Circle of Friends, LLC

Trademark Trial and Appeal Board

Dec 9, 2004

No. 76430511 (T.T.A.B. Dec. 9, 2004)

Mailed: December 9, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Circle of Friends, LLC
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Serial No. 76430511
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Jeffrey K. Joyner of Keats, McFarland & Wilson LLP for
Circle of Friends, LLC.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Hairston, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Circle of Friends, LLC has filed a trademark
application to register the mark shown below,
for “hair care preparations, namely, shampoo.”1
1 Serial No. 76430511, filed on July 15, 2002, which alleges
dates of first use of March 1997. The word “SWIMMERS” has been
disclaimed apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76430511
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, when
applied to the identified goods, so resembles the mark
shown below,
which is registered for “body fragrances,”2 as to be likely
to cause confusion, mistake, or deception.
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested. We affirm the
refusal to register.
Our determination under Section 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). 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
2 Registration No. 2,239,475 issued April 13, 1999.
Ser No. 76430511
3
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).
Considering first the goods, applicant argues that its
shampoo and registrant’s body fragrances are very different
in nature; and that its shampoo is sold in professional
salons and is for use on children.
It is well settled that goods need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner and/or that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to the mistaken belief that they originate
from or are in some way associated with the same producer
or provider. See In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); and In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
Moreover, it has been repeatedly held that in
determining the registrability of a mark, this Board is
constrained to compare the goods as identified in the
application with the goods as identified in the
Ser No. 76430511
4
registration, and not in light of what such goods are shown
or asserted to actually be. See In re Dixie Restaurants
Inc., 105 F.2d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
Applying the above principles to the present case, we
find that applicant’s shampoo and registrant’s body
fragrances are complementary, related goods.
Notwithstanding the different product characteristics, they
both are preparations which are typically used as part of a
personal grooming regimen. In addition, the Examining
Attorney submitted copies of two third-party registrations,
which issued on the basis of use of the marks therein in
commerce, to demonstrate the relationship between the
involved goods, by showing in each instance that a single
entity has adopted one mark for shampoo and body
fragrances.
Although these registrations are not evidence that the
marks shown therein are in commercial use, or that the
public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
goods identified therein are of a type which may emanate
from a single source under a single mark. See In re Albert
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5
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470,
n.6 (TTAB 1988).
Further, both shampoo and body fragrances are
relatively inexpensive and therefore are likely to be
purchased on impulse, thus increasing the risk of
confusion. See Kimberly-Clark Corp. v. H. Douglas Enter.,
Ltd., 774 F.2d 1144, 227 USPQ 541, 542 (Fed. Cir. 1985).
With respect to applicant’s contention that its
shampoo is sold only in professional salons and is intended
for use on children, there are no limitations in
applicant’s identification of goods with respect to
channels of trade and type. Thus, for purposes of our
likelihood of confusion analysis, we must assume that
applicant’s shampoo is sold in all channels of trade that
would be normal for such goods, including drug stores and
mass merchandisers, and that the shampoo would be purchased
by all normal purchasers for such goods, namely, ordinary
consumers. Further, we must assume that applicant’s
shampoo is of a type that would be used on adults. In
short, the distinctions urged by applicant are immaterial
to our determination of the likelihood of confusion issue.
We turn next to a consideration of the respective
marks. Applicant argues that the marks are not at all
Ser No. 76430511
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alike due to the differences in the “unique styles” of the
involved marks and the word SWIMMERS in applicant’s mark.
Further, applicant argues that marks that consist of SPLISH
SPLASH are weak.
We agree with the Examining Attorney, however, that
when applicant’s mark and registrant’s mark are each
considered as a whole, they are highly similar in sound,
appearance, connotation, and overall commercial impression
since the dominant literal and source-signifying element of
each mark is the distinctive term SPLISH SPLASH.
While applicant’s and registrant’s marks must be
considered in their entireties, including any disclaimed or
otherwise descriptive matter, since that is how the marks
appear when they are used in the marketplace, it is
nevertheless appropriate, for rational reasons, to regard
certain features of the marks as being more dominant or
otherwise significant, and therefore to give those features
greater force and effect. Disclaimed or otherwise
descriptive matter, by contrast, is generally viewed as a
less dominant feature of a mark. See In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751-52 (Fed. Cir.
1985).
In this case, the distinctive term SPLISH SPLASH is
the dominant element in each of the respective marks. The
Ser No. 76430511
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disclaimed word “SWIMMERS” in applicant’s mark is
descriptive of the intended users of applicant’s goods and
has little impact on the overall commercial impression
created by the mark. Further, the stylized letters in
applicant’s mark do not make the marks dissimilar.
Also, it is the words SPLISH SPLASH in registrant’s
mark, rather than the swirl and flower designs, which would
be regarded by customers as the principal source-signifying
portion of the mark. In a composite mark comprising a
design and words, it is the words which are most likely to
indicate origin because they would be used to call for the
goods. See In re Appetito Provisions Co., Inc., 3 USPQ2d
1553, 1554 (TTAB 1987).
While differences admittedly exist between the
respective marks when viewed on the basis of a side-by-side
comparison, such a comparison is not the proper test to be
used in determining the issue of likelihood of confusion
since it is not the ordinary way that customers will be
exposed to the marks. Instead, due to the fallibility of
memory, it is the similarity of the general overall
commercial impression engendered by the marks which must
determine whether confusion as to source or sponsorship is
likely. The proper emphasis is accordingly on the
recollection of the average purchaser, who normally retains
Ser No. 76430511
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a general rather than a specific impression of trademarks.
See e.g., Envirotech Corp. v. Solaron Corp., 211 USPQ 724,
733 (TTAB 1981); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975); and Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973).
Applicant contends that marks consisting of or
containing the words SPLISH SPLASH are weak marks which are
therefore entitled to only a limited scope of protection.
In its brief on appeal, applicant lists five applications
and three registrations for marks consisting of or
containing SPLISH SPLASH.
A mere listing of third-party applications and
registrations is insufficient to make such evidence of
record. Rather, copies of the applications and
registrations ordinarily must be submitted to make them
properly of record. See In re Duofold Inc., 184 USPQ 638,
640 (TTAB 1974). Moreover, Trademark Rule 2.142(d)
provides that the record in an application should be
complete prior to the filing of an appeal. Thus, applicant
should have submitted copies of the third-party
applications and registrations prior to filing its appeal.
In view thereof, we have given no consideration to these
Ser No. 76430511
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applications and registrations in reaching our decision
herein.3
In view of the foregoing, we find that purchasers
familiar with registrant’s body fragrances sold under the
registered mark SPLISH SPLASH and design would be likely to
believe, upon encountering applicant’s mark SPLISH SPLASH
SWIMMERS and design on shampoo, that applicant’s goods
originate from the same source as registrant’s goods.
Decision: The refusal to register under Section 2(d)
of the Act is affirmed.
3 We should add that even if copies of the applications and
registrations had been timely submitted, they would have little
probative value on the issue of whether confusion is likely in
this case. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB
1993). Third-party applications and registrations are not
evidence of use of the marks in such applications and
registrations.