BCS Business Consulting Services Pte Ltd.

Trademark Trial and Appeal Board

Sep 4, 2013

No. 85336672re (T.T.A.B. Sep. 4, 2013)

Mailed:
September 4, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
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In re BCS Business Consulting Services Pte Ltd.
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Serial No. 85336672
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Request for Reconsideration
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Tracey Harrach and Krista Weber Powell of TraskBritt, PC for BCS Business
Consulting Services Pte Ltd.

Tamara Frazier, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
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Before Kuhlke, Kuczma and Adlin, Administrative Trademark Judges.
Opinion by Kuczma, Administrative Trademark Judge:
On June 27, 2013, applicant filed a request for reconsideration of the
Board’s decision issued on May 31, 2013 (hereafter “Decision”), affirming the
refusal to register applicant’s standard character mark “ethocyn by chanTal”
under § 2(d) of the Trademark Act on the ground that applicant’s mark is
likely to cause confusion with the standard character marks “SHANTEL”
shown in Registration No. 3044376 and “CHANTAL THOMASS” shown in
Registration No. 3748658.
This Opinion is NOT a
Precedent of the TTAB
Serial No. 85336672
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Applicant requests reconsideration of the Board’s Decision on the
following grounds: (1) the Board erred in its analysis of the commercial
impression of the marks at issue; (2) the shared elements of the cited marks
are not entitled to broad protection; and (3) consumers of cosmetics exercise a
high degree of care.
“[T]he premise underlying a request for … reconsideration … is that,
based on the evidence of record and the prevailing authorities, the Board
erred in reaching the decision it issued. The request may not be used to
introduce additional evidence, nor should it be devoted simply to a
reargument of the points presented in the requesting party’s brief on the
case.” TBMP § 543 (3d ed. rev. 2013); see also, TBMP § 1219.01. Here, in
rearguing points presented in its Appeal Brief, applicant has not established
that the Board erred in the Final Decision.
In support of its first ground for reconsideration, applicant argues that
the Board’s commercial impression analysis raises a new issue, namely that
the “Board injected an entirely new putative commercial impression; namely,
that ‘ethocyn’ would be perceived as a product line put out by ‘chanTal.’” In
making this argument, applicant misunderstands the basis for refusal
articulated by the examining attorney. In support of the final refusal based
on Registration No. 3748658, set forth in the Office Action of March 13, 2012,
the examining attorney stated “[i]ndeed it appears that applicant’s mark
emanates from the same person named in registrant’s mark.” In the Request
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for Reconsideration Denied, the examining attorney reiterated the foregoing,
providing additional evidence consisting of a number of third party
registrations and applications allegedly illustrating that registrants who
produce cosmetics often own multiple marks which include the first and/or
last name of the producer. The examining attorney’s appeal brief at
unnumbered pp. 5-6 and 8, also articulated this position. Accordingly, the
Board’s decision did not inject an entirely new putative commercial
impression, i.e., that “ethocyn” would be perceived as a product line put out by
“chanTal.” Moreover, the Board may, and is in fact obligated to, determine
the commercial impression of a mark particularly where, as here, the
commercial impression is evident from the face of the mark.
Applicant also challenges the Board’s conclusion that “[i]n the absence of
evidence that SHANTEL and CHANTAL are weak terms for cosmetic
products, consumers familiar with the cited marks may well believe that
applicant’s ‘ethocyn by chanTal’ is used in connection with a new line of
cosmetics by the maker of the SHANTEL or CHANTAL THOMASS brand of
cosmetics.” (emphasis by applicant). Specifically, applicant requests that the
Board reconsider whether its analysis of the commercial impression of
applicant’s mark meets the burden of proof required to support the refusal to
register in that “may well believe” is not the equivalent of “likely to . . . .”1

1 Request for Reconsideration p. 2.
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The phrase “may well believe” has been used in numerous Board
decisions. See e.g., In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000)
(“We believe that these marks are so similar that even sophisticated
purchasers may well believe that the software comes from the same source”);
In re Pierce Foods Corp. 230 USPQ 307, 309 (TTAB 1986) (“ . . . may well
believe that applicant’s PIERCE CHIK’N BAKE pre-seasoned chicken is a
product produced under license . . . “); In re Best Western Family Steak House,
Inc., 222 USPQ 827, 829 (TTAB 1984) (“ . . . customers who encounter
registrant’s BEEF MASTER meat products in the market may well believe
they originate with, are produced by or are in some ways associated with . . .”).
Use of this phrase is not surprising given that the term “may well” means “it
is likely.”2 Thus, use of the language “might well believe” is consistent with
the Board’s obligation to determine “likelihood of confusion.” Additionally,

2 Definition of “may well”: If you say that something may well happen, you mean
that it is likely to happen: She may well not want to travel alone. (Definition of “may
well” from the Cambridge Advanced Learner’s Dictionary & Thesaurus © Cambridge
University Press) retrieved from
http://dictionary.cambridge.org/us/dictionary/british/may-well; “might (very)
well/easily: used for saying that something is likely to happen or is likely to be true;
retrieved from
http://www.macmillandictionary.com/us/dictionary/american/might#might-just-
as-well; American English synonyms or related words for this sense of “might”: To be
certain or likely to happen: await, threaten, call for, be heading/headed for
something, lie ahead/before/in store, loom, waiting to happen, lie ahead, lurk;
retrieved from
http://www.macmillandictionary.com/us/thesaurus/american/might#might-very-
well-easily_1. The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries
that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).

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Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388 (Fed. Cir. 1992), cited by applicant, provides no basis for
applicant’s position as that case does not criticize or even address the Board’s
use of the term “may well believe.” Rather, in the section of that case where
the term “may well believe” is mentioned, the Federal Circuit found fault with
the Board’s failure to determine the “relevant persons” to be confused, not
with the Board’s use of the term “may well believe.” 21 USPQ2d at 1392. In
any event, the Board’s conclusion that there is a likelihood of confusion is
clear, as are the reasons for the finding.
In arguing that the evidence of record does not support the Board’s
finding, applicant re-hashes its disagreement with the positions taken by the
examining attorney as set forth in the arguments it presented on appeal.3
Applicant’s argument that no evidence of record exists showing why a
consumer would think the “ethocyn by chanTal” product emanated from either
of the registrants ignores the content of its mark and the commercial
impression necessarily created by the inclusion of the word “by” in the mark.
It is likely that consumers seeing the “ethocyn by chanTal” mark would
believe that the product comes from or is associated with “chanTal” and given
the strong similarity in sound between “chanTal” and the cited marks, would
be further likely to believe that the products are associated. No additional

3 See Request for Reconsideration p. 2. “Appellant renews its argument that it was
improper to focus on only the last portion of Appellant’s mark when determining the
commercial impression of the mark. Appellant refers to its prior arguments . . . .”
(emphases added).
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evidence is necessary to support this conclusion. In this case, the involved
mark itself is the “evidence” which applicant claims is missing.
Applicant next argues that the existence of the cited registrations in the
same Class indicates that the marks therein are weak and not entitled to
broad protection. Applicant’s reliance on the existence of the two cited
registrations in support of the weakness of the marks therein is misplaced.
While evidence of third-party usage of similar marks on similar goods is
relevant to show the weakness of a mark, third-party registrations are not
evidence that the marks depicted therein are in use or that the public is
aware of them, and they are thus of no probative value as to the weakness of
the cited marks. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992).
Lastly, applicant argues that courts have recognized that consumers of
skin care products tend to exercise a high degree of care and brand awareness.
Neither applicant’s Request for Reconsideration nor its Appeal or Reply Briefs
cite to any evidence or case law concerning the degree of care exercised by
consumers of skin care products. Having failed to submit evidence or
argument addressing this point, applicant is precluded from doing so now.
Further, none of the three decisions cited by applicant were issued by our
primary reviewing court, or are decisions whose precedent we must follow.
The purpose of reconsideration is to point out errors made by the Board
in reaching its decision. The bases for the Board’s decision have been
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carefully reviewed in light of applicant’s Request for Reconsideration and we
do not find any error in the Board’s determination affirming the refusal to
register the subject mark based on a likelihood of confusion with the cited
marks. In view of the foregoing, applicant’s Request for Reconsideration of
the Board’s Decision is DENIED, and the decision of May 31, 2013 stands.
Applicant is directed to Rule 2.145(d) of the Trademark Rules of
Practice, 37 C.F.R. § 2.145(d), regarding the time for filing an appeal
of the Board’s July 16, 2012, decision. Also see, §§ 902 and 903 TBMP.
It is further noted that Rule 2.145(e) and § 902.02 TBMP address
the requirements for requesting an extension of time for filing an
appeal or commencing a civil action, and any such request for
extension must be sought through the office of the USPTO Solicitor,
not through the Board.

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