No. 85336672 (T.T.A.B. May. 31, 2013)

BCS Business Consulting Services Pte Ltd

Trademark Trial and Appeal BoardMay 31, 2013

No. 85336672 (T.T.A.B. May. 31, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 31, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re BCS Business Consulting Services Pte Ltd _____ Serial No. 85336672 _____ 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). _____ Before Kuhlke, Kuczma and Adlin, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: BCS Business Consulting Services Pte Ltd (“applicant”) appeals from the final refusal to register the following mark in standard character format: for the following goods: Lotions, cleansers and creams for the care of the skin in Class 3, and Serial No. 85336672 2 Medicated cosmetics; chemical additive for the alleviation of the appearance of wrinkles of the skin sold a [sic] component of medicated cosmetics in Class 5.1 The examining attorney issued a final refusal to register the mark pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing the following two Registrations as a bar to registration: Registration No. 30443762 Mark: SHANTEL (typed form)3 For: Cosmetic beauty facial gels and facial creams in Class 3 Owner: Shantel Medical Supply, Inc. Registration No. 37486584 Mark: CHANTAL THOMASS (standard character) For: Perfumes; cosmetics; cleansing products, namely, skin cleansing preparations; hair lotions in Class 3 Owner: C.T. Compagnie. After the refusal was made final, applicant appealed and filed a request for reconsideration which was denied. Applicant and the examining attorney have filed briefs. For the reasons set forth below, the refusal to register is affirmed. Likelihood of Confusion Our determination under § 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of 1 Application Serial No. 85336672 filed on June 2, 2011, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b); applicant has claimed ownership of Registration Nos. 2620792 and 4037327 for the mark ETHOCYN for cosmetic products and chemical additives for use in the manufacture of cosmetics and medicated cosmetics. 2 Registration No. 3044376 issued January 17, 2006; a section 8 declaration has been accepted and the accompanying section 15 declaration acknowledged. 3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. 4 Registration No. 3748658 issued February 16, 2010. Serial No. 85336672 3 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 Co., 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 goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We have considered these and any other du Pont factors on which applicant and the examining attorney have submitted evidence and argument. A. Similarity of Goods, Channels of Trade and Classes of Consumers We first consider the du Pont factor involving the similarity or dissimilarity of applicant’s goods in relation to the goods in the cited registrations and their respective channels of trade and classes of consumers. It is well-settled that the issue of likelihood of confusion between applied-for and registered marks must be determined on the basis of the goods and services as they are identified in the involved application and registrations. Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012). Because applicant’s “creams for care of the skin” in Class 3 are not limited, we presume that they encompass the “cosmetic beauty facial creams” set forth in cited Registration No. 3044376, and therefore, applicant’s goods in Class 3 are identical in part to the goods in that Registration. Moreover, the examining attorney submitted evidence establishing that applicant’s “medicated cosmetics; chemical additive for the alleviation of the appearance of wrinkles of the skin sold a Serial No. 85336672 4 [sic] component of medicated cosmetics” in Class 5 are related to the “cosmetic beauty facial gels and facial creams” in cited Registration No. 3044376: The Neutrogena website has links to “Cleansers,” “Moisturizers,” “Anti-Aging,” and “Cosmetics” and offers products to reduce the appearance of wrinkles; there are also Neutrogena on-the-spot acne treatment products including vanishing cream and skin cleansers that contain benzoyl peroxide acne medication.5 The Lovely Skin website offers Neostrata brand anti- aging, facial cleaner moisturizing, lotion and gel skin care products and psoriasis solutions.6 Moisturizing and cleansing skin and facial care products, acne solutions and medicated lip balm are offered for sale under the Burt’s Bees brand.7 This evidence demonstrates that applicant’s goods in Class 5 and the goods in the cited Registration No. 3044376 are related because they are offered for sale under the same brand names. Accordingly, applicant’s goods are identical in part and otherwise closely related to the goods in cited Registration No. 3044376. Turning to the second cited registration, applicant’s “cleansers . . . for the care of the skin” in Class 3 are identical to the “skin cleansing preparations” in cited 5 See attachments to September 20, 2011 Office Action from http://webcache.googleusercontent.com/search?q=cache.vdEmi5UpN9sJ:www.neutrogena.c om/+skin+cleansers+and+facial+cream&cd=8&hl=en&ct=clnk&gl=us and from a Google search for “neutrogena medicated cosmetics” listing Neutrogena brand products available for purchase online; and attachments to March 13, 2012 Office Action from http://www.neutrogena.com/category/cosmetics.do?nType=1. 6 See attachments to September 20, 2011 Office Action from http://www.lovelyskin.com/products.asp?MID=5. 7 See attachments to September 20, 2011 Office Action from http://webcache.googleusercontent.com/search?q=cache:acql0LmFWOIJ:wwwburtsbees.co m/natural-products/face-care/+skin+cleansers+and+facial+cream&cd=9&hl=en&ct= clnk&gl=us and from a Google search for “medicated cosmetics” listing online stores selling Burt’s Bees brand medicated lip balm products. Serial No. 85336672 5 Registration No. 3748658. The foregoing evidence submitted by the examining attorney also establishes that applicant’s “medicated cosmetics” in Class 5 are highly related to the “cosmetics” in Registration No. 3748658. In determining the similarity of applicant’s and registrants’ goods, it is sufficient if likelihood of confusion for each Class of goods is established for any item encompassed by the identification of goods for that Class. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010) citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In view of the foregoing relationships between applicant’s goods and the goods in the cited registrations, consumers encountering applicant’s goods and the goods in the cited registrations sold under similar marks are likely to believe the goods emanate from the same source. Because the goods are in part identical and otherwise closely related, and because we also note that neither applicant’s identification of goods nor the identifications of goods contained in the cited registrations contain a limitation of any kind with respect to consumers or channels of trade, we presume that the goods move in the same channels of trade and are sold to the same classes of consumers. See American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding Serial No. 85336672 6 channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Based on the legally identical and highly related nature of the goods set forth in the application and cited registrations, and the similar trade channels and customers, the du Pont factors of the similarity of the goods, trade channels and customers favor a finding of likelihood of confusion. B. Similarity of the Marks We now turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, and commercial impression. du Pont, 177 USPQ at 567. Applicant argues that its mark differs in appearance from either of the cited marks because it features an uppercase letter “T” in the word “chanTal.”8 Whether applicant’s mark contains an upper case “T” does not affect the outcome of our analysis. Marks, such as the cited marks, that are in standard characters may be displayed in any lettering style; the rights reside in the wording or other literal elements and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009). Therefore, registrants are entitled to all 8 Applicant’s mark as shown in the drawing filed with the application contains an upper case “T.” However, the application contains a claim for a standard character mark. Applicant subsequently attempted to distinguish its mark from the cited marks by noting the upper case “T” in its mark, requesting that “the records of the Office be amended to correctly render the mark in the format in which applicant submitted the mark in its application.” See Applicant’s February 16, 2012 Response to Office Action. Although there is no indication that the examining attorney considered what appears as applicant’s unartful request to withdraw its standard character claim, this does not impact the outcome of this appeal because the marks in the cited registrations are standard character marks. Serial No. 85336672 7 depictions of their standard character marks regardless of the font style, size, or color, including utilizing an upper case “T.” Viterra, 101 USPQ2d at 1909; Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) and In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). Therefore, the upper case “T” in applicant’s mark does not impact the commercial impression of its mark and will not avoid a likelihood of confusion with the cited standard character marks because the owners of the cited registrations have the right to present their marks in a similar manner of display. While it is settled that there is no correct way to pronounce a trademark, we find on this record that the “chanTal” in applicant’s mark would be pronounced in a manner similar to the words SHANTEL and CHANTAL in the cited marks. With respect to the SHANTEL mark, the letter “c” may be pronounced as a soft “c” where it has the sound of the letter “s” such as found in the words “chef,” “city” and names i.e., “Chicago.” Similarly, the vowels “a” and “e” may have similar pronunciations. Thus, one of the words in applicant’s mark sounds the same as the SHANTEL mark and is identical in sound to the name CHANTAL in the CHANTAL THOMASS mark. In comparing the marks, we are mindful that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks in their entireties 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. Coach Services Inc. v. Triumph Serial No. 85336672 8 Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) and San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As to the commercial impressions of the marks, applicant argues that the term “ethocyn” in its mark is a distinctive term as it is the subject of two other registrations owned by applicant,9 has been used in the U.S. for nearly 20 years, is located at the beginning of its mark and serves as a housemark to distinguish its mark from the cited marks. We disagree that the term “ethocyn” in applicant’s mark would be recognized as a housemark. Due to its position preceding the phrase “by chanTal,” “ethocyn” would be perceived as a product line put out by “chanTal.” While we agree with applicant that consumers are generally more inclined to focus on the first word in any trademark or service mark, see Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005), the applicability of this doctrine is doubtful here in view of the commercial impression rendered by applicant’s mark. In the absence of evidence that SHANTEL or CHANTAL are weak terms for cosmetic products, consumers familiar with the cited marks may well believe that applicant’s “ethocyn by chanTal” mark is used in connection with a new line of 9 Applicant has claimed ownership of Registration Nos. 2620792 and 4037327 for the ETHOCYN mark. Serial No. 85336672 9 cosmetics by the maker of the SHANTEL or CHANTAL THOMASS brand of cosmetics. This is so regardless of whether the term “ethocyn” is distinctive or whether applicant’s mark, as argued by applicant, evokes an exotic and sophisticated product.10 Inasmuch as the cited marks are recognizable as “personal names”11 they would function to indicate the sponsor or source of the products. Cf. Nina Ricci S.A.R.L. v. Haymaker Sports Inc., 134 USPQ 26, 28 (TTAB 1962) (persons familiar with NINA RICCI or RICCI for women’s apparel would logically assume that women’s clothing bearing RICCI OF HAYMAKER emanates from same source or is connected in some way). Thus, consumers viewing either of the registered SHANTEL or CHANTAL THOMASS marks may see them as an abbreviated form of applicant’s “ethocyn by chanTal” mark. Cf. In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1219 (TTAB 2008). Conclusion Where the goods of the applicant and cited registrants are identical in part and/or closely related as they are in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004). 10 See Applicant’s Appeal Brief p. 8. 11 Applicant admits that CHANTAL and SHANTEL are personal names. See February 16, 2012 Response to Office Action and Brief of Applicant in Support of Ex Parte Appeal p. 3. Serial No. 85336672 10 After considering the applicable du Pont factors, we find that the goods involved are so closely related that their sale under a mark that has a commercial impression of being a product line mark, is likely to cause confusion, or to cause mistake or to deceive with the cited marks which embody personal names. Decision: The refusal to register applicant’s mark under § 2(d) of the Trademark Act based on a likelihood of confusion with the marks shown in Registration Nos. 3044376 and 3748658 is affirmed.