printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789,
1791 n.3 (TTAB 2002).

7 Applicant's objection to this evidence as untimely is not understood.
The third-party registrations listed in the examining attorney's brief
were properly made of record with the first Office action.
Serial No. 76638311
9
and purchasers for these closely related beauty care products
would be the same. See Interstate Brands Corp. v. McKee Foods
Corp., 53 USPQ2d 1910 (TTAB 2000). We also note that the
Internet evidence submitted by the examining attorney shows that
hair styling preparations along with other cosmetic products are
offered on the same retail websites, including beautyclicks.com
and the websites for Aveda and Hair Care USA.
Furthermore, considering that hair spray and other cosmetic
products such as lipstick and mascara are relatively inexpensive,
ordinary consumer items, they are therefore likely to be
purchased casually and on impulse, thus increasing the risk of
confusion. Kimberly-Clark Corp. v. H. Douglas Enter., Ltd., 774
F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985).
In view of the foregoing, we find that purchasers familiar
with registrant's cosmetics provided under its marks ROCK HARD
NAILS, ROCK HARD NAILS (with design), and ROCK HARD COSMETICS
(with design), are likely to believe, upon encountering
applicant's very similar mark ROCK HARD for hairspray, that the
mark identifies an additional product in registrant's line of
cosmetics or that the respective products are otherwise in some
way associated or connected with the same entity.
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.