Breast Enhancement Centers of America – Corporate LLCDownload PDFTrademark Trial and Appeal BoardMar 29, 2019EX (T.T.A.B. Mar. 29, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: March 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Breast Enhancement Centers of America – Corporate LLC _____ Serial No. 87416893 _____ Augusto Perera of Augusto Perera P.A., for Breast Enhancement Centers of America – Corporate LLC Ellen J.G. Perkins, Trademark Examining Attorney, Law Office 110, Chris A.F. Pedersen, Managing Attorney. _____ Before Ritchie, Kuczma and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Breast Enhancement Centers of America – Corporate LLC (“Applicant”) seeks registration on the Principal Register of the mark BEAUTIFUL MEDICINE (in standard characters, with “MEDICINE” disclaimed) for “plastic surgery of the face, breast and body” in International Class 44.1 1 Application Serial No. 87416893 was filed on April 19, 2017, based on Applicant’s claim of first use anywhere and use in commerce since at least as early as June 2013. 15 U.S.C. § 1051(a). Serial No. 87416893 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act on the ground of likelihood of confusion with the mark BEAUTIFUL MEDICINE (in standard characters, with “MEDICINE” disclaimed), which is registered on the Principal Register for “on-line retail store services featuring skin care products” in International Class 35 and “providing information about health and beauty via global computer network, namely, health and beauty information concerning skin care products and skin care issues” in International Class 44.2 When the refusal was made final, Applicant requested reconsideration. After the Examining Attorney denied the request for reconsideration, Applicant appealed. We affirm the refusal to register. I. Evidentiary Issue Before proceeding to the merits of the refusal, we address an evidentiary matter. Applicant has attached to its appeal brief a series of exhibits, A through U.3 The record in an application should be complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d). Exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. Id. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. 2 Registration No. 3912376, issued on the Principal Register on Jan. 25, 2011; Section 8 & 15 declarations accepted and acknowledged. 3 Applicant’s brief, 4 TTABVUE 1, 25-111. Serial No. 87416893 - 3 - Conversely, evidence already of record should not be resubmitted as exhibits to a brief. TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) §§ 1203.01, 1203.02(e) (2018). Consequently, we will give no consideration to the exhibits attached to Applicant’s appeal brief, and will confine our attention to the evidence made of record during examination. Additionally, Applicant relies on a list of third-party registrations downloaded from the USPTO’s Trademark Electronic Search System (TESS). The Examining Attorney objects that submitting such a list does not make the registrations of record.4 Applicant responds that it submitted copies of the third-party registration certificates in its January 20 Response to Office Action.5 We find that the TESS listing submitted by Applicant did not make the underlying registrations listed of record. See Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006); TBMP § 1208.02. The Examining Attorney’s objection is therefore sustained, and that listing will be given no consideration. Applicant did, however, make two registration certificates of record, and these will be given due consideration.6 II. Applicable Law We base our determination of likelihood of confusion under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors 4 Examining Attorney’s brief, 7 TTABVUE 6. 5 Applicant’s reply brief, 8 TTABVUE 4. 6 Jan. 20, 2018 Response to Office Action TSDR 22-23. Serial No. 87416893 - 4 - enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In applying the DuPont factors, we bear in mind the fundamental purposes underlying Section 2(d), which are to prevent confusion as to source, and to protect registrants from damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. We have considered each DuPont factor that is relevant, and have treated any other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). Varying weights may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less weighty roles in any particular determination”). “In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the Serial No. 87416893 - 5 - similarities between the services.” Primrose Ret. Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1032 (TTAB 2016). A. Similarity of Marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). Applicant argues that Registrant is using its mark “as an afterthought in a descriptive/suggestive manner,” and not as registered.7 Given the highly suggestive nature of Registrant’s mark, BEAUTIFUL MEDICINE for services relating to skin care, “the overall differences, albeit relatively minor, between the marks suffice to enable consumers to differentiate them.”8 In support of this proposition, Applicant cites a decisions in which slightly different marks for cosmetic products were found not confusingly similar. E.g., Pacquin-Lester Co. v. Charmaceuticals, Inc., 484 F.2d 1384, 179 USPQ 45 (CCPA 1973) (SILK ’N SATIN for beauty lotion for hands and skin and for bath oil and a lotion for hands and skin versus SILK for face cream); 7 Applicant’s brief, 4 TTABVUE 13. 8 Applicant’s brief, 4 TTABVUE 8. Serial No. 87416893 - 6 - Melaro v. Pfizer, Inc., 214 USPQ 645, 648 (TTAB 1982) (SILK for cosmetics and toiletries versus SILKSTICK for cosmetics).9 In this case, however, we find that the marks are identical. Both consist of the words BEAUTIFUL MEDICINE. Both are standard character marks, “without claim to any particular font style, size, or color….” Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a), so they may be depicted identically. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015). Furthermore, “we do not consider how Applicant and Registrant actually use their marks in the marketplace, but rather how they appear in the registration and the application.” In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018); see also In re FabFitFun, Inc., 127 USPQ2d 1670, 1676 (TTAB 2018) (“in determining whether confusion is likely we limit ourselves, as we must, to a comparison of the applied-for mark with the registered mark.”) Because the two word marks in the Application and cited Registration are identical, the first DuPont factor weighs heavily against Applicant. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (“This factor weighs heavily against applicant, as the two word marks are identical….”). B. Relatedness of Services 9 Applicant’s brief, 4 TTABVUE 9-11. Serial No. 87416893 - 7 - The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods or services as described in an application or registration,” Stone Lion v. Lion Capital, 110 USPQ2d at 1159. “This factor considers whether ‘the consuming public may perceive [the respective goods and services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014). Again, Registrant’s identified services are “on-line retail store services featuring skin care products” and “providing information about health and beauty via global computer network, namely, health and beauty information concerning skin care products and skin care issues,” while Applicant’s identified services are “plastic surgery of the face, breast and body.” Applicant argues that “[t]he services listed on Appellant’s identification of services are not listed on Registrant’s identification of services,” and that “there is little, if any, similarity between Appellant’s and Registrant’s services, even when the services, in part, involve ‘cosmetic’ services.”10 The issue, though, is not whether purchasers would confuse the services, but rather whether there is a likelihood of confusion as to the source of the services. In re Binion, 93 USPQ2d 1531, 1535 (TTAB 2009). “Even if the … services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the … services.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). “In 10 Applicant’s brief, 4 TTABVUE 11-12. Serial No. 87416893 - 8 - determining whether the services are related, it is not necessary that the Applicant’s services and Registrant’s services be similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes if the services are related in some manner or if the circumstances surrounding marketing of these services are such that they could give rise to the mistaken belief that they originate from or are in some way associated with the same source.” In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1795 (TTAB 2017) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)). Where identical marks are involved, as is the case here, the degree of similarity between the services that is required to support a finding of likelihood of confusion declines. In re Shell Oil Co., 26 USPQ2d at 1688-89, citing Philip Morris Inc. v. K2 Corp., 555 F.2d 815, 194 USPQ 81, 82 (CCPA 1977) (“even when the goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source”). “Where the applicant’s mark is identical to the registrant’s mark, as it is in this case, there need be only a viable relationship between the respective goods or services in order to find that a likelihood of confusion exists.” In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); accord L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012) cited in Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB 2016). Serial No. 87416893 - 9 - To show such a viable relationship, the Examining Attorney submitted evidence in the form of use-based third-party registrations that identify services such as those in the subject application and the cited registration under the same mark.11 Mark and Reg. No. Pertinent Goods and Services WEYES Reg. No. 4484108 Cosmetic preparations for body care; Cosmetic preparations for skin care; Cosmetic preparations for skin renewal; Cosmetic preparations, namely, firming creams; Cosmetic preparations, namely, firming lotions; Cosmetic and plastic surgery; Cosmetic and plastic surgery, namely, a minimally invasive face/neck lift done under local anesthesia; Cosmetic body care services; Cosmetic skin care services; BAXT COSMEDICAL Reg. No. 4707846 Non-medicated skin care preparations. Medicated skin care preparations. Dermatology services; Plastic surgery services. Reg. No. 5187506 Cosmetic creams for skin care; Cosmetic preparations for skin care; Skin creams; Skin cleansers; Skin creams in liquid and solid form; Wholesales store services, retail store services, and online retail store services, all featuring cosmetics, beauty soap, bath soap, and personal care products. Hospitals; medical clinics; plastic surgery services; surgery; dentistry; massage; beauty salons; nursing services; medical services; medical consultations; providing medical information.12 11 Examining Attorney’s brief, 7 TTABVUE 8. 12 July 23, 2017 Office Action TSDR 9-23. Serial No. 87416893 - 10 - Although such registrations are not evidence that the marks shown therein are in use or that the public is familiar with them, they nonetheless have probative value to the extent that they serve to suggest that the services recited therein are of a kind which may emanate from a single source under a single mark. See, e.g., In re I-Coat Company, LLC, 126 USPQ2d 1730, 1738 (TTAB 2018); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). The two registration certificates submitted by Applicant are to the same effect. The two registrations, owned by the same registrant, are for the mark WHERE BEAUTY MEETS MEDICINE. One registration is for skin care products and medical apparatus for treating the skin, and the other is for “skin care referral services and appointment scheduling with affiliated physicians performing medical treatments involving the skin” and “cosmetic skin care services, namely providing medical services through affiliated physicians who provide plastic surgery, cosmetic surgery, dermatological and medical treatments for the skin, collagen and botox injections, laser skin therapy, laser hair removal, laser skin peels and tattoo removal.”13 If anything, these third-party registrations demonstrate how Applicant’s and Registrant’s identified services complement one another. Consumers could easily perceive that Registrant’s online skin care information services could include referrals to affiliated plastic surgeons operating under aegis of the same mark. As Applicant states, “Registrant’s mark ‘BEAUTIFUL MEDICINE’ overwhelmingly 13 Jan. 20, 2018 Response to Office Action TSDR 22-23. Serial No. 87416893 - 11 - suggest[s] that they provide products and/or services to help beautify the skin, which are always associated and/or related to medicine, and thus, implies the characteristic of the goods/services being offered.”14 Additionally, the Examining Attorney has introduced website evidence from providers such as R. Singer, M.D.,15 Gundersen Health System,16 A. Youn, MD FACS,17 St. Charles Plastic Surgery,18 Sarasota Plastic Surgery Center,19 Nazarian Plastic Surgery,20 Shell Plastic Surgery PLLC,21 The Skin Care Center at Gulf Coast,22 The Peer Group Plastic Surgery,23 and Narashimhan Plastic Surgery24 showing that the same entities provide services such as those in the subject application and the cited registration. Applicant critiques three of the Examining Attorney’s third-party use samples, pointing out that one did not show cosmetic products being sold under the same mark, and that the other two sell cosmetic products under different brands. Applicant also argues that “A simple search engine shows that online cosmetics stores do not provide 14 Applicant’s brief, 4 TTABVUE 11. 15 RSingerMD.com 2/11/2018, Feb. 12, 2018 Office Action TSDR 6-15. 16 GundersenHealth.org 2/11/2018, Feb. 12, 2018 Office Action TSDR 16-20. 17 DrYoun.com 2/11/2018, Feb. 12, 2018 Office Action TSDR 21-31. 18 StCharlesPlasticSurgery.com 2/11/2018, Feb. 12, 2018 Office Action TSDR 32-43. 19 SarasotaPlasticSurgery.com 8/7/2018, Aug. 8, 2018 Office Action TSDR 4-11. 20 NazarianPlasticSurgery.com 8/8/2018, Aug. 8, 2018 Office Action TSDR 12-18. 21 ShellPlasticSurgery.com 8/8/2018, Aug. 8, 2018 Office Action TSDR 19-25. 22 TheSkinCareCenterAtGCPS.com 8/8/2018, Aug. 8, 2018 Office Action TSDR 26-30. 23 PeerGroup.BrilliantConnections.com 8/8/2018, Aug. 8, 2018 Office Action TSDR 31-37. 24 NarashimhanPlasticSurgery.com 8/8/2018, Aug. 8, 2018 Office Action TSDR 38-47. Serial No. 87416893 - 12 - Plastic Surgery Services.”25 This misses the point. Evidence that “a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis.” Hewlett-Packard v. Packard Press, 62 USPQ2d at 1004 quoted in In re Integrated Embedded, 120 USPQ2d 1504, 1514-15 (TTAB 2016). For Applicant’s and Registrant’s identified services to be related, it is not necessary that they always emanate from the same source under the same mark. The fact that are offered together by various third parties is evidence that “the respective products are related in some manner and/or ... the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722. The representative third-party examples provided by the Examining Attorney support a finding that the respective services are related. Based on the foregoing, we find that there is a viable relationship between Applicant’s and Registrant’s services, and that the second DuPont factor weighs in favor of finding a likelihood of confusion. C. Channels of Trade The third DuPont factor concerns “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Because there are no limitations as to channels of trade or classes of purchasers in the description of services in the cited registration, we presume that Applicant’s and Registrant’s services move in all channels of trade normal for such services and are available to 25 Applicant’s brief, 4 TTABVUE 16. Serial No. 87416893 - 13 - all potential classes of ordinary consumers. See Citigroup v. Capital City Bank Group, 98 USPQ2d at 1261; Coach Servs., 101 USPQ2d at 1722; Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1700 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Applicant contends that: Registrant’s services are to provide information about skin care products only. Furthermore, it’s clear that Appellant’s services comprise specialized product offerings, which require training, experience, and knowledge to become a board certified doctor. This reflects specialization that goes above and beyond what it takes to become a provider of cosmetic products/services. On the other hand, Registrant’s products and services, are offered for the general public, does not requires specialized training or certification to sell or provide such services. Thus, it’s clear that both Appellant’s and registrant’s services and goods are for different audiences.26 Applicant does not cite evidence to support its counsel’s statements however. See Galen Med. Assocs., Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of counsel . . . are not evidence.”). Rather,we find that the third-party evidence submitted by the Examining Attorney provides sufficient insight into the classes of consumers that would seek Applicant’s and Registrant’s services, and the channels of trade by which those services would be provided. It is evident from the third-party evidence that consumers may seek a spectrum of care, from topical skin ointments at one end to invasive plastic surgery on the other; and that consumers may be offered the services from the same source. The third-party evidence also demonstrates that the entire spectrum of services can be, and frequently is, provided 26 Applicant’s brief, 4 TTABVUE 13; see also Applicant’s reply brief, 8 TTABVUE 3. Serial No. 87416893 - 14 - by the same source under the same mark. Potential consumers, no matter where they are on that spectrum, would naturally seek information of the sort Registrant provides concerning skin care products and skin care issues, and those contemplating plastic surgery would likely assume that Applicant’s services were provided by the same source, as they are offered under the same mark. Therefore, under the third DuPont factor, Applicant’s and Registrant’s channels of trade and classes of customers overlap for likelihood of confusion purposes. D. Consumers’ Degree of Care and Sophistication in Purchasing Decisions Under the fourth DuPont factor, we consider “[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. Applicant maintains that: Consumers of Appellant’s services are consumers that care and look for sophisticated, specialized, and board certified doctors who could perform such important procedures. Due to the high cost of purchasing Appellant’s services, their consumers are typically that are considered sophisticated and detailed oriented consumers looking for services that match their needs and desires for a perfect body.27 The issue, as we see it, is more a matter of consumer care than sophistication. Consumers may be expected to exercise a greater degree of care as they progress on the spectrum from purchases of noninvasive, inexpensive topical skin care products to invasive, expensive plastic surgery. Skin care products are widely bought, and “do 27 Applicant’s brief, 4 TTABVUE 19; see also Applicant’s reply brief, 8 TTABVUE 4. Serial No. 87416893 - 15 - not require much consumer sophistication.” In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1261 (Fed. Cir. 2010). See also In re FabFitFun, Inc.,127 USPQ2d at 1673 (“In the absence of any limitations suggesting otherwise, we find that the cosmetics at issue include lower cost make-up items that may be purchased without a high degree of care.”). But the cost and nature of surgical procedures would tend to impel prospective purchasers toward careful purchasing. See Electronic Design & Sales Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992) (“[T]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.”). That care, however, can be outweighed by the identical marks and related services. See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods or services). Here, even if prospective consumers are careful, they could still infer from Applicant’s and Registrant’s identical marks that the respective services emanate from the same source, or from affiliated sources, as demonstrated by the Examining Attorney’s third-party evidence. See In re Nat’l Novice Hockey League, Inc., 222 USPQ 638, 641 n.7 (TTAB 1984). Hence, even a careful consumer in these circumstances would not be immune to source confusion. For these reasons, the fourth DuPont factor is neutral. E. Strength or Weakness of the Cited Registered Mark Serial No. 87416893 - 16 - Under the fifth and sixth DuPont factors, we consider the strength of the cited registered mark, and the extent to which that strength may be attenuated by “[t]he number and nature of similar marks in use on similar goods [or services].” DuPont, 177 USPQ at 567. “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) quoted in In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745 (TTAB 2016). Its strength “varies along a spectrum from very strong to very weak.” Palm Bay Imps. Inc., 73 USPQ2d at 1694 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). Applicant argues that the cited registered mark is highly suggestive, and therefore entitled to a narrower range of protection than an arbitrary mark.28 In an attempt to demonstrate that Registrant’s mark is weak, Applicant has made of record two third-party registrations for WHERE BEAUTY MEETS MEDICINE, which contain the elements BEAUTIFUL and MEDICINE, and four third-party website uses of the term “beautiful medicine.”29 Applicant also questions whether Registrant is actually using its registered mark in commerce.30 28 Applicant’s brief, 4 TTABVUE 7-8, 11. 29 Applicant’s brief, 4 TTABVUE 20-22. As noted, Applicant’s submission of a TESS list of third-party registrations will be given no consideration. 30 Applicant’s brief, 4 TTABVUE 15. Serial No. 87416893 - 17 - We agree with the Examining Attorney that the cited registered mark is suggestive.31 See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016) (citing In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 153-35 (Fed. Cir. 1997)) (“inasmuch as the cited mark is registered on the Principal Register, we must assume that it is at least suggestive and we cannot entertain applicant’s argument that the registered mark is descriptive of registrant’s services.”). Even suggestive marks are entitled to appropriate protection against the registration of confusingly similar marks. See In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). And here, where Applicant’s mark is identical to Registrant’s mark, both marks convey the same or similar suggestive connotation: that their related services will in one way or another enhance the beauty of the consumer who purchases them. Hence, even though Registrant’s mark is suggestive, it is entitled to protection. The two third-party registrations for WHERE BEAUTY MEETS MEDICINE include additional wording not found in the cited registration or involved application, that engender a different commercial impression from either mark. See In re Integrated Embedded, 120 USPQ2d at 1513. And the four third-party uses of the term “beautiful medicine” to which Applicant refers are not a compelling amount, as they do not show extensive use of the phrase in commerce sufficient to undermine its commercial strength. See, e.g., Palm Bay Imps., 73 USPQ2d at 1691 quoted in Primrose Ret. Cmtys., 122 USPQ2d at 1033. Finally, with respect to Applicant’s argument that Registrant may not be using its cited mark in commerce, “As long as 31 Examining Attorney’s brief, 7 TTABVUE 7. Serial No. 87416893 - 18 - the registration relied upon … remains uncanceled, it is treated as valid and entitled to the statutory presumptions.” In re Dixie Rests., 41 USPQ2d at 1535 (quoting Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515, 517 (CCPA 1970)). Absent a petition to cancel the cited registration, Applicant may not maintain a collateral attack upon its validity. In re Fat Boys Water Sports, 118 USPQ2d at 1517 (“it has long been settled that the validity of a cited registration cannot be challenged in an ex parte proceeding.”). Considering the record in its entirety as to strength, including the inherent distinctiveness of the registered mark and the presence of third-party registrations and uses, we accord Registrant’s mark a normal degree of strength as to its identified services in the likelihood of confusion analysis. III. Conclusion We have considered of all of the evidence of record and all of the arguments, including evidence and arguments not specifically discussed in this opinion, as they pertain to the relevant DuPont likelihood of confusion factors. We find that the applied-for mark, while suggestive, is identical to the cited mark, that the identified services are related, and that those services may travel through the same or overlapping channels of trade to the same or overlapping classes of customers, whose care cannot be expected to avert confusion as to source or affiliation. For the above reasons, we conclude that Applicant’s subject mark, as used in connection with the services identified in the Application, so resembles the cited registered mark as to be Serial No. 87416893 - 19 - likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act. Decision: The refusal to register Applicant’s mark BEAUTIFUL MEDICINE is affirmed. Copy with citationCopy as parenthetical citation