Aura Vitamins LLC

Trademark Trial and Appeal Board

Dec 17, 2020

88489961 (T.T.A.B. Dec. 17, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Aura Vitamins LLC
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Serial No. 88489961
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Reine Rooney of Reine Rooney LLC,
for Aura Vitamins LLC.
Rudy R. Singleton, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Cataldo, Adlin, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Aura Vitamins LLC (Applicant) seeks registration on the Principal Register of the
mark DERMAWONDER SKINPERFECTA (standard characters) for “Full body
silicone based water resistant high density pigmentation and concealer for different
skin tones” in International Class 3.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied

1 Application Serial No. 88489961 filed June 26, 2019, based upon Applicant’s allegation of
January 1, 2019 as its dates of first use anywhere and in commerce.
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to the goods identified in the application, so resembles the registered mark
DERMAWONDER (standard characters) for “Hand-operated beauty tools, namely,
microneedle derma rollers, jade rollers in the nature of massage apparatus, ice rollers
in the nature of massage apparatus, and facial massager rollers in the nature of
massage apparatus,” on the Principal Register, as to be likely to cause confusion, to
cause mistake, or to deceive.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. DuPont 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, 1203 (Fed. Cir. 2003). We must consider each relevant DuPont factor
for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376,
129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis,
two key considerations are the similarities between the marks and the similarities

2 Registration No. 5798885 issued July 9, 2019.
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between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
A. Similarity or Dissimilarity of the Marks
We consider the similarity or dissimilarity of the marks DERMAWONDER
SKINPERFECTA and DERMAWONDER in their entireties as to appearance, sound,
connotation, and commercial impression. See Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB
2018), aff’d mem., (No. 18–2236) (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014)).
The registered mark DERMAWONDER is a fanciful term which does not appear
in the dictionary. We take judicial notice of the meaning of the component terms
DERMA and WONDER:3
derm- combining form
variants: or derma- or dermo-
:skin

wonder noun
: a cause of astonishment or admiration: MARVEL

3 Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-
webster.com/dictionary/derm. Accessed 14 Dec. 2020. The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016).
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The combined term is an invention which, when applied to beauty tools, suggests
an admirable result on the appearance of the user’s skin. Invented, or fanciful, terms
warrant a wide scope of protection. See Nautilus Grp., Inc. v. Icon Health & Fitness,
Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1181 (Fed. Cir. 2004) (defining a fanciful mark
as “a non-dictionary word concocted by the trademark holder for its product” and
observing that such marks are typically strong); Mishawaka Rubber & Woolen Mfg.
Co. v. Bata Narodni Podnik, 222 F.2d 279, 105 USPQ 432, 437 (CCPA 1955) (“A
strong and fanciful mark is entitled to broad protection.”); Inter IKEA Sys. B.V. v.
Akea, LLC, 110 USPQ2d 1734, 1740 n.18 (TTAB 2014) (“Whether AKEA is a coined
term or a Sardinian greeting, it is an inherently strong mark.”).
Applicant’s mark DERMAWONDER SKINPERFECTA wholly incorporates the
arbitrary registered mark. Because they share the identical term DERMAWONDER,
the parties’ marks are similar in commercial impression, appearance and
pronunciation as to this term. While the parties’ goods differ, because both are used
on the skin, the connotation of the common term DERMAWONDER does not change.
Compare Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (“Opposer’s COACH mark, when applied to fashion
accessories is clearly either arbitrary or suggestive of carriage or travel
accommodations [e.g., stagecoach, train, motor coach, etc.] thereby engendering the
commercial impression of a traveling bag [e.g., a coach or carriage bag]. On the other
hand, applicant’s COACH marks call to mind a tutor who prepares a student for an
examination.”).
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In addition, the registered mark DERMAWONDER is the first word of Applicant’s
mark DERMAWONDER SKINPERFECTA, and both marks beginning with the same
term increases their similarity. See In re Detroit Athletic Co., 903 F3d 1297, 128
USPQ2d 1047, 1049 (Fed. Cir. 2018) (“The identity of the marks’ initial two words is
particularly significant because consumers typically notice those words first.”); Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark).
While there is no rule that likelihood of confusion automatically applies where one
mark encompasses another, the fact that the entire cited mark is incorporated in
Applicant’s mark increases the similarity between the two. See Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014) (affirming TTAB’s finding that because applicant’s mark STONE LION
CAPITAL incorporated the entirety of the registered marks LION CAPITAL and
LION, and the noun LION was the dominant part of both parties’ marks, confusion
was likely); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES);
Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s
mark EBONY DRUM for hairdressing and conditioner is likely to cause confusion
with EBONY for cosmetics).
With respect to Applicant’s addition of the term SKINPERFECTA to the
registered DERMAWONDER mark, we find that the term SKINPERFECTA is a
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coined term, but one with a suggestive connotation closely related to that of
DERMAWONDER: both DERMAWONDER and SKINPERFECTA connote
producing a wonderful or perfect result on the appearance of the user’s skin. See In
re Pierre Fabre S.A., 188 USPQ 691, 692 (TTAB 1975) (“Insofar as the marks are
concerned, applicant’s mark ‘PEDI-RELAX’ incorporates the registered mark
‘RELAX’ in its entirety, and the addition thereto of the term ‘PEDI’, which
immediately suggests feet and thereby the fact that applicant’s product is a foot
deodorant lotion or cream, is insufficient to distinguish applicant’s mark as a whole
from the registered mark and to avoid confusion in trade.”).
In sum, we do not find that the addition of the term SKINPERFECTA to the
applied-for mark creates a separate commercial impression from that of the
registered mark DERMAWONDER. To the contrary, some consumers could view it
as a slogan or tagline added by Registrant to its DERMAWONDER mark. We find
that the appearance, sound, meaning, and overall commercial impression of the
marks DERMAWONDER and DERMAWONDER SKINPERFECTA are similar, and
this factor weighs in favor of finding confusion likely.
B. Similarity or Dissimilarity of the Goods and Channels of Trade
We turn to the DuPont factors regarding the similarity or dissimilarity of the
respective goods and channels of trade. We must consider the goods as they are
identified in the application and registration. Octocom Sys., Inc. v. Hous. Computs.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The issue is not
whether the goods will be confused with each other, but rather whether the public
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will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 1329,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different
from, and thus not related to, one another in kind, the same goods can be related in
the mind of the consuming public as to the origin of the goods.”).
It is sufficient that the goods of the applicant and the registrant are related in
some manner or that the conditions surrounding their marketing are such that they
are likely to be encountered by the same persons under circumstances that, because
of the marks used in connection therewith, would lead to the mistaken belief that
they originate from the same source. See On-line Careline Inc. v. Am. Online Inc., 229
F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000) (“[A]lthough the services are
different, it is reasonable to believe that the general public would likely assume that
the origin of the services are the same”). Goods that are “used in combination” are
complementary, and “complementary use has long been recognized as a relevant
consideration in determining a likelihood of confusion.” In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). “Merely because
goods can be used together is not a sufficient basis on which to find them to be
complementary. Rather, there must be some showing that customers would seek out
both types of goods for the same purpose, for example, making an outfit by matching
shoes and clothing, or making a sandwich by combining bread and cheese, to show
that the goods are complementary.” N. Face Apparel Corp. v. Sanyang Indus. Co., 116
USPQ2d 1217, 1232 (TTAB 2015).
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Here, Applicant initially described its goods as “cosmetics and makeup,” and later
restricted its goods to “full body silicone based water resistant high density
pigmentation and concealer for different skin tones.”4 Applicant contends that the
differences between the parties’ goods preclude confusion, stating “Body foundation
is distinct from hand-operated beauty devices, such that it is unlikely that any
consumer would confuse the source of the goods.5 We find that customers would seek
out both Applicant’s goods and the registered goods, “hand-operated beauty tools,
namely, microneedle derma rollers, jade rollers in the nature of massage apparatus,
ice rollers in the nature of massage apparatus, and facial massager rollers in the
nature of massage apparatus” to improve the appearance of their skin. Applicant’s
brief specifies that its body foundation cosmetic “works to blur imperfections, enhance
skin tone, and provide a flawless finish.”6 Applicant submitted advertisements of the
registered goods which make clear that the goods also improve skin appearance, and

4 June 26, 2019 application; May 14, 2020 request for reconsideration. Because Applicant did
not introduce any evidence that the amended goods are less related to the registered beauty
tools or travel in different channels of trade than cosmetics and makeup, this amendment
does not affect our analysis. See Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110
USPQ2d 1182, 1190-93 (TTAB 2014) (finding that although opposer’s clothing items were
limited by the wording “college imprinted” and the applicant’s identical or highly similar
items were limited by the wording “professional baseball imprinted,” these restrictions did
not distinguish the goods, their trade channels, or their relevant consumers in any
meaningful way).
5 4 TTABVUE 9. Applicant submitted with its appeal brief new evidence from the parties’
websites with more details regarding the differences between the products. 4 TTABVUE 14-
29. Because the Examining Attorney did not object to the evidence, but discussed it in his
brief (6 TTABVUE 13), we will treat the evidence as part of the record. See In re Olin Corp.,
124 USPQ2d 1327, 1335 n.22 (TTAB 2017); In re Sadoru Group Ltd., 105 USPQ2d 1484,
1485, 1489 n.6 (TTAB 2012); TBMP 1207.03 (2020).
6 4 TTABVUE 9.
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may be used in combination with “your favorite anti-aging topical products,” a
description that includes cosmetics such as Applicant’s goods.7

Figure 1 Website excerpt with ad for registered goods8
In addition to the evidence that Registrant’s goods could be used with Applicant’s
goods to improve the appearance of skin, the record evidence includes advertisements
for: (i) Herbivore “jade rollers” for use to “reduce the appearance of puffiness and
wrinkles” because the roller “helps firm the skin through gentle massage,” with a
recommendation to “use it with a topical “Herbivore Emerald Hemp Seed Deep
Moisture Glow oil” from the same source;9 (ii) Linduray Derma Roller Microneedle
Cosmetic Tool Kit, with the description “Our roller not only helps exfoliate your skin
but also helps increase the absorption of almost any skincare topical you choose to
use with it. Get the most out of your serums, creams, and oils by using our derma

7 We take judicial notice that the adjective “cosmetic” is defined as “of, relating to, or making
for beauty especially of the complexion : BEAUTIFYING” and the noun “cosmetic” is defined
as “something that is cosmetic: such as :a cosmetic preparation for external use.” Merriam-
Webster.com Dictionary, Merriam-Webster, https://www.merriam-
webster.com/dictionary/cosmetic. Accessed 15 Dec. 2020.
8 May 14, 2020 request for reconsideration, TSDR 5.
9 August 16,, 2019 Office Action, TSDR 9.
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roller;”10 and (iii) Sdara Rose Quartz Roller Massager which asserts that “our rose
quartz roller massages serums and moisturizers into the skin more deeply and slowly,
helping to boost their effectiveness.”11
This use of goods together in a complementary way toward a common purpose has
been found to be a sufficient relationship for purposes of finding a likelihood of
confusion. Octocom Sys., 16 USPQ2d at 1788 (modems and computer programs are
commonly used together in networking); In re Ox Paperboard, LLC, 2020 USPQ2d
10878, *5 (TTAB 2020) (paper tubes and cores, paperboards used for protective
packaging; and recycled paperboard complementary to corrugated containers and
plastic and wooden containers for transportation of goods for commercial and
industrial use because the goods are “used and sold together in packaging products
for shipment”). See also In re Pierre Fabre S.A., 188 USPQ at 692 (“cosmetic
preparations, namely cremes and lotions for the feet having skin softening,
antiperspirant deodorant and skin soothing properties held likely to be confused with
antiperspirant and deodorant; fact that products are different and intended for
different areas of the body held not persuasive in view of the close relationship of the
toiletries which would be sold through the same channels of trade and purchased by
the same class of purchasers.”).

10 March 6, 2010 Office Action, TSDR 5. This roller also addresses “hyperpigmentation,”
serving the same customer who purchases Applicant’s “pigmentation and concealer for
different skin tones.” Id. at TSDR 8.
11 March 6, 2010 Office Action, TSDR 26.
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Like our analysis of the similarity or dissimilarity of the goods, we assess
similarities in the channels of trade based on the identifications of goods in the
application and the cited registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014). In this case,
neither Applicant nor the Registrant included any limitations to their trade channels.
The record includes advertisements for stores offering topical skin products such as
cosmetics, and jade rollers or derma rollers recommended for use with topical skin
products (Sephora, GOOP, Amazon Beauty and Personal Care).12
With respect to channels of trade, Applicant contends that goods merely being sold
in the same broad industry is an insufficient relationship for likelihood of confusion.13
See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB
2010) (“a finding that the goods are similar is not based on whether a general term
or overarching relationship can be found to encompass them both.”) (citing Harvey
Hubbell Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975)); In re W.W.
Henry Co., 82 USPQ2d 1213, 1215 (TTAB 2007) (“to demonstrate that goods are
related, it is not sufficient that a particular term may be found which may broadly
describe the goods”). We agree with this point, but find it inapplicable here. The
record shows that the goods involved here are not unrelated within a large industry,
and it would not be unlikely for a consumer to encounter them both. Instead, the
record shows that cosmetics like body foundation and various massage rollers are

12 August 16, 2019 Office Action, TSDR 9-14 (Sephora); 15-21 (Goop); March 6, 2020 Office
Action TSDR 5-51 (Amazon Beauty and Personal Care).
13 4 TTABVUE 10.
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used to improve skin appearance, and are available to the same end consumers
interested in improving the appearance of their skin, through some of the same
channels of commerce, namely stores that offer cosmetics and beauty tools.
Sometimes they are explicitly intended to be used together by the same consumers.
We find that the similarity of the respective goods and channels of trade weigh in
favor of finding a likelihood of confusion.
C. Sales Conditions
The fourth DuPont factor considers “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. While Applicant contends that “[c]onsumers will be careful and
deliberate when reviewing their options for beauty products, as they are concerned
about how the goods may affect their appearance,”14 Applicant has presented no
evidence on this point except the website evidence showing that at least some of the
registered products are available for less than $20 each. This is not a price point that
precludes an impulse buy. Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to
impulse buying, the risk of likelihood of confusion is increased ….”); Kimberly–Clark
Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985)
(“Purchasers of relatively inexpensive and frequently replaceable products “have long
been held to a lesser standard of purchasing care.”). We find this factor to be neutrral.

14 4 TTABVUE 11-12.
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Conclusion
In conclusion, we have considered all of the arguments and evidence of record, and
all relevant DuPont factors. We find that Applicant’s mark DERMAWONDER
SKINPERFECTA shares visual and aural similarities with, and conveys the same
meaning and commercial impression as, the registered mark DERMAWONDER; that
the “full body silicone based water resistant high density pigmentation and concealer
for different skin tones” in Applicant’s identification of goods are complementary to,
and sold in the same channels of trade as, Registrant’s “Hand-operated beauty tools,
namely, microneedle derma rollers, jade rollers in the nature of massage apparatus,
ice rollers in the nature of massage apparatus, and facial massager rollers in the
nature of massage apparatus;” and that based on the unrestricted identifications of
goods in both the application and cited registration, the goods may be encountered by
the same purchasers of skincare products.
Insofar as the DuPont factors discussed above either are neutral or weigh in favor
of finding a likelihood of confusion, we conclude that confusion is likely to occur
between Applicant’s DERMAWONDER SKINPERFECTA mark for its goods and
Registrant’s DERMAWONDER mark for its goods.
II. Decision
The refusal to register Applicant’s mark DERMAWONDER SKINPERFECTA is
affirmed.