Clemnor Pty Ltd

Trademark Trial and Appeal Board

Jan 10, 2014

No. 85703856 (T.T.A.B. Jan. 10, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Clemnor Pty Ltd
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Serial No. 85703856
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Matthew H. Swyers of The Trademark Company, PLLC for Clemnor Pty Ltd.

Gretta Yao, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell,
Managing Attorney).
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Before Bucher, Mermelstein, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Clemnor Pty Ltd filed an application to register on the Principal Register the
mark bhave in standard character form for the following goods:
Conditioners; Hair care creams; Hair care products,
namely, heat protection sprays; Hair colouring and dyes;
Hair conditioners; Hair masks; Hair mousse; Hair
nourishers; Hair oils; Hair relaxers; Hair shampoo; Hair
shampoos and conditioners; Hair sprays; Hair sprays and
hair gels; Hair straightening preparations; Hair styling
gel; Hair styling preparations; Hair wax; Styling foam for
hair, in International Class 3.1

1 Application Serial No. 85703856, filed under Trademark Act § 44(e), 15 U.S.C. § 1126(e),
on August 15, 2012, claiming ownership of Australian trademark registration No. 1422698
for the mark Bhave.
Serial No. 85703856
2

The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s goods, so resembles the registered mark shown below as
to be likely to cause confusion, or to cause mistake, or to deceive:2

The cited mark is registered on the Principal Register for “Hair styling spray,” in
International Class 3. When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
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 issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, applicant
and the examining attorney have also submitted evidence and arguments regarding
trade channels, conditions of sale, sophistication of buyers, the number of similar
marks in use on similar goods, and coexistence of the marks at issue without actual
confusion.

2 Reg. No. 3977366, issued on June 14, 2011.
Serial No. 85703856
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1. The goods at issue.
Addressing first the goods of applicant and registrant, we find that they are,
in part, legally identical. The application covers “Hair sprays” and “Hair styling
preparations,” each of which encompasses within its scope the “Hair styling spray”
identified in the registration. Moreover, other goods included in the application
have the same hair-styling function as the registrant’s hair styling sprays, such as
applicant’s “hair straightening preparation; hair styling gel”; “hair wax”; and
“styling foam for hair.” We need not discuss the degree of commercial relationship
between registrant’s goods and each of applicant’s goods, because it is sufficient if
likelihood of confusion is found with respect to any item in a single International
Class in the application’s identification of goods. Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Edom
Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); Apple Computer
v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398 (TTAB 2007). In any event, applicant
has conceded that the goods of applicant and registrant are related.3
Applicant points out that its goods are “professional hair care products” and
that they are relatively costly.4 However, the application defines the scope of the
registration requested, and applicant’s goods, as identified in the application, are
not limited to costly or “professional” quality goods. We must therefore consider
that applicant’s goods may include all goods of the types identified, including those

3 Applicant’s brief at 9, fn 1.
4 Affidavit of Graham Noriskin, ¶¶ 2 and 9, applicant’s response of April 24, 2013, Exhibit
3.
Serial No. 85703856
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that are neither costly nor of professional quality. Octocom Syst. Inc. v. Houston
Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The
du Pont factor relating to the similarity or dissimilarity of the goods at issue weighs
in favor of a finding of likelihood of confusion.
2. The marks at issue.
We next consider the similarity or dissimilarity of the marks in appearance,
sound, meaning, and overall commercial impression. Applicant seeks registration of
the mark bhave in standard character form. The cited registered mark consists of
a stylized presentation of the words “Make Your Hair… Behave.”
Addressing first the meanings of the marks, it is clear that bhave -- as it is
spelled in the mark -- has no apparent meaning and, in this regard, is distinct from
the registered mark. However, applicant has stated that the mark “creates a
connotation of an order or a command that a person should behave….”5 Thus,
applicant admits that its mark is a variant of the word “behave” (or would be
perceived as such), rather than an arbitrary, meaningless string of letters. In this
regard, applicant’s mark conveys the same meaning as the word “Behave”
appearing in the cited mark.
Applicant maintains, however, that the registered mark, viewed as a whole,
differs in meaning. While applicant’s mark is, according to applicant, “an order or a
command that a person should behave…,” by contrast the registered mark “is
merely a descriptive phrase telling the consumer to make their hair behave…” in

5 Applicant’s brief at 9.
Serial No. 85703856
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which the word “Behave” is used “not as a command, but rather akin to an
adjective.”6 We do not find this argument persuasive. First, both marks are in the
form of an order or command, and we see no basis for applicant’s contention that
the word “Behave” is used in the registered mark as an adjective.7 It is true that
the registered mark expressly refers to the purpose of controlling one’s hair, while
applicant’s mark does not expressly do so. However, we bear in mind that
applicant’s mark must be considered in the context of the goods at issue,8 which are
hair styling products. In the context of goods for styling hair, customers are likely
to perceive applicant’s mark as a reference to controlling unruly hair (i.e., causing
one’s hair to “behave”) rather than controlling the unruly conduct of a person. In
this regard, the two marks convey reasonably similar meanings. Moreover, the
similarity in meaning is increased by the manner in which the stylized form of the
registered mark visually emphasizes the word “Behave,” as we discuss below.
Turning to the appearance of the two marks, we perceive a high degree of
similarity between them. In the registered mark, the word “Behave” is presented in
distinctive lettering that is approximately ten times as large as the lettering of the
other wording; indeed, all of the other wording takes up less horizontal space than
the letter B of “Behave.” The word “Behave” is, therefore, the dominant visual
portion of the cited mark and is likely to make a stronger impression upon

6 Id. (emphasis supplied).
7 The word BEHAVE is a verb, not an adjective. WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY (1993) pp. 198-199.
8 See 15 U.S.C. § 1052(d) (“a mark which so resembles a [registered mark]… as to be likely,
when used on or in connection with the goods of the applicant, to cause confusion….”
Serial No. 85703856
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customers than would the other wording. We do, of course, compare the marks at
issue in their entireties. However, 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Applicant’s mark differs from the visually dominant word “Behave” by
only a single letter. Moreover, because of the close similarity between bhave and
the common word “behave,” it is likely that a substantial portion of customers would
perceive the mark as a variant of the word “behave,” as applicant has suggested.9
The stylization of registrant’s mark is not sufficient to distinguish the marks,
because applicant seeks registration in standard character form, such that its mark
might be presented in any form of stylized lettering. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012); Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983).
With respect to sound, in light of applicant’s contention that its mark bhave
creates the connotation of the word “behave,”10 it is at least likely that customers
would perceive the pronunciation of the mark to be the same as the word “behave.”
Accordingly, while we acknowledge that the wording “Make Your Hair” in the cited
mark is an element of phonetic difference as compared to applicant’s mark, there is
phonetic similarity between applicant’s mark and the dominant feature of the cited
registered mark.

9 Applicant’s brief at 9.
10 Id.
Serial No. 85703856
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In view of the foregoing analysis, we find that the overall commercial
impressions created by the two marks are substantially similar. Accordingly, the
du Pont factor of the similarity or dissimilarity of the marks favors a finding of
likelihood of confusion.
3. Customers; trade channels; conditions of sale.
As applicant’s goods are in part legally identical to those of registrant, we
must presume that the goods of applicant and registrant move in the same channels
of trade and are available to the same classes of customers for such goods. In re
Viterra Inc., 101 USPQ2d at 1908; American Lebanese Syrian Associated Charities
Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
With respect to trade channels, applicant contends:
Currently in Australia the product is only available at
professional hair salons that use many of the products in-
house, as well as offering for sale to customers. Trade
channels currently do not, and will not in the future,
include any sales to retail stores or mass market
distribution.11
In contrast, it appears that the trade channels of the
[registrant’s] goods … are offered through
www.behavehair.com, on Amazon.com, at a salon in Las
Angeles [sic], CA, and at a vitamin store in Montrose,
CA.12
Our industry is highly specialized and there is absolutely
no overlap in the trade and/or marketing channels
utilized by the average purchaser of mass market

11 Noriskin aff. ¶ 5.
12 Id. ¶ 6.
Serial No. 85703856
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hairspray available through the internet via phone
orders.13
We also note applicant’s argument that its goods “will be marketed through
sales representatives, advertisements in salon trade magazines, word-of-mouth,
social media, through our trade wholesalers, and at trade shows”;14 and that its
website does not allow for direct purchase of the goods.15 We note with interest that
applicant advertises its goods on a website located at while
registrant apparently offers its goods for sale on a website located at
,16 URLs that differ by only a single letter.
We cannot take into consideration the limitations on trade channels
described by applicant, because neither the application nor the registration includes
any limitations on the channels through which the goods may be marketed. We
must look to the application and registration themselves, and not to extrinsic
evidence about channels of trade, in making our determination. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119
USPQ 139 (CCPA 1958). We therefore cannot rule out the possibility that
applicant’s goods may be marketed on the internet, through retail stores or through
mass market distribution.
The same is true with respect to the nature of applicant’s customers.
Applicant contends that “Our goods are marketed exclusively to ladies and men who

13 Id. ¶ 3.
14 Applicant’s brief at 10-11.
15 Id. at 11.
16 Id. at 10-11.
Serial No. 85703856
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utilize the services of hair salons and purchase their hair products exclusively from
their salon.”17 As there are no limitations on the classes of customers in either the
application or the registration, we must presume that the goods of applicant and
registrant are available to all classes of purchasers for such goods. Paula Payne
Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).
As the goods of applicant and registrant are, in part, legally identical, we presume
that they would be marketed to the same classes of customers. In sum, the du Pont
factor relating to the similarity or dissimilarity of trade channels and classes of
customers favors a finding of likelihood of confusion.
4. Sophistication of purchasers; care in selection of the goods.
Applicant contends that the customers of both applicant and registrant
“exercise a high level of sophistication” in choosing the goods.18 The goods at issue
are consumer items of types that might be purchased by any person with an interest
in caring for his or her hair. There is no evidence to suggest that such customers
have any particular sophistication as to hair care products. Nor is there any reason
to believe that such customers would exercise more than an ordinary degree of care
in selecting the goods. Accordingly, we find this factor to be neutral.
5. Similar marks in use in the marketplace.
Applicant lists “the number and nature of similar marks in use”19 as a
relevant du Pont factor, but does not argue this point in its brief. However, during

17 Noriskin aff. ¶ 3.
18 Applicant’s brief at 11.
19 Id. at 7.
Serial No. 85703856
10

prosecution applicant made of record copies of U.S. registrations of the following
marks for the goods indicated below:
Behave Clothing apparel

BEHAVE eyeglasses and components thereof

MISSBEHAVE women’s fashion and lifestyle magazine

Don’t Behave fragrances; comedy shows

Miss Behave apparel

URBAN BEHAVIOR retail stores featuring clothing, headwear,
accessories, eyewear, jewelry, leather goods, and
hair accessories;

URBAN BEHAVIOR jewelry, apparel, hair ornaments20

Third-party registrations do not prove that a mark is weak under this du
Pont factor unless they are accompanied by evidence of actual use of the marks.
Otherwise, there is no basis for concluding that the registered marks are in use on a
commercial scale -- or at all -- or that the public has become familiar with them. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98
USPQ2d 1921, 1934 (TTAB 2011). In this case there is no evidence of use to
support the submitted registrations. Moreover, even if the third-party marks were
shown to be in use, none of them relates to hair care preparations and, accordingly,
they would be expected to have little diluting effect on the strength of the cited

20 Applicant’s response of April 24, 2013, Exhibits 4 through 10.
Serial No. 85703856
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registered mark. We therefore find that the factor of similar marks in use for
similar goods is neutral.
6. Absence of actual confusion.
Applicant lists “the absence of actual confusion… and the length of time in
which the marks have co-existed without actual confusion”21 as a relevant du Pont
factor, but does not argue this point in its brief. We see no evidence in the record
addressing this point. The Noriskin affidavit is silent as to whether there has been
any confusion; it also contains no information indicating whether opportunities for
confusion have existed in the marketplace. Moreover there is no evidence relating
to the extent of actual use of registrant’s mark. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Applicant’s counsel’s
unsupported suggestion that there have been no known instances of confusion is
entitled to no weight. Accordingly, the du Pont factor of the length of time during
and conditions under which there has been contemporaneous use without evidence
of actual confusion is deemed neutral.
7. Balancing the factors.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s goods, so closely resembles the cited registered mark for

21 Applicant’s brief at 7.
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legally identical goods as to be likely to cause confusion, mistake or deception as to
the source of applicant’s goods.
Decision: The refusal of registration is affirmed.