Alterna Holdings Corp.

Trademark Trial and Appeal Board

Aug 8, 2013

No. 85371497 (T.T.A.B. Aug. 8, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 8, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Alterna Holdings Corp.
_____

Serial No. 85371497
_____

Mark B. Mizrahi of Wolf Rifkin Shapiro Shulman & Rabkin, LLP for Alterna
Holdings Corp.

Karen K. Bush, Trademark Examining Attorney, Law Office 108 (Andrew
Lawrence, Managing Attorney).
_____

Before Holtzman, Bergsman and Kuczma, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Alterna Holdings Corp. (“applicant”) filed an intent-to-use application to
register the mark HEMP NATURAL STRENGTH (stylized), shown below, for the
following goods as amended:
Haircare [sic] preparations containing hemp seed oil
distributed primarily through professional hair salons, in
International Class 3.
Applicant disclaimed the exclusive right to use “Hemp.”

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Serial No. 85371497

3

“Natural Strength.” Applicant requested that the Board take judicial notice of the
third-party evidence. The Trademark Examining Attorney objected to the evidence
on the ground that it was not timely filed: that is, applicant did not make the
evidence of record during the prosecution of the application and submitted it for the
first time with its brief. The objection is sustained because the evidence was not
timely filed.
Further, excerpts from third-party websites which are transitory in nature
are not the type of evidence for which the Board will take judicial notice. See UMG
Recordings Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1879 n.12 (TTAB 2011) (Board
refused to take judicial notice of web pages from websites noting that “opposer has
not stated why it could not have properly introduced this evidence itself during
trial.”); Motion Picture Association of America Inc. v. Respect Sportswear Inc., 83
USPQ2d 1555, 1558 (TTAB 2007) (Board refused to take judicial notice of the
results from Internet search engines and from eBay website).
In addition, applicant requested that the Board take judicial notice of an
article from Forbes magazine submitted for the first time with its brief.2 In
addition to the filing of the article with applicant’s brief being untimely, an article
in a magazine is not common factual information of the type that the Board will
judicially notice. Articles in newspapers and magazines are admissible to show
what was printed, not for the truth of the statements. See In re Viventia Biotech
Inc., 80 USPQ2d 1376, 1379 (TTAB 2006) (use of term in articles shows authors’

2 Applicant’s Brief, pp. 22-23.
Serial No. 85371497

4

belief that term is appropriate way to describe goods and that readers will
understand the meaning of the term); In re Lamb-Weston Inc., 54 USPQ2d 1190,
1192 (TTAB 2000) (use of term in articles, particularly those periodicals with a
general circulation, reflects a perception that the public is familiar with the term
and will readily understand it). Thus, applicant’s request is denied.
In view of the foregoing, we have not considered the evidence attached to
applicant’s brief.
Likelihood of Confusion
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 issue of
likelihood of confusion. 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 Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.

Serial No. 85371497

5

A. The similarity or dissimilarity and nature of the goods.
The mark in the cited registration is registered for a variety of hair care
products while applicant is seeking to register its mark for “haircare [sic]
preparations containing hemp seed oil.” Because registrant’s description of goods is
unrestricted or unlimited as to its ingredients, registrant’s description of goods is
broad enough to encompass applicant’s hair care products containing hemp seed oil.
Thus, registrant’s hair care products and applicant’s hair care products are legally
identical.
B. The similarity or dissimilarity of the established likely-to-continue trade
channels and classes of consumers.

Applicant restricted the channel of trade for its hair care preparations to
distribution primarily through professional hair salons. First, we note that
applicant’s goods are not limited to sales “only” through professional hair salons but
“primarily” through professional hair salons. Thus, applicant’s hair care
preparations may move through any of the appropriate channels of trade.
Second, registrant’s description of goods is not restricted or limited to any
trade channels. Because there are no limitations as to channels of trade or classes
of purchasers in the description of goods in the cited registration, it is presumed
that registrant’s goods move in all channels of trade normal for those goods, and
that they are available to all classes of purchasers for those goods, including
distribution primarily through professional hair salons. See Paula Payne Products
Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co.
Serial No. 85371497

6

v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest
S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Applicant’s arguments and evidence regarding the differences in the channels
of trade is to no avail. In considering the scope of the cited registration, we look to
the registration itself, and not to extrinsic evidence about the registrant’s actual
goods, customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958).
See also In re Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986) (“[I]t is clear
that applicant has restricted its goods to institutional purchasers. However, since
the cited registration is unrestricted as to channels of trade, we must presume that
registrant's coating mix for chicken is also sold to the institutional purchaser.”). We
cannot resort to extrinsic evidence to restrict the registrant’s channels of trade and
classes of consumers absent any such restriction in the registration.
In view of the foregoing, we find that applicant’s goods may move through the
same channels of trade and be sold to the same classes of consumers as registrant’s
hair care products.
C. The strength of the registered mark.
Applicant argues that registrant’s mark NATURAL STRENGTH is a weak
mark that is entitled to a narrow scope of protection. In determining the strength of
a mark, we consider both its inherent strength based on the nature of the mark
itself and its commercial strength, based on the marketplace recognition value of
the mark. See Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899
Serial No. 85371497

7

(TTAB 2006); MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:83
(4th ed. 2013) (“The first enquiry focuses on the inherent potential of the term at
the time of its first use. The second evaluates the actual customer recognition value
of the mark at the time registration is sought or at the time the mark is asserted in
litigation to prevent another's use.”). Market strength is the extent to which the
relevant public recognizes a mark as denoting a single source. Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d at 1899. In other words, it is similar to acquired
distinctiveness.
To support its contention that the registered mark is inherently weak,
applicant submitted the “hit list” from a GOOGLE search engine search for
“’natural strength’ hair products.”3 However, a list of Internet search results, like
that submitted here, generally has little probative value, because such a list does
not show the context in which the term is used on the listed web pages. See In re
Bayer AG, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (deeming
Google® search results that provided very little context of the use of ASPIRINA to
be “of little value in assessing the consumer public perception of the ASPIRINA
mark”); In re Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008)
(finding truncated Google® search results entitled to little probative weight without
additional evidence of how the searched term is used); In re Thomas, 79 USPQ2d
1021, 1026 (TTAB 2006) (rejecting an applicant’s attempt to show weakness of a
term in a mark through citation to a large number of Google® “hits” because the

3 Applicant’s November 30, 2012 response.
Serial No. 85371497

8

“hits” lacked sufficient context). The better practice is to attach copies of the
website pages that show how the term is actually used. Nevertheless, we review
the hit list to glean whatever value we can.
The GOOGLE search engine search results list the following illustrative
entries:
1. Hair Relaxer Ingredients
… Applying a hair relaxer is nothing but weakening the
natural strength of hair by breaking down the bonds.
2. Clear Shampoo and Conditioner, Scalp & Hair Therapy

… The new Clear Hair & Scalp Therapy™ is the shampoo
… 99% of hair’s natural strength & beauty comes from
the scalp.
3. Natural Hair Products

Includes ● Your shampoo’s secrets ● The big names of
natural hair products … oil to moisturize the scalp and
restore the hair’s natural strength and elasticity.
4. Natural Hair Products at ULTA.com – Cosmetics, Fragrance,
Salon …

… Extract with Cocoa and Shea Butters nourish your hair
to replenish its natural strength.
5. Get Strong Hair for Super Strand Strength!
If you want to get strong hair, you need to take great care
of your locks. … nearly 100 percent of hair’s natural
strength (and beauty) comes from taking good care of your
…
This Internet use corroborates the common sense conclusion that the term
“Natural Strength” when used in connection with hair care products is highly
suggestive, if not descriptive, because it describes the innate vitality in a person’s
Serial No. 85371497

9

hair. However, because NATURAL STRENGTH has been registered and is not
subject to a petition for cancellation, the registration is entitled to the presumptions
accorded by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b) (i.e., prima facie
evidence of the validity of the registered mark and of the registration of the mark, of
the ownership of the mark, and of the owner's exclusive right to use the registered
mark in commerce on or in connection with the goods or services specified in the
registration). Thus, the registered mark NATURAL STRENGTH cannot be treated
as merely descriptive; at worst, it must be viewed as highly suggestive. Further,
even if we agreed that NATURAL STRENGTH is an inherently weak mark, that
would not be fatal to finding likelihood of confusion because even weak marks are
entitled to protection against confusion. King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
With respect to marketplace strength, the Trademark Examining Attorney
submitted the search results from the U.S. Patent and Trademark Office X-search
database for the combination of the words “Natural” and “Strength.” Only three
records were retrieved: (1) the cited registration; (2) applicant’s mark; and (3) an
abandoned application.4 Applicant did not submit any evidence showing third-party
use of NATURAL STRENGTH as a mark. Therefore, on this record, registrant is
the only company using NATURAL STRENGTH as a mark for hair care products.
On the other hand, as discussed above, applicant relies on the GOOGLE
search engine results to show that manufacturers of hair care products commonly

4 May 30, 2012 Office action.
Serial No. 85371497

10

use the term NATURAL STRENGTH to describe a feature of their product. This
evidence relates to the inherent strength of the registered mark not the strength it
has acquired, if any, in the market by virtue of registrant’s use.
In view of the foregoing, we find on this record, the term NATURAL
STRENGTH is highly suggestive but that the evidence regarding the commercial
strength of that term is neutral.
D. The degree of care exercised by consumers.
Applicant argues that the purchasers of hair care products are careful and
sophisticated and capable of distinguishing the marks at issue.5 To support its
argument, applicant asserts that “there are numerous popular publications, radio
shows, and television shows dedicated to the beauty business where
recommendations are made and analyses given, undercutting any suggestion that
consumer and sophistication is anything but high.”6 According to applicant’s
counsel, consumers of hair care products “become loyal customers of the same
brands, as products that are used directly on one’s body and that affect one’s
appearance are highly valued and selected with care.”7 Finally, applicant asserts
that further increasing the degree of care exercised consumers is the fact that
applicant’s products are sold “primarily through professional hair salons,” and at
high “price points.”8

5 Applicant’s Brief, p. 22.
6 Applicant’s Brief, p. 22.
7 Applicant’s Brief, p. 22.
8 Applicant’s Brief, p. 23.
Serial No. 85371497

11

As indicated above, we cannot resort to extrinsic evidence regarding trade
channels and price points to analyze the degree of consumer care unless the
relevant restrictions are in reflected in the identification of goods in both the
application and the cited registration. See In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold
to discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration). In this case, registrant’s
identification of goods is not restricted to any particular trade channels and neither
the identification of goods in the application or registration is restricted to any
particular price points.
Further, hair care products are sold to virtually everyone and, therefore, the
relevant consumer is an ordinary consumer; specifically actual and potential
consumers that could encounter both marks. See Electronic Design & Sales, Inc., v
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1390 (Fed. Cir.
1992) (“If likelihood of confusion exists, it must be based on the confusion of some
relevant person….”). With such a wide range of potential and actual consumers, not
all of the consumers can reasonably be expected to exercise the same high degree of
care as applicant contends. In re Pierce Foods Corp., 230 USPQ at 309.
In this regard, Amazon.com is selling applicant’s products ALTERNA HEMP
NATURAL STRENGTH PASTE, 2 ounce jar, for $19.959 Further, applicant
submitted information advertising REVLON ColorSilk at home coloring formula for

9 December 12, 2012 Office action.
Serial No. 85371497

12

$4, Paul Mitchell color shampoo for $8, and John Frieda Sheer Blonde shampoo for
$9.10 “[T]he average purchaser, at least of low-cost shelf goods as those involved
here, is unlikely to perceive specific details of a mark.” B.V.D Licensing Corp. v.
Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719, 1722 (Fed. Cir. 1988) (Nies,
J., dissenting), citing Colgate-Palmolive Co. v. Purex Corp., 451 F.2d 1401, 172
USPQ 176, 176 (CCPA 1971).
Applicant relies on Faberge, Inc. v. Dr. Babor GmbH & Co., 219 USPQ 848,
851 (TTAB 1983) for the proposition “that most purchasers of cosmetics, which are
to be used for cleanliness and the enhancement of one’s appearance, are aware of
the products in this line which they prefer and the companies from which those
products emanate.” However, the Board was not making a per se rule that all
consumers of cosmetics exercise a high degree of care when making a purchase. In
Faberge, the Board held that when the marks were as different as the familiar word
BABE and the unfamiliar term BABOR, consumers would exercise enough care to
distinguish between those two marks. Also, even a consumer exercising a high
degree of care may not necessarily distinguish between two marks as close as
HEMP NATURAL SELECTION (stylized) and NATURAL SELECTION.
In view of the foregoing, we find that the degree of consumer care is a neutral
factor.

10 May 8, 2012 response.
Serial No. 85371497

13

E. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, meaning and commercial impression.

We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, any one of these
means of comparison may be critical in finding the marks to be similar. In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d
1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that where, as
here, the goods are legally identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Further, 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 impression so that
confusion as to the source of the goods offered under the respective marks is likely
to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average customer, who retains
Serial No. 85371497

14

a general rather than specific impression of the marks. Winnebago Industries, Inc.
v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the goods at issue are hair
care products, we are dealing with consumer goods sold to ordinary consumers.
The mark NATURAL STRENGTH is registered as a standard character
mark. Marks presented in standard characters are not limited to any particular
depiction. The rights associated with a mark in standard characters reside in the
wording and not in any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445,
1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988).11 See also Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1259 (Fed. Cir. 2011) (“If the registrant complies with Section 2.52 of
the Rules of Practice in Trademark Cases and obtains a standard character mark
without claim to ‘any particular font style, size or color,’ the registrant is entitled to
depictions of the standard character mark regardless of font style, size, or color, not
merely ‘reasonable manners’ of depicting its standard character mark.”).
Accordingly, the registered mark could be displayed on registrant’s hair care
products as set forth below.
NATURAL
S T R E N G T H

11 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to
replace the term “typed” drawing with “standard character” drawing. A mark depicted as a
typed drawing is the legal equivalent of a standard character mark.
Serial No. 85371497

15

In fact, registrant could display the mark in connection with the primary
ingredient in its hair care products much in the same manner as applicant. For
example,
ALOE NATURAL
S T R E N G T H
The Trademark Examining Attorney submitted third-party registrations
from the USPTO electronic database, shown below, for multiple registrations by
hair care product companies, many of them adding descriptive terms to the brand
name.
Reg. No. Mark Reg. No. Mark

1451642 RUSK 3230549 RUSK DEFINE

3472146 RUSK THERMAL12

2206801 NICK CHAVEZ 3732073 NICK CHAVEZ DIVA

2461379 TERAX 2461378 TERAX ORIGINAL CREMA13

2067782 ALTERNA 462277 ALTERNA STYLIST14

1264633 CARE FREE CURL15 1529201 CARE FREE CURL GOLD16

12 Registrant disclaimed the exclusive right to use the word “Thermal.”
13 Registrant disclaimed the exclusive right to use the word “Original.”
14 The ALTERNA registrations are owned by applicant. Applicant disclaimed the exclusive
right to use the word “Stylist.”
15 Registrant disclaimed the exclusive right to use the word “Curl.”
16 Registrant disclaimed the exclusive right to use the word “Curl.”
Serial No. 85371497

16

Reg. No. Mark Reg. No. Mark

2712773 BLOW SERUM17 3829092 BLOW SCULPT

2792209 BLOW SILK

4100450 CHI 3966294 CHI MAN18

3775450 EVERPURE 3778967 EVERPURE SULFATE –
FREE
COLOR CARE SYSTEM19

The Trademark Examining Attorney argued that these third-party
registrations are “evidence that purchasers are accustomed to viewing the same
trademark in various stylizations and as well as multiple usages of the trademark
including being used in conjunction with descriptive wording. Thus purchasers are
accustomed to viewing the same/similar marks coming from the same source.”20
However, the third-party registrations are not evidence of use. Absent evidence of
actual use, third-party registrations have little probative value because they are not
evidence that the marks are in use on a commercial scale or that the public has
become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934
(TTAB 2011). Nevertheless, these registrations may have some probative value to

17 Registrant disclaimed the exclusive right to use the word “Serum.”
18 Registrant disclaimed the exclusive right to use the word “Man.”
19 Registrant disclaimed the exclusive right to use the term “Sulfate – Free Color Care
System.”
20 December 20, 2012 Office action.
Serial N

the exte
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702 (TTAB
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Serial No. 85371497

19

Finally, applicant’s mark encompasses registrant’s entire mark. Applicant
has chosen as its mark the same term already registered by registrant and simply
added the descriptive word “Hemp” to it, albeit in extremely large lettering.
Prospective purchasers do not necessarily know or care which business made its
reputation selling “Hemp” hair care products. However, because we must presume
that NATURAL STRENGTH is inherently distinctive, we find that purchasers
would assume that when “Natural Strength” appears on two identical products they
both come from the same source. Where the marks are otherwise the same, the
addition of a descriptive word, as in this case, is more likely to add to the likelihood
of confusion than to distinguish the marks. Trademarks are intended to designate a
single, albeit an anonymous source. It is likely that the products sold under these
marks would be attributed to the same source and that purchasers would
mistakenly assume that applicant’s products were a “Hemp” line of products sold by
registrant.
The fact that applicant’s mark includes the large descriptive word “Hemp”
does not conclusively establish that the marks are not similar. Indeed, when trade
names and house marks have been added to otherwise identical terms, it has often
been said that likelihood of confusion will not be avoided, such addition being, in
actuality, an aggravation rather than a justification. See In re West Point-Pepperell,
Inc., 468 F.2d 200, 175 USPQ 558, 559 (CCPA, 1972) (the addition of the trade
name will make consumers think that the products have a common origin of that
the companies merged); In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB
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1986). This is not an inflexible rule. Rather, in each case consideration must be
given to “… the effect of the entire mark including any term in addition to that
which closely resembles the opposing mark.” Rockwood Chocolate Co., Inc. v.
Hoffman Candy Company, 372 F.2d 552, 152 USPQ 599, 601 (CCPA, 1967). Thus
where a party is seeking to register a composite mark consisting of a product mark
in association with a house mark or trade name and/or other material, and
registration is refused on the basis of a previously used or registered mark alleged
to be similar to the product mark, the addition of the house mark or trade name
and/or other material has been deemed sufficient to render the marks as a whole
distinguishable in cases where there are recognizable differences in the assertedly
conflicting product marks themselves, or where the product marks in question are
highly suggestive or merely descriptive or play upon commonly used or registered
terms. See In re Champion International Corporation, 196 USPQ 48, 49 (TTAB
1977); In re C. F. Hathaway Company, 190 USPQ 343, 344 (TTAB 1976).
In this case, however, applicant did not add a house mark or trade name to
the common term; rather applicant added a descriptive term to the identical
product mark. Moreover, it is readily apparent that the term “NATURAL
STRENGTH,” which constitutes registrant’s entire mark, is the source identifying
feature of applicant’s mark because “Hemp” is descriptive of the ingredients in
applicant’s products. Compare In re S. D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984)
(“designers/fabric” for retail store services in the field of fabrics, wall hangings,
buttons and accessories is not likely to cause confusion with DAN RIVER
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DESIGNER FABRICS for textile fabrics); In re Merchandising Motivation, Inc., 184
USPQ 364, 365 (TTAB 1974) (MMI MENSWEAR for fashion consulting for men not
confusingly similar to MEN'S WEAR for a semi-monthly magazine because
MENSWEAR is merely descriptive of applicant's services and MMI is the source
identifying portion of applicant's mark).
In the application before us, applicant has appropriated registrant’s whole
mark without adding thereto other matter sufficient to create a mark which,
considered in its entirety, so differs from registrant’s mark as to preclude the
likelihood that the contemporaneous use of these marks by applicant and registrant
in connection with their identical products will cause confusion or mistake among
purchasers. See In re El Torito Restaurants, Inc., 9 USPQ2d 2002 (TTAB 1988)
(applicant’s mark MACHO COMBOS consists of registrant's entire mark MACHO,
to which a descriptive (and disclaimed) word COMBOS has been added; the goods
are closely related; and, therefore, applicant’s mark so resembles the mark in the
cited registration as to be likely to cause confusion). In other words, one may not
appropriate the entire mark of another and avoid a likelihood of confusion by
adding descriptive matter thereto. In re Jump Designs LLC, 80 USPQ2d 1370, 1375
(TTAB 2006) (JUMP DESIGNS for furniture, including desks, is likely to cause
confusion with JUMP for desk accessories); In re Equitable Bancorporation, 229
USPQ 709 (TTAB 1986) (RESPONSE for banking services so resembles
RESPONSE CARD for banking services rendered through 24 hour teller machines
as to be likely to cause confusion); In re Corning Glass Works, 229 USPQ 65 (TTAB
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1985) (CONFIRM for a buffered solution equilibrated to yield predetermined
dissolved gas values in a blood gas analyzer so resembles CONFIRMCELLS for
diagnostic blood reagents for laboratory use, where the relevant purchasers would
treat the word “cells” as merely descriptive, is likely to cause confusion). See also
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA
1977) (“And inclusion of a merely suggestive or descriptive element, of course, is of
much less significance in avoiding a likelihood of confusion.”).
In view of the foregoing, we find that when we consider the marks in their
entireties, the similarities outweigh the dissimilarities.
F. Balancing the factors.
In view of the facts that the marks are similar, the goods are legally identical
and the presumption that the goods travel in the same channels of trade and are
sold to the same classes of consumers, we find that applicant’s mark HEMP
NATURAL STRENGTH (stylized) for hair care preparations containing hemp seed
oil distributed primarily through professional hair salons is likely to cause
confusion with NATURAL STRENGTH for hair care products.
To the extent that any of applicant's evidence or arguments raise a doubt
about likelihood of confusion, that doubt is required to be resolved in favor of the
prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.