Black Like Me Design Co. (Proprietary) Ltd.

Trademark Trial and Appeal Board

May 5, 2000

No. 75214375 (T.T.A.B. May. 5, 2000)

Hearing: Paper No. 15
November 4, 1999 BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 5,00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Black Like Me Design Company (Proprietary) Limited
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Serial No. 75/214,375
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Kenneth R. Glaser and John M. Cone of Akin, Gump, Strauss,
Hauer & Feld, L.L.P for Black Like Me Design Company
(Proprietary) Limited.
Christine Baker, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______
Before Quinn, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Black Like Me Design Company (Proprietary) Limited has
filed an intent-to-use application to register the mark
shown below
for “toiletries, namely, colognes, perfumes; skin soap;
Ser. No. 75/214375
2
mascara, lipstick; hair perming solutions and lotions” in
Class 3.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, if used on its goods, would
so resemble the previously registered mark shown below
for “skin lotions, skin creams, sun block, sun tan lotions,
mouth wash, pre moistened cosmetic wipes, nail polish, nail
polish remover, personal deodorant, hair shampoo, cotton
swabs for cosmetic purposes, puffs for cosmetic purposes,
shaving cream, after shaving lotion, denture cleaners, sold
only in retail supermarket stores” in Class 3,2 as to be
likely to cause confusion, mistake or deception.

1 Application Serial No. 75/214,375, filed December 17, 1996,
based on applicant’s assertion of a bona fide intention to use
the mark in commerce. The application includes a statement that
“The stipling (sic) in the mark is for shading purposes only.”
2 Registration No. 2,068,338, issued June 10, 1997. The claimed
date of first use and first use in commerce is August 31, 1991.
(The registration also includes goods in Classes 5 (e.g.,
douches, laxatives, rubbing alcohol, various cold and allergy and
anti-diarrhea medications, sold in retail supermarket stores), 8
(razor blades), and 21 (cotton balls), but the arguments of both
the Examining Attorney and applicant’s attorney are directed to
the Class 3 goods.)
Ser. No. 75/214375
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When the refusal was made final, applicant appealed.
Briefs have been filed. An oral hearing was held before
this Board on November 4, 1999.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973), for determining whether a likelihood
of confusion exists, we find that confusion is likely.
Turning first to a consideration of the parties’
respective goods, it is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion, it being sufficient instead that
the goods are related in some manner or that the
circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB
1992); and In re International Telephone and Telegraph
Corporation, 197 USPQ 910 (TTAB 1978). Also, it is not
necessary that a likelihood of confusion be found as to
each item included within applicant’s identification of
goods. See Alabama Board of Trustees v. BAMA-Werke Curt
Baumann, 231 USPQ 408, footnote 7 (TTAB 1986).
Ser. No. 75/214375
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While applicant’s colognes, perfumes, skin soap,
mascara, lipstick, and hair perming solutions and lotions
vis-a-vis the cited registrant’s skin lotions, skin creams,
hair shampoo, nail polish, personal deodorant, after shave
products, etc. are obviously specifically different
products, it is clear that they are related personal
grooming products. See In re American Safety Razor Co., 2
USPQ2d 1459 (TTAB 1987); Royal Hawaiian Perfumes, Ltd. v.
Diamond Head Products of Hawaii, Inc., 204 USPQ 144 (TTAB
1979); and Frances Denney v. ViVe Parfums Ltd., 190 USPQ
302 (TTAB 1976). See also, Helene Curtis Industries Inc.
v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
regarding the registrability of marks, the Board is
constrained to compare the goods as identified in the
application with the goods as identified in the
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Even though the trade channels for the cited
registrant’s goods are restricted in Class 3 (and Class 5)
Ser. No. 75/214375
5
to “retail supermarket stores,” nonetheless, there is no
restriction in applicant’s identification of goods; and
therefore applicant’s unrestricted trade channels encompass
the specific trade channel listed in the registration. In
fact, applicant acknowledges that its goods “would be sold
through various channels of trade” (brief, p. 7). Further,
there is no restriction to the types of purchasers in
either the application or the registration, and therefore
applicant’s argument that its goods are directed
specifically to African Americans is unpersuasive. The
Board must assume that applicant’s goods could move through
all the ordinary and normal channels of trade for such
goods (including retail supermarkets), and would be offered
to all the usual purchasers (i.e., the general public) for
such products. See Octocom Systems Inc. v. Houston
Computer Services Inc., supra, at 1787; and The Chicago
Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB
1991). Further, we are dealing here with relatively
inexpensive personal grooming products and the average
purchaser may exercise less care in the purchasing
decision.
We turn next to a consideration of the marks. Both
applicant’s mark and the cited registered mark are for the
identical words PERFECT CHOICE. The stylized lettering of
Ser. No. 75/214375
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the registered mark and the stylized lettering and design
feature in applicant’s mark do not offer sufficient
differences to create a separate and distinct commercial
impression. That is, the stylistic differences are not
sufficient to overcome the likelihood of confusion. See In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Further, the words PERFECT CHOICE in both marks, i.e.,
the portion utilized in calling for the goods, are most
likely to be impressed in the purchaser’s memory and to
serve as the indication of origin. See Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir., June 5, 1992); and Consumers Building
Marts, Inc. v. Mr. Panel, Inc., 196 USPQ 510 (TTAB 1977).
We find that these marks are similar in sound,
connotation and commercial impression.
Applicant’s argument that the words PERFECT CHOICE are
“highly suggestive” and should be afforded only a narrow
scope of protection is not substantiated in the record.
Applicant’s listing of six third-party registrations3 for

3 Mere typed listings of third-party registrations are not an
appropriate way to enter such material into the record. See In
re Duofold Inc., 184 USPQ 638 (TTAB 1974); and Weyerhaeuser Co.
v. Katz, 24 USPQ2d 1230 (TTAB 1992). However, the Examining
Attorney did not object thereto, and treated the list as of
record. Accordingly, the Board has considered the list of third-
party registrations.
Ser. No. 75/214375
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the mark PERFECT CHOICE indicate the registrations are for
tea, coffee, bakery goods, nutritional food packs, grass
seed and bird feed, respectively. Applicant did not submit
any third-party registrations of the mark PERFECT CHOICE in
the relevant field, personal grooming products; and in any
event, third-party registrations are not evidence of third-
party use or that the purchasing public is aware of these
marks.
Even if applicant had shown that the cited mark is
weak, such marks are still entitled to protection against
registration by a subsequent user of the same or similar
mark for the same or closely related goods. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).
Accordingly, because of the high degree of similarity
of the parties’ marks; the relatedness of the parties’
goods; and the overlap of the trade channels to the same
purchasers; we find that there is a likelihood that the
purchasing public would be confused if applicant uses
PERFECT CHOICE and design as a mark for its goods.
Ser. No. 75/214375
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Decision: The refusal to register under Section 2(d)
is affirmed.
T. J. Quinn
P. T. Hairston
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board