Benjamin Fuchs

Trademark Trial and Appeal Board

Oct 24, 2017

No. 86711603 (T.T.A.B. Oct. 24, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: October 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fuchs
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Serial No. 86711603
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Richard A. Levine of Law Office of Richard A. Levine, PC
for Benjamin Fuchs.

Kim Teresa Moninghoff, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Ritchie, Masiello, and Lynch,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Benjamin Fuchs (“Applicant”) seeks registration on the Principal Register of the
mark BENJAMIN FUCHS, R.PH. TRUTH TREATMENT SYSTEMS,1 in standard
character format, for “non-medicated skin care preparations,” in International Class
3. The application disclaims the exclusive right to use the terms “R.PH.” and
“TREATMENT SYSTEMS” apart from the mark as shown. The application further

1 Application Serial No. 86711603 was filed on July 31, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting dates of first use and first use in commerce on
May 4, 2015.

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states that the name shown in the mark identifies “Benjamin Fuchs,” whose consent
to registration of the mark is of record. The Trademark Examining Attorney refused
registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that when applied to the identified goods, it so resembles the
previously registered mark FUCHS, and design,2 as shown below, for, as relevant,
“soaps; cosmetics, namely, skin cleansing preparations and disinfectant soaps,” in
International Class 3, as to be likely to cause confusion, mistake, or to deceive:

When the refusal was made final, Applicant filed this appeal, which is fully
briefed. For the reasons discussed below, we affirm the refusal to register.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all the probative facts in evidence that are relevant to the factors set forth in In re

2 Registration No. 3272543 issued July 31, 2007. Sections 71 and 15 affidavits accepted and
acknowledged. The registration contains other goods in Classes 1, 2, 3, 4, and 17, on which
the Examining Attorney did not rely. The mark consists of the word FUCHS in blue. There
are two curved lines above the wording and two curved lines below. The inner lines are red
and the outer lines are blue. The mark is on a white background. The colors red, blue and
white are claimed as a feature of the mark.
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E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We consider the du Pont factors for which arguments or evidence were presented. The
other factors, we consider to be neutral.
Goods/Channels of Trade
The application identifies “non-medicated skin care preparations,” which
encompass within their scope Registrant’s “skin cleansing preparations.” Applicant
argues that registrant’s goods are actually “industrial.”3 While certain identified
goods not set out above are industrial in nature, the specific goods relied on for the
refusal are not referred to as being industrial. We must look at the goods as they are
identified in the application and the registration “regardless of what the record may
reveal as to the particular channels of trade or the class of purchasers to which sales
of the goods are directed.” Stone Lion Capital Partners, LP v. Lion Capital LLP, 746

3 4 TTABVUE 7. Applicant also cites to David Crystal, Inc. v. Soo Valley Co., 471 F.2d 1245,
176 USPQ 326 (CCPA 1973). The case is, however, inapposite, as the identification of goods
at issue included the “industrial” limitation, unlike in this case where Registrant’s goods
relied on by the Examining Attorney are unrestricted. Also, the David Crystal Court decided
the case on other grounds regardless, finding that, even assuming applicant’s “industrial
thread” may be related to opposer’s pleaded clothing, the dominant portions of the marks
were “laudatory in nature,” and thus there was no likelihood of confusion.
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F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014), citing OctocomSys., Inc. v.
Houston Comp. Servs. Inc., 918 F.2d 937 (Fed. Cir. 1990).4
The Examining Attorney included evidence that “disinfectant soaps” such as those
identified in the cited registration, and “non-medicated skin care preparations,” such
as those identified in the application, are both identified together in use-based third-
party registrations, including the following:
 REFRESHINGLY PURE SKIN CARE (Registration No. 3932171)
 AROMA DEAD SEA (Registration No. 4604009)
 PURARIZE (Registration No. 4094416)
 BUSH PILOT (Registration No. 4440578)
 MOTHER’S THERAPY ORGANICS (Registration No. 4224056)
 MOMIN (Registration No. 4700310)
 THE BEST THINGS IN LIFE ARE GREEN (Registration No. 4621085)
 BLIND BARBER (Registration No. 4528528)
These third-party registrations serve to suggest that the goods are of a type which
may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Because the goods are overlapping, we must presume that the channels of trade
and classes of purchasers are also the same. See In re Viterra Inc., 671 F.3d 1358, 101

4 To the extent Applicant argues that registrant is not using its mark on the cited goods, we
cannot consider in an ex parte proceeding a collateral attack on the validity of the
registration.

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USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion). We find that these du Pont
factors weigh heavily in favor of finding a likelihood of consumer confusion.
The Similarity/Dissimilarity of the Marks
We consider and compare the appearance, sound, connotation and commercial
impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In comparing the marks, we are mindful that the test is not whether they 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 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 mem., No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. See Inter IKEA Sys. V.V. v. Akea, LLC,
110 USPQ2d 1734, 1740 (TTAB 2014); 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). When, as here, the goods are overlapping, the
degree of similarity between the marks necessary to support a finding of likelihood of
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confusion is less than if the goods were not identical. In re Viterra Inc., 101 USPQ2d
at 1912.
Applicant’s mark is BENJAMIN FUCHS, R.PH. TRUTH TREATMENT
SYSTEMS. The terms “R.PH” and “TREATMENT SYSTEMS” refer, respectively, to
Applicant’s professional qualifications and a characteristic of the goods being offered.
Customers are not likely to rely on these terms as an indication of source. We find,
therefore, that the full name, BENJAMIN FUCHS and the word TRUTH are the
dominant portions of Applicant’s mark. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751-52 (Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on consideration of the marks in their
entireties… [T]he public can be said to rely more on the non-descriptive portion of
each mark”).
The mark in the cited registration consists of the literal term FUCHS, with a
design, as shown: . While we do not discount the design element, it is
not so prominent or unusual as to distinguish the mark from Applicant’s standard-
character mark. Also, it is well-established that it is the wording in the mark by which
consumers would likely call for or refer to the goods. See In re Viterra Inc., 101
USPQ2d at 1911, citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198 (Fed. Cir.
1983).
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In an analogous case from our primary reviewing court, a likelihood of confusion
was found between a mark containing a full name with an additional term and a
mark consisting of the same surname with a different term. In re Chatham Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (JOSE GASPAR GOLD for
tequila confusingly similar to GASPAR’S ALE for beer and ale). The Court observed,
“With respect to JOSE, the Board correctly observed that the term simply reinforces
the impression that GASPAR is an individual’s name. Thus, in accord with
considerable case law, the JOSE term does not alter the commercial impression of
the mark. [case cites omitted] . . . . In sum, the first name JOSE modifies the surname
GASPAR and serves to emphasize that GASPAR is a name.” Similarly, in In re SL&E
Training Stable, Inc., 88 USPQ2d 1216, 1219 (TTAB 2008), the Board held SAM
EDELMAN and EDELMAN, both for wallets and types of bags, likely to cause
confusion. There the Board observed that the first name “Sam” simply modified
“Edelman” and consumers “may see it as an abbreviated form of applicant’s mark
SAM EDELMAN.” Also, in Somerset Distilling Inc. v. Speymalt Whiskey Dists. Ltd.,
14 USPQ2d 1539, 1542 (TTAB 1989), the Board deemed JAS. GORDON label design
for Scotch whisky confusingly similar to GORDON’S for distilled alcoholic beverages.
In that case, as well, the Board found JAS. GORDON to be “the most prominent and
recognizable feature of applicant’s label mark” as most of the other material is
descriptive, while GORDON is “essentially the only element in opposer’s mark and a
prominent element in applicant’s.” Id.
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We find the situation in this case to be closely analogous to the situations
presented in these precedential cases at the Board and at the Federal Circuit. The
sight and sound of Applicant’s and Registrant’s marks are similar, in that both
contain the surname FUCHS.5 Applicant’s mark, meanwhile, is presented as a full
name which includes that surname as well as professional credentials and the term
“TRUTH TREATMENT SYSTEMS,” which, when displayed on highly similar or
overlapping goods would be perceived by consumers as a variant of the
mark.
Applicant argues that other cases have found common last names to create no
likelihood of confusion.6 See Brennan’s Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125,
69 USPQ2d 1939, 1943 (2d Cir. 2004) (finding “[a]s a common last name, we think at
this point and contrary to the district court that plaintiff’s mark is inherently weak”).
We note that the Brennan’s case was considered but not followed by our primary
reviewing court when making its decision of likely confusion in Chatham, discussed
above. Furthermore, the Brennan’s case is distinguishable as the Brennan’s court

5 Applicant notes that there is a translation statement in the cited registration for “Fuchs”
as “Fox.” The issue is not, however, whether the term may have other meanings besides being
a surname, but whether the marks are likely to cause confusion as to source. In any regard,
the Examining Attorney has presented evidence that the chairman of the board bears the
surname of this “family business” as did company founder Rudolf Fuchs. See fuchs.com.
Attached to August 22, 2016 Final Office Action, at 20-23.
6 Although Applicant argues this under the 13th du Pont factor, we find it instead appropriate
to consider the argument with the first du Pont factor when analyzing the strength of the
cited mark and its commercial impression.
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found the shared name to be a “common” surname, whereas we have no evidence here
of the shared term “FUCHS” as being common or weak. Applicant refers also in this
regard to another case from a different jurisdiction, Scott Paper Co v. Scott’s Liquid
Gold, 589 F.2d 1225, 200 USPQ 421, 426 (3d Cir. 1978) (finding “[s]election of a mark
with a common surname naturally entails a risk of some uncertainty and the law will
not assure absolute protection.”) In that case, as well, the court found the mark to be
a common surname, but also found the factor of the similarity of the goods to weigh
against plaintiff.
Overall, we find that when considered in their entireties, the marks are similar
in sight, sound, and especially commercial impression, and that this factor favors
finding a likelihood of confusion as well.
Consumer Sophistication and Degree of Purchaser Care
Applicant urges us to consider consumers’ sophistication and degree of purchasing
care, referring again to the industrial goods in the cited registration. We reiterate,
however, that Registrant’s goods are not limited to industrial cosmetics. Rather, the
relevant goods identified in the registration, relied upon for the refusal, are broadly
identified as cosmetics and soaps. These are ordinary consumer goods. Applicant has
not presented any evidence that the consumers of these will necessarily have a
particular level of sophistication, or that the goods are necessarily of a particular
price range as to indicate a likelihood of elevated purchaser care. We must make our
determination based on the least sophisticated consumer, and we assume that these
goods may be sold at varying qualities and prices. Stone Lion Capital Partners, 110
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USPQ2d at 1163 (affirming that TTAB properly considered all potential investors for
recited services, including not only sophisticated investors, but also “the least
sophisticated potential purchasers”). We find this factor to be neutral.
Conclusion
On balance, after considering all of the arguments and evidence of record as they
pertain to the relevant du Pont factors, we find that the goods are overlapping and
otherwise very similar, and we presume they would travel through the same channels
of trade to some of the same general consumers. We further find that the marks as a
whole are similar in sight, sound, and especially, in commercial impression.
Accordingly, we find a likelihood of confusion between the Applicant’s mark
BENJAMIN FUCHS, R.PH. TRUTH TREATMENT SYSTEMS for the applied-for
goods and the registered mark .
Decision: The refusal to register Applicant’s mark is affirmed.