AvonProducts, Inc.

Trademark Trial and Appeal Board

Jun 15, 2006

No. 78461231 (T.T.A.B. Jun. 15, 2006)

Mailed:
15 June 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Avon Products, Inc.
________

Serial No. 78461231
_______

Michelle M. Graham of Kelley Drye & Warren LLP for Avon
Products, Inc.

Timothy J. Finnegan, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Bucher, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 3, 2004, Avon Products, Inc. (applicant)
applied to register the mark HEALTHY BOOST (in standard
character form) on the Principal Register for “skin
moisturizing lotion” in Class 3.1 The examining attorney
has refused to register applicant’s mark under Section 2(d)
of the Trademark Act (15 U.S.C. § 1052(d)) because of a

1 Serial No. 78461231. The application is based on applicant’s
allegation of a bona fide intention to use the mark in commerce.
The application has been amended to include a disclaimer of the
word “Healthy.”
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78461231
2
registration (No. 2,380,248 issued August 29, 2000) for the
mark BOOST, in typed or standard character form, for “skin
care preparations, namely, sun tanning lotions, creams and
oils” in Class 3.
Before we discuss the merits of the case, we must
first address some procedural and evidentiary issues. On
March 9, 2005, the examining attorney issued a first Office
action by email indicating that a search of the Office
records did not reveal any similar registered or pending
mark that would bar registration. The Office action then
required applicant to disclaim the term “Healthy.” The
Office action set a six-month response date. Two days
later, on March 11, 2005, the examining attorney sent a
second Office action with another six-month response date.
This Office action began by advising applicant that the
“examining attorney refuses registration” because
applicant’s mark resembles Registration No. 2,380,238. The
second Office action did not address the disclaimer
requirement or mention the first Office action or the
response period associated with that Office action.
On March 18, 2005, applicant responded by providing a
disclaimer of the term “Healthy,” but it did not address
the likelihood of confusion issue. On April 13, 2005, the
examining attorney acknowledged the disclaimer of the term
Ser No. 78461231
3
“Healthy” and made the refusal to register under Section
2(d) a final refusal and noted that applicant did not
respond to the likelihood of confusion refusal.
On October 21, 2005, applicant filed an appeal brief
(pp. 2-3 (citations to record omitted)) in which it
complained:
Two days later, on March 11, 2005, the Examiner issued
a second Office Action via e-mail which contained no
introductory, explanatory or other clause which would
call attention to the fact that he belatedly raised a
Section 2(d) refusal.

Because the examiner sent the March 11th Office Action
so quickly after sending the March 9th Office Action,
and there was no header or other device on the e-mail
containing the March 11th Office Action to necessarily
alert Applicant as to the existence of the newly
raised Section 2(d) refusal, Applicant reasonably
believed the March 11th Office Action to be merely a
duplicate of the March 9th Office Action…

However, on April 13, 2005, the Examiner issued yet
another Office Action, making the Section 2(d) refusal
final, although Applicant had not even had an
opportunity to present argument in response to the
initial 2(d) refusal.2

The examining attorney responded by arguing that he
“issued a corrective action two days after sending the
first action in which he clearly explained why the Section

2 Applicant’s brief included as an attachment a declaration of
its “Assistant Manager – Trademarks” that supported the factual
statements made in the brief regarding the receipt of the Office
actions.
Ser No. 78461231
4
2(d) refusal was necessary.” Brief at 3 n.1 (emphasis in
original).3
In its appeal brief, applicant then set out for the
first time a list of registrations that it owned that
contained the words BOOST or BOOSTER with some relevant
information and a list of third-party registrations that
contain the word BOOST. The examining attorney “objects to
the applicant’s reference to third party registrations with
its appeal brief, which were never properly made of
record.” Brief at 1. In its Reply Brief, applicant
provided copies of these registrations and argues that
“because of the Examiner’s own belated issuance of a
Section 2(d) objection, and the resulting confusion
stemming therefrom, Applicant never had a chance to respond
to that objection or to introduce evidence of third-party
registrations in support of its argument as its time to
respond to the Examiner’s follow-up office action was cut
off by the issuance of the final refusal.” Reply Brief at
3.4 As an alternative, applicant in its Reply Brief at 1-2

3 We clarify the examining attorney’s statement by noting that
the second Office action contained standard language that
accompanies a likelihood of confusion refusal. As we indicated
earlier, it did not address the fact that there was another
outstanding Office action at the time of the issuance of the
second Office action.
4 Applicant does not explain why it did not file a request for
reconsideration in which it could have submitted evidence for the
first time. TBMP § 1204 (2d ed. rev. 2004) (“During the period
Ser No. 78461231
5
requests the application be remanded to introduce “evidence
of third-party registrations and other evidence into the
prosecution record and seek to amend the description of
goods associated with the instant application.”5
Because of the issuance of two seemingly independent
Office actions two days apart, applicant had two different
response periods. Also, we cannot discount applicant’s
argument that it assumed that the second Office action was
simply an inadvertent duplicate of the first Office action.
The Trademark Manual of Examining Procedure sets forth the
proper procedure for issuing a supplemental Office action:
If the examining attorney issues a supplemental Office
action, a new six-month response period will begin
running from the mailing date of the supplemental
action. 15 U.S.C. § 1062(b). In a supplemental
Office action, the examining attorney should indicate
that the action is supplemental to the previous
action, and should incorporate all outstanding issues
by reference to the previous action. The examining
attorney should also include the standard six-month
response clause.

TMEP § 711.02 (4th ed. rev. April 2005).

As a result of the confusion created during the
prosecution of the application, we now address the issue of

between issuance of a final action and expiration of the time for
filing an appeal therefrom, an applicant may file a request for
reconsideration, with or without an amendment and/or new
evidence”).
5 To the extent that applicant in its reply brief seeks a remand
to amend its identification of goods, it has not shown good cause
for a remand at this late date. TBMP § 1209.04 (2d ed. rev.
2004).
Ser No. 78461231
6
what evidence is before us. First, applicant has submitted
evidence that consists of other registrations that it owns.
The examining attorney has limited his objection to “third
party registrations.” Brief at 1. Inasmuch as the
examining attorney has mentioned applicant’s evidence in
its brief, but limited his objection to only some of
applicant’s evidence, we deem that any objection to
applicant’s own registrations has been waived. Accord TBMP
1207.03 (2d ed. rev. 2004). Furthermore, we note that
there is no requirement for an applicant to submit copies
of its own registrations before they can be considered by
the Office. See, e.g., TMEP § 812 (“The rule does not
precisely define when an applicant should claim ownership
of prior registration(s), and the examining attorney may
exercise discretion in invoking the rule… The information
does not have to be given in any specific form) and
§ 812.01 (“If an applicant includes a claim of ownership of
a prior registration in the application as filed, the
examining attorney should accept the claim without further
proof of ownership…”). See also 37 CFR § 2.36. Therefore,
we will consider applicant’s information regarding its
ownership of other registrations.6 These registrations

6 The examining attorney will need to determine if this
information will be marked for printing.
Ser No. 78461231
7
include No. 2,855,169 (BOOST ME UP for facial skin cream),
No. 2,674,839 (MULTI-BOOST for facial moisturizing cream),
No. 2,809,298 (DETOXIFYING BOOSTER, “Detoxifying”
disclaimed, for facial skin lotion and cream and facial
skin toner); No. 2,641,099 (SOOTHING BOOSTER for facial
skin lotion and facial toner); No. 2,738,942 (RETEXTURIZING
BOOSTER, “Retexturizing” disclaimed, for facial skin lotion
and cream and facial skin toner), No. 2,720,075 (HYDRATING
BOOSTER, “Hydrating” disclaimed, for facial skin lotion and
cream and facial skin lotion), and No. 2,644,600
(EQUALIZING BOOSTER for skin lotion and facial skin toner).
Regarding the information concerning third-party
registrations included in applicant’s opening brief, we
overrule the examining attorney’s objection. While
applicant could have taken other steps to submit the
evidence including filing a request for reconsideration, in
order to make it clear that applicant had at least one
opportunity to submit evidence in response to the initial
likelihood of confusion refusal, we will consider the
information submitted in the brief. We add that “third
party registrations are of use only if they tend to
demonstrate that a mark or a portion thereof is suggestive
or descriptive of certain goods and hence is entitled to a
narrow scope of protection,” In re J.M. Originals Inc., 6
Ser No. 78461231
8
USPQ2d 1393, 1394 (TTAB 1987). Regarding the “strength of
a mark, however, registration evidence may not be given any
weight.” Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (emphasis in
original).7
Having resolved these initial issues, we now address
the main issue in this appeal, the likelihood of confusion.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We first look at the marks at issue in this case to
determine their similarities and dissimilarities of the

7 We will not, however, consider the copies of the registrations
that applicant did not submit until its reply brief.
Ser No. 78461231
9
marks in the application and registration. Both marks are
in typed or standard character form. Applicant’s mark is
HEALTHY BOOST and the cited registration is for the mark
BOOST. The marks are similar to the extent that both marks
contain the same word BOOST and they differ because
applicant adds the disclaimed word HEALTHY to its mark.
Regarding the term “Boost,” we add that the term is defined
as “to increase; raise.” The Random House Dictionary of
the English Language (unabridged) (2d ed. 1987).8 The term
when applied to sun tanning lotion and skin moisturizing
lotion would have a suggestive connotation to the extent
that it suggests that products will provide increased
efficiency concerning sun tanning and moisturizing
protection. Indeed, one of the third-party registrations
disclaims the word “Boost,” which would indicate that the
term may have a descriptive meaning. See Reg. No.
3,005,995 (BLOW OUT THERMAL BODY BOOST, “Body Boost”
disclaimed, for hair care products, namely, lotions).
Next, we must consider whether the goods of the
parties are related. Applicant’s goods are skin
moisturizing lotions and registrant’s goods are sun tanning

8 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 78461231
10
lotions, creams and oils. The examining attorney cites to
Royal Hawaiian Perfumes, Ltd. v. Diamond Head Products of
Hawaii, Inc. as support for his argument that the goods are
related. 204 USPQ 144 (TTAB 1979). In that case, the
board did find that suntan preparations and cosmetic skin
lotions were closely related. The board further concluded
that the marks HULA TAN and HULA HAND, when used on these
goods, were confusingly similar. We note that in that
case, the word HULA “has no obvious meaning as applied to
the respective goods of the parties.” Id. at 148. The
same cannot be said for the marks in this case, in which
the term “BOOST” is suggestive when applied to the goods.
Furthermore, we have no other evidence in this case showing
that the goods are closely related.
Based on a comparison of the marks, the differences in
the goods, and the limited record we have in this case, we
conclude that there is no likelihood of confusion here.
See Champagne Louis Roederer S.A. v. Delicato Vineyards,
148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998)
(“CRISTAL and CRYSTAL CREEK evoke very different images in
the minds of relevant consumers”). While it is possible
that some consumers may believe that there is an
association between the marks, the “statute refers to
likelihood, not the mere possibility, of confusion.”
Ser No. 78461231
11
Bongrain International (American) Corp. v. Delice de
France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir.
1987).
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is reversed.