Christopher Mehas

Trademark Trial and Appeal Board

Aug 13, 2010

No. 78670085 (T.T.A.B. Aug. 13, 2010)

Mailed:
August 13, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mehas
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Serial No. 78670085
_______

Christopher J. Mehas (pro se).

Dominic Fathy, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Seeherman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Christopher J. Mehas (“applicant”) filed an
application (Serial No. 78670085) to register

on the Principal Register for the following International
Class 3 goods:
Skin cleanser; skin exfoliator; skin toner; skin
moisturizers; skin lotions; facial masques;
makeup removers; eyegels; anti-wrinkle
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 78670085
2
skincreams; skin peeling creams; skin bronzing
moisturizers; makeup correctors, namely, facial
concealers; facial mousse makeup; foundation
makeup; skincover-all corrector pencils; eye
shadow; facial powder; body powder; cosmetic
foundation powder; mascara; make-up pencils;
facial blush; body blush; lip liner pencils; eye
liner pencils; eye brow pencils; non medicated
lip serum and other lip-oriented cosmetic
products, namely, lipsticks, lip balms and lip
gloss; bubble bath; and body glitter.

Applicant claims a bona fide intention to use the mark in
commerce pursuant to Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b); and entered (i) the following color claim into
the application: “The color(s) cyan, magenta and black
is/are claimed as a feature of the mark”; and (ii) the
following description of the mark: “The mark consists of
the wording ‘LATINA COSMETICS’ where ‘LATINA’ is the color
blend of cyan and magenta and ‘Cosmetics’ is in the color
black.”1
The examining attorney finally refused registration
under (i) Section 2(e)(1) of the Trademark Act, 15 U.S.C.
Section 1052(e)(1), on the ground that applicant's proposed
mark merely describes a feature of applicant's goods;
(ii) Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant's mark so resembles

1 Applicant disclaimed the term COSMETICS in his response to the
first Office action, but in a subsequent response, withdrew the
disclaimer. The August 29, 2010 Office action withdrew the
requirement for a disclaimer of COSMETICS in light of the mere
Ser No. 78670085
3
the previously registered mark LATINA (Registration
No. 3469997, in standard character form) for “Hair care
products, namely, shampoo, conditioner, relaxing balm
preparations, hair care preparations for shine and hair
conditioner treatment,” also in International Class 3, as
to be likely to cause confusion or mistake or to deceive;
and (iii) Trademark Rule § 2.52(b)(1), 37 C.F.R.
§ 2.52(b)(1), on the ground that the color claim and the
description of the proposed mark are unacceptable.
Applicant has appealed the final refusals. Both
applicant and the examining attorney have filed briefs. We
affirm each refusal to register.
Mere Descriptiveness
We consider first the examining attorney’s Section
2(e)(1) refusal. A mark is merely descriptive if it
immediately describes the ingredients, qualities, or
characteristics of the goods or services or if it conveys
information regarding a function, purpose, or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
To be merely descriptive, a term need only describe a

descriptiveness refusal, discussed below, and the final Office
action does not include a disclaimer requirement.
Ser No. 78670085
4
single significant quality or property of the goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). On the other hand, if a mark requires
imagination, thought, and perception to arrive at the
qualities or characteristics of the goods or services, then
the mark is suggestive.” In re MBNA America Bank N.A., 340
F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (citations
and internal quotation marks omitted).
According to the examining attorney, LATINA COSMETICS
“is merely a combination of descriptive terms that retains
its descriptive significance by indicating the goods are
cosmetics for use by Latinas.” Brief at 16. The examining
attorney relies on the dictionary definition of “latina”
taken from Encarta World English Dictionary (2009), namely,
“Latin American woman or girl: a woman or girl of Latin
American descent who comes from the United States”; and the
dictionary definition of “cosmetics” taken from the same
source, namely, “preparation that is applied to the face or
the body to make it more attractive, e.g., lipstick.” In
addition, the following webpages submitted with the August
29, 2010 Office action refer to cosmetics intended for
Latinas, stating:
Zalia.com – “using products that were
unflattering to Latina skin tones”; and “The team
Ser No. 78670085
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is committed to establishing Zalia as the pre-
eminent Latina cosmetics brand.”

Yenra.com - “Latina consumer beauty product line
of lipstick, foundation, mascara, and eye shadow
launches nationwide.”

vmsd.com – “In the vast and colorful world of
cosmetics, Rosemary Garcia saw a void; a cosmetic
line for Latina women and women of color.”

totalbeauty.com – “With our step-by-step videos,
we will teach you how to apply makeup specific to
Latinas.”

We find that the examining attorney’s dictionary and
internet evidence demonstrates that LATINA COSMETICS for
the various goods listed in applicant’s identification of
goods identifies without the need for the exercise of
imagination, thought or perception that the goods include
cosmetics that are suited for women or girls of Latin
American descent. The websites indicate that there are
cosmetics which are intended for Latinas, and the Zalia.com
and Yenra.com excerpts, in particular, show that “Latina
cosmetics” is a term that is used to describe such
cosmetics. Also, the dictionary meanings of the individual
words in the mark are retained when they are combined as
LATINA COSMETICS, such that the mark as a whole is
descriptive. We therefore find that the examining attorney
has established prima facie that applicant's proposed mark
Ser No. 78670085
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is merely descriptive of a characteristic of applicant's
goods.
Applicant did not submit any evidence, and argues that
LATINA COSMETICS should be registered because the Office
registered the cited LATINA mark. We disagree; the Board
is not bound by the prior decisions of examining attorneys
in allowing other marks for registration. It has been
noted many times that each case must be decided on its own
facts. See Nett Designs, 57 USPQ2d at 1566. Applicant
also argues that the examining attorney’s evidence does not
establish whether LATINA COSMETICS is an “indicator of
source” because the evidence concerns “third party
products” and “an array of speculative emotions that
merchants project in terms of the possibility of a
marketable cosmetic product that is geared toward ethnic
women.” Supplemental brief at unnumbered p. 2. However,
third-party evidence can show how competitors regard a
term, and what they believe consumers will understand from
the term.
Finally, applicant argues that LATINA COSMETICS became
an “actual source indicator” on January 9, 2005 when
applicant presumably launched latinacosmetics.com. To the
extent applicant is asserting that, because he has used his
mark since 2005, the mark has acquired distinctiveness,
Ser No. 78670085
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that issue is not before us. Applicant has not made a
claim of acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f). The issue on appeal
is solely whether the proposed mark is inherently
distinctive.
Inasmuch as the examining attorney has established
prima facie that applicant’s designation is merely
descriptive of a feature of applicant’s goods and applicant
has not rebutted the examining attorney’s prima facie
showing, we find that applicant's proposed mark is
unregistrable under Section 2(e)(1) of the Trademark Act.
Likelihood of Confusion
Our finding that applicant's designation is merely
descriptive is sufficient to bar its registration.
However, in order to render a complete opinion on the
refusals at issue in this appeal, we turn to the likelihood
of confusion refusal. In discussing this refusal, we will
treat applicant’s mark as being highly suggestive.
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Ser No. 78670085
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Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976); and In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209
(TTAB 1999).
A. The Similarity or Dissimilarity of the Marks in Their
Entireties as to Appearance, Sound, Connotation and
Commercial Impression.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he test is not whether the marks 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 so that
confusion as to the source of the goods offered under the
respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). Because
Ser No. 78670085
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the similarity or dissimilarity of the marks is determined
based on the marks in their entireties, the analysis cannot
be predicated on dissecting the marks into their various
components; that is, the decision must be based on the
entire marks, not just part of the marks. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). See also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion”). On the
other hand, there 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 a consideration of the marks in their
entireties. National Data Corp., 224 USPQ at 751.
Considering the marks in their entireties, we find
that the marks are substantially identical. LATINA is the
entirety of the registrant’s mark, and the word “Latina” is
the dominant feature in applicant's mark. Because generic
matter has no source-indicating significance, consumers
will not look to the generic word “Cosmetics” to
distinguish applicant's mark from registrant's mark. In
fact, even if consumers note the inclusion of COSMETICS in
Ser No. 78670085
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applicant’s mark, they are likely to view LATINA COSMETICS
as a variation of the registrant’s LATINA mark, with
COSMETICS being added to show that the mark is being used
for cosmetics products.
We also find that the lower case lettering in which
applicant’s mark is depicted does not distinguish the
marks. The cited registration is for the mark in standard
character form, and therefore the registrant is entitled to
depictions of its mark in any font style. See Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011).
Because LATINA in applicant's mark is identical to
the registered mark, and because the additional generic
word COSMETICS in applicant’s mark does not distinguish the
marks, we find that the marks are similar in appearance,
sound, meaning and commercial impression.
B. The Similarity or Dissimilarity and Nature of the Goods
as Described in the Application.
Turning next to the goods, we note that the goods need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that the goods are related in some manner or that some
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
Ser No. 78670085
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circumstances which could give rise, because of the marks
used or intended to be used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties' goods. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant's and registrant’s goods can all be
considered as used for personal cleansing or grooming, and
the consumer may concurrently use applicant’s bubble bath
and registrant’s hair care products. Additionally, the
examining attorney has submitted a number of use-based,
third-party registrations covering goods of the type in
both the application and the cited registration. See,
e.g.:
U.S. Registration No. 3697120 for the mark AGE
BREAKER – PUT IT ON HOLD for goods including skin
cleansers, skin moisturizers, and non-medicated
hair care preparations;

U.S. Registration No. 3274289 for the mark SUKI
for goods including non-medicated skin care
preparations, namely, cleansers and cosmetics and
hair care preparations;

U.S. Registration No. 3670976 for the mark WHITE
CLOUD for goods including cosmetics, skin cream,
skin cleansers and hair care preparations;

U.S. Registration No. 3301818 for the mark
ADDICTION for cosmetics, non-medicated skin care
preparations and hair care preparations;

Ser No. 78670085
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U.S. Registration No. 3331656 for the mark STOKED
for goods including cosmetics, skin care lotions
and hair care preparations;

U.S. Registration No. 3360623 for the mark JANE
NEARLY FOUNDATION for goods including cosmetics,
non-medicated skin care preparations and non-
medicated hair care preparations;

U.S. Registration No. 3684577 for the mark
MARILEX for goods including cosmetics and hair
care preparations;

U.S. Registration No. 3671100 for the mark BEE
BEAUTIFUL and Design for goods including body and
beauty care cosmetics and hair care preparations;
and

U.S. Registration No. 3349400 for the mark
MÈREADESSO for goods including cosmetics and hair
care products, namely shampoos and conditioners.

Copies of use-based, third-party registrations may 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).
The examining attorney also submitted the following
website evidence:
(www.lorealparisusa.com) offering a facial
cleanser on the same webpage which has links to
“skincare,” “cosmetics” and “hair care”;

(www.aubreyorganic.com) offering soap on the same
webpage which has links to “body lotions,”
“skincare” and “hair care”;

(www.aveeno.com) offering Aveeno brand skin
cleansers on the same webpage which has links to
“skincare” and “hair care” and a second webpage
offering Aveeno brand shampoos, conditioners and
revitalizers;
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(www.neutrogena.com) containing links to
“cosmetics,” “body & bath” and “hair” products on
one webpage; and

(www.suave.com) showing bottles of hair care
preparations and skin lotion bearing the mark
SUAVE.

This website evidence shows that skin care goods and
hair care goods originate from a single source and, at
least in some cases, are sold under a single mark. See,
e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198 (TTAB
2009).
In light of the above-referenced evidence, the
examining attorney has established that applicant’s and
registrant’s goods are related to one another, and that
this du Pont factor favors a finding of likelihood of
confusion.
C. Strength of the Registered Mark
We have found earlier in this decision that LATINA
identifies women of Latin American descent. That meaning
applies to registrant’s mark LATINA as well. As such,
registrant’s mark must be treated as being at least
suggestive, if not highly suggestive, and therefore it is
entitled to a limited scope of protection.2 However, given

2 Because the mark is registered, it is entitled to the
presumptions of Section 7(b) of the Act, including that it is a
valid mark.
Ser No. 78670085
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the evidence that consumers would expect cosmetics and hair
care preparations sold under the same mark to emanate from
a single source, the scope of protection extends to prevent
applicant from registering the essentially identical mark
for the related goods at issue herein.
D. Applicant’s arguments
Applicant argues that there is “zero credible evidence
that [Registration No.] 3469997 had an established actual
source indicator.” Brief at unnumbered p. 2, emphasis in
original. To the extent that applicant is asserting that
the registrant’s mark is not recognized as a
trademark/source indicator, or is not in use as a
trademark, that is an impermissible collateral attack on
the cited registration. Under Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), a mark registered on
the Principal Register is presumed to be valid even though
there is no evidence of use of the mark in the record. In
re H & H Products, 228 USPQ 771, 773 (TTAB 1986) (“Although
we have no evidence concerning the use of the marks of the
cited registrations, these registrations are entitled to
the presumptions of the Trademark Act, including the
presumption of the registrations’ validity as provided in
Section 7(b), 15 U.S.C. § 1057(b).”).
Ser No. 78670085
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Applicant further argues that the cited registered
mark is “purely descriptive in its nature.” Brief at
unnumbered p. 3. Again, this is an impermissible
collateral attack on the cited registration. Dixie
Restaurants, 41 USPQ2d at 1534; and In re Peebles Inc., 23
USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP
§ 1207.01(d)(iv) (8th ed. 2011).
We have also considered applicant’s other arguments
but do not find them persuasive.
E. Conclusion

After careful consideration of the record evidence and
arguments, in view of the applicable du Pont factors, we
conclude that applicant's mark for the identified goods is
likely to cause confusion with registrant’s mark for
registrant’s identified goods.
Description of the Mark
The examining attorney required a proper color claim
and color location statement pursuant to 37 C.F.R.
§ 2.52(b)(1).3 As noted at the beginning of this decision,
applicant entered the following:

3 37 C.F.R. § 2.52(b)(1) states:

If the mark includes color, the drawing must show the
mark in color, and the applicant must name the
color(s), describe where the color(s) appear on the
mark, and submit a claim that the color(s) is a
feature of the mark.
Ser No. 78670085
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Color claim: "The color cyan, magenta and black
are claimed as a feature of the mark."

Color location statement: "The mark consists of
the wording ‘LATINA COSMETICS’ where ‘LATINA’ is
the color blend of cyan and magenta and
‘Cosmetics’ is in the color black.”

It appears that applicant is intending to claim, in
his color claim as well as his color location statement,
that the color in which the word LATINA is depicted is a
mixture of cyan and magenta. However, a color in both a
color claim and a color location statement must be for the
generic name of the color, not a blend of two colors. See
TMEP § 807.07(a)(i). Because applicant may not identify
the color in his mark as a blend but only as a generic
color, the requirements for a proper color claim and color
location statement are affirmed.4
Decision: The refusals to register under Trademark Act
§§ 2(d) and 2(e)(1), and the requirements for a proper
color claim and color location statement, are affirmed.

4 TMEP § 807.07(a)(i) provides that the “color claim may also
include a reference to a commercial color identification system.”
Thus, applicant may have claimed the generic color red for the
term LATINA, followed by, for example, a Pantone color
identification number for the shade of red that is a blend of
magenta and cyan.