Colorbar Cosmetics Private Limited

Trademark Trial and Appeal Board

Nov 20, 2015

No. 86323815 (T.T.A.B. Nov. 20, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Colorbar Cosmetics Private Limited
_____

Serial No. 86323815
_____

Maria A. Scungio and H. Straat Tenney of Locke Lord LLP,
for Colorbar Cosmetics Private Limited.

Gaynne G. Zimmerman, Trademark Examining Attorney, Law Office 120,
Michael W. Baird, Managing Attorney.
_____

Before Bucher, Adlin and Masiello,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Colorbar Cosmetics Private Limited (“Applicant”) seeks registration on the
Principal Register of the mark COLORBAR USA in standard characters for the
goods set forth below:1
After shave lotions; aromatic essential oils; artificial
eyelashes; baby oil; baby powder; bath oil; bath oils for
cosmetic purposes; bath powder; beauty creams; beauty
serums; bleaching preparations for cosmetic purposes;
body lotion; body powder; body scrub; concealers; cosmetic

1 Application Serial No. 86323815 was filed on June 30, 2014, under Sections 1(b) and 44(e)
of the Trademark Act, 15 U.S.C. §§ 1051(b) and 1126(e). The application is currently based
only on Section 44(e). No claim is made to the exclusive right to use the term “USA” apart
from the mark as shown.
Serial No. 86323815
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creams for skin care; cosmetic oils; cosmetic olive oil for
the face and body; cosmetic preparations; cosmetic
preparations for removing gel nails, acrylic nails, and nail
polish; cosmetic preparations for skin care; cosmetic
soaps; cosmetics, namely, compacts; cosmetics, namely, lip
primer; creamy face powder; dentifrices; deodorant for
personal use; deodorants and antiperspirants; essential
oils; essential oils for personal use; eye liner; eye make-
up; eye pencils; eye shadow; face powder; face powder
paste; facial oils; facial washes; fair complexion cream;
foot powder; fragrances and perfumery; lip gloss; lip liner;
lipstick; make up removing preparations; make-up
preparations; mascara; mask pack for cosmetic purposes;
nail care preparations; nail enamels; nail polish; nail
polish remover; nail polishing powder; nail-polish
removers; non-medicated skin creams; perfume; perfumed
powder; perfumed powders; perfumed soaps; perfumed
talcum powder; perfumes, eaux de cologne and
aftershaves; polishing, scouring and abrasive
preparations; powder for make-up; skin cleansers; skin
moisturizer; skin toners; sun screen; sun screen
preparations; talcum powders; tooth bleaching
preparations, in International Class 3.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 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 marks shown below as to be likely to cause confusion, or to cause
mistake, or to deceive. The cited marks are registered to two different entities for
the services set forth below.
THE COLOR BAR Hairdressing services and counseling namely, offering
advise [sic] regarding hair color in salons, in
International Class 44.2

2 Reg. No. 2991424, issued September 6, 2005. Renewed.
Serial No. 86323815
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Beauty salon services; Beauty salons; Hair color salon
services; Hair salon services; Hair salon services,
namely, hair cutting, styling, coloring, and hair
extension services, in International Class 44.3

After the Examining Attorney made the refusal final, Applicant filed a request
for reconsideration, which the Examining Attorney denied. Applicant then appealed
to this Board.
I. Evidentiary objection.
Applicant submitted within its brief a chart purporting to contain information
about fifteen third-party businesses whose names include the term COLOR BAR.4
The chart sets forth the name, city, and URL of the indicated businesses. No
evidence relating to these businesses was made of record during the prosecution of
the application. Applicant’s brief also cited Internet evidence, identified only by the
URL of a website, purporting to show another third-party business that uses the
term COLOR BAR.5 No evidence relating to this website was made of record during
the prosecution of the application. Finally, Applicant’s brief makes reference to an
online dictionary definition of the term “color bar.”6 Applicant did not attach a copy
of the definition to its brief; rather Applicant provided only the URL. The

3 Reg. No. 4186201, issued August 7, 2012.
4 Applicant’s brief at 4-5, 7 TTABVUE 9-10.
5 Id. at 8 and fn.4, 7 TTABVUE 13.
6 Id. at 9, fn.5, 7 TTABVUE 14.
Serial No. 86323815
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Examining Attorney objected to all of this evidence on the ground that it is
untimely.7
“The record in the application should be complete prior to the filing of an appeal.
The Trademark Trial and Appeal Board will ordinarily not consider additional
evidence filed with the Board by the appellant or by the examiner after the appeal
is filed.” 37 C.F.R. § 2.142(d). See also TBMP § 1207.01. In accordance with this
general rule, the Board has not considered the information, discussed above,
relating to third-party businesses using the term COLOR BAR.
Regarding the dictionary definition, when a party requests that the Board take
judicial notice of appropriate matter, it should provide a copy of the matter in
question. TBMP § 704.12(b). In this case, Applicant supplied only the URL for the
dictionary definition. The Board will not utilize a link to a website’s Internet
address to access the site to consider whatever content may appear therein. In re
Future Ads LLC, 103 USPQ2d 1571, 1572 (TTAB 2012); In re HSB Solomon
Associates, LLC, 102 USPQ2d 1269, 1274 (TTAB 2012). In any event, the dictionary
to which Applicant refers appears to be of German origin and it apparently is
intended to familiarize speakers of German with “Amerikanisches Englisch.”
Without more, it does not appear to be appropriate matter for judicial notice,
because in our view such a dictionary is not a “source whose accuracy cannot
reasonably be questioned.” Fed. R. Evid. 201(b)(2). Accordingly, we have not
considered it.

7 Examining Attorney’s brief, 9 TTABVUE 5.
Serial No. 86323815
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II. The refusal under Section 2(d).
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. 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 arguments and evidence relating to the
trade channels, similar marks in use, sophistication of relevant customers and the
care with which they select the goods and services.
A. The marks.
We first consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison
of the marks, but instead ‘whether the marks are sufficiently similar in terms of
their commercial impression’ such that persons who encounter the marks would be
likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation
omitted). The three marks are set forth below:

Serial No. 86323815
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COLORBAR USA
THE COLOR BAR

Applicant correctly urges that we must avoid “dissection” of the marks and must
consider the marks at issue in their entireties in reaching our ultimate conclusion.
However, there is nothing improper in giving more or less weight to a particular
feature of a mark, for rational reasons. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type of analysis appears to be
unavoidable.” Id.
In appearance and sound, the three marks are similar in that each includes the
term COLOR BAR or COLORBAR. However, the marks have certain distinguishing
features: USA in the case of Applicant’s mark; THE in the case of one cited mark;
and in the second cited mark the stylized CB design and the wording THE SALON,
all of which affect the appearance and sound of the marks.
Regarding the marks’ meaning, Applicant and the Examining Attorney disagree
as to the meaning of the element COLOR BAR. The Examining Attorney argues
that in the context of the respective goods and services, it means “the vast palette of
colors and treatments that can help consumers achieve their desired beauty
Serial No. 86323815
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results.”8 Applicant contends that COLOR BAR means, in the context of
Registrants’ services, “a salon where customers receive hair care services in the
form of hair dye treatments.”9 Applicant contends that in the context of its own
goods, which are cosmetics, the term COLORBAR “is neutral and has no known
meaning to consumers. … Instead of conjuring up images of hair styling services in
a color bar or salon, consumers are more likely to think that the wide spectrum of
hues of Applicant’s COLORBAR USA cosmetics is evocative of the color bar
observed in a rainbow and employed in fine art and photography.”10 Applicant
points out that “The Examining Attorney cites no evidence that COLORBAR or
COLOR BAR have the same meaning for cosmetics.”11 When we consider that the
services identified in the registrations refer to “hair color” and the “coloring” of hair,
it is clear that in the context of those services the term COLOR is likely to refer to
the color of hair or hair coloring. By contrast, in the context of Applicant’s cosmetics,
which make no reference to hair products, the word COLOR is more likely to refer
to the colors of cosmetics, such as make-up, lipstick or nail polish.
With respect to the meaning of BAR in the context of Registrants’ services, we
take judicial notice12 of the following dictionary definitions:

8 Examining Attorney’s brief, 9 TTABVUE 7.
9 Applicant’s reply brief at 6, 11 TTABVUE 8.
10 Applicant’s brief at 9, 7 TTABVUE 14.
11 Applicant’s reply brief at 7, 11 TTABVUE 9.
12 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 86323815
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5 a : a counter at which food or esp. alcoholic beverages
are served
… d : a counter or section of a store where a particular
item or items of merchandise are featured

174 WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY (1993) (emphasis added).
This definition supports Applicant’s suggestion that COLOR BAR may be perceived
to mean a commercial location at which customers can receive services relating to
hair coloring. This suggestion is further supported by evidence showing that a
number of hair salons refer to themselves as “salon and color bar,” indicating that
both terms, “salon” and “color bar,” indicate types of hair salons.13
There is no evidence of record to show the meaning of BAR in the context of
Applicant’s goods; however, the dictionary definition set forth above suggests that it
may be taken to mean “a counter or section of a store” where cosmetics may be
purchased. Nothing in the record suggests that it would refer to a palette of colors, a
rainbow, or a display used in “fine art and photography.”
Thus, we find that the marks at issue have some similarity in meaning to the
extent that they all include the term COLOR BAR or COLORBAR, which have
related, but not identical, meanings as used in the marks of Applicant and
Registrants. However, the distinguishing terms USA, CB and THE SALON convey
meanings absent from the other marks, creating some distinction in meaning.

13 See, e.g., Applicant’s response of March 5, 2015 at 19 (“Color Bar & Salon”); 20 (“Salon
and Color Bar”); 21 (“Salon and Color Bar”); 23 (“Salon One21 has incorporated the
European concept of the Color Bar, an interactive experience where you can create your
own signature hair color or highlights. In the Salon One21 Color Bar, you’ll enjoy an
intimate, thorough color consultation with your stylist in a bright, contemporary setting.”)
Serial No. 86323815
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Overall, as discussed, we find the marks to be similar in appearance, sound, and
meaning.
B. Similar marks in use in the marketplace.
As part of a du Pont analysis, we must consider “[t]he number and nature of
similar marks in use on similar goods [or services].” 177 USPQ at 567. Applicant
contends that the term COLOR BAR is commercially weak because of third-party
use of the term in the marketplace and argues that the cited marks are therefore
entitled to a narrow scope of protection.14 Applicant made of record a substantial
number of hair and beauty salon websites showing use of the terms COLOR BAR,
COLORBAR, and COLOUR BAR as components of their trade names.15
Representative trade names of this type include:
Shades Hair Color Bar & Salon The Color Bar Salon
Fringe Salon and Color Bar Vanity Salon & Color Bar
Sano Salon & Color Bar Color Bar Hair Studio
Fusion Color Bar Salon One21 & Colorbar
The Color Bar … hair salon Chroma Color Bar
BrynK Salon & Color Bar Tresses Color Bar Salon
Tom’s Color Bar Colorbar Salon
Kolorbar NYC Color Bar Salon
The Hair and Color Bar Colourbar
Colour Bar Studio Color Bar Salon & Spa

14 Applicant’s brief at 2-7, 7 TTABVUE 7-12.
15 Applicant’s response of March 5, 2015 at 20-29; and response of April 7, 2015 at 19-29.
Serial No. 86323815
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The Color Bar THECOLOR BARSALON
The Color Bar Hair Studio The Color Bar
Glam Colour Bar Salon & Supply Red Salon & Color Bar
The Color Bar Modern Hair Salon Tanglz Color Bar and Salon
Chromatics Salon & Color Bar Lush a Color Bar and Hair Salon
Posh Salon & Color Bar Beauty for Ashes Salon and Color Bar
Given that these are trade names, it should not be surprising that the websites
have other indicia of belonging to different businesses, and the Examining Attorney
has not argued that any of them are duplicative examples of a single business. They
represent businesses located in approximately 20 states, with more than one such
business in each of New York, North Carolina, Alabama, Florida, Texas, Illinois,
and California.
The Federal Circuit has stated that “evidence of third-party use of similar marks
on similar goods ‘can show that customers have been educated to distinguish
between different marks on the basis of minute distinctions.’” Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), quoting Juice Generation,
Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Such evidence is “powerful on its face, even where the specific extent and impact of
the usage has not been established.” Jack Wolfskin v. New Millennium Sports, 116
USPQ2d at 1136 (internal quotes omitted). “The weaker an opposer’s mark, the
closer an applicant’s mark can come without causing a likelihood of confusion and
Serial No. 86323815
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thereby invading what amounts to its comparatively narrower range of protection.”
Juice Generation v. GS Enters., 115 USPQ2d at 1674.
We find the evidence of widespread third-party use powerful and more than
sufficient to show that the terms COLOR BAR and COLORBAR are weak as source
indicators for services such as those of Registrants. Accordingly, we agree with
Applicant that, to the extent that Applicant’s mark resembles the cited marks
because it includes the term COLORBAR, Registrants’ marks are entitled to a
“comparatively narrower range of protection.”
C. The goods and services.
We next consider the similarity or dissimilarity of the goods and services as
identified in the application and the cited registrations. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162
(Fed. Cir. 2014); Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Because Applicant’s goods and Registrants’
services are not the same, we ask whether the goods and services are related in
some manner or whether the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012); In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB
2009).
Applicant’s goods encompass a wide range of cosmetics, such as bath oils, beauty
creams, nail polish, perfume, make-up, and skin cleansers, but not goods that are
specifically for hair care. Registrants do not offer goods, but hair services: the mark
Serial No. 86323815
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THE COLOR BAR is registered for hairdressing and advice regarding hair color in
salons; the stylized mark CB COLORBAR THE SALON is registered for hair salons
and beauty salons. The Examining Attorney has shown that a “beauty salon” is “an
establishment providing women with services to improve their beauty, such as
hairdressing, manicuring, facial treatment, and massage.”16
The Examining Attorney has submitted nine third-party registrations that
cover, on the one hand, goods such as make-up, skin care preparations, and nail
care preparations and, on the other hand, “hair salon” or “beauty salon” services.17
Third-party registrations that are based on use in commerce and which individually
cover a number of different goods and services may have some probative value to
the extent that they serve to suggest that the listed goods and services are of types
which may emanate from the same source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988).
In addition, the Examining Attorney made of record advertisements, found on
the Internet, showing that there are three brands that are associated with

16 Definition from , Office Action of March 22, 2015 at 61.
17 Office Action of March 22, 2015 at 13-65. The Examining Attorney also submitted one
registration covering goods similar to Applicant’s on the one hand and “providing
information” about beauty salons and beauty treatments on the other (Reg. No. 4250528).
While this registration may be relevant to show a commercial relationship between
Applicant’s goods and the “advise [sic] regarding hair color” set forth in one of the cited
registrations, a single registration does little to prove that point. Accordingly, we will not
focus on a comparison of Applicant’s goods with the Registrant’s “advise” services.
Serial No. 86323815
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cosmetics as well as hair or beauty salons: AVEDA, ELIZABETH ARDEN, and
ULTA.18
Applicant argues that it
provided evidence of websites for over thirty salons, each
of which provides hair and beauty salon services. None of
the over thirty salons … sell any goods whatsoever under
the same brand that also identifies their services. For
example, The Color Bar in Lexington, KY uses KEUNE,
KERASTASE, COLORPROOF and BABOR, among other
brands [citation omitted], The ColorBar Salon in
Lafayette, LA offers branded goods under third-party
marks MOROCCANOIL, KERATIN COMPLEX, and
KEVIN MURPHY, and not the house mark [citation
omitted], and Fringe Salon and Color Bar in Houston, TX
carries EUFORA, NO. 4, and ALOXXI and JANE
IREDALE [citation omitted]. This alone is compelling
evidence that consumers expect that salons will offer to
the consumer their respective goods and services under
separate marks – assuming that hair and beauty salons
sell goods at all.19
Applicant’s evidence does indeed support the suggestion that the more common
practice of hair and beauty salons is to use, in providing their services, beauty
products marked with third-party brands. However, we find the Examining
Attorney’s evidence sufficient to indicate that there is a relationship between
cosmetics and beauty salon services such that, if both were offered under a single
distinctive mark, customers would likely perceive a connection between them.

18 Office Action of March 22, 2015 at 43-58; Office Action of October 16, 2014 at 23-37. The
Examining Attorney has also shown that the PAUL MITCHELL brand is associated with
hair salons and hair care products (Office Action of October 16, 2014 at 17-22). However,
this evidence is of limited persuasive value, because Applicant’s identification of goods does
not specifically include hair care products.
19 Applicant’s reply brief at 3, 11 TTABVUE 5.
Serial No. 86323815
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D. Trade channels.
Although the Examining Attorney mentions the similarity of trade channels as
one of the most relevant du Pont factors, she does not argue the point in her brief.
The evidence of record relates only obliquely to this point. While it seems likely that
some cosmetics are used in the course of providing beauty salon services, there is
extremely little evidence showing that salons are a channel through which
cosmetics are actually sold. The Examining Attorney does not point to any specific
evidence of this type. We therefore find that the evidence on this point is too scant
for us to make a finding as to this du Pont factor.
E. Care and sophistication of customers.
Applicant argues that Registrants’ customers are sophisticated and careful in
the selection of the relevant services:
Consumers of salon services subject themselves to painful
(waxing and threading), somewhat permanent (perms)
and image-changing (hair coloring) procedures.
Consumers of such services have to be discerning, because
the products are applied directly to the skin and hair, and
could have disastrous – and embarrassing – results if the
services are substandard. Accordingly, the respective
consumers exercise extreme caution when purchasing
salon services.20
Applicant claims that certain hair treatments are “not inexpensive,” pointing to
evidence of record showing services priced at $325, $300, and “$220+.” “But, even if
the costs for these services were low, consumers are still discerning, because
consumers of hair coloring services are particularly demanding about the outcome

20 Applicant’s brief at 14, 7 TTABVUE 19.
Serial No. 86323815
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after receiving hair coloring services. Thus, this factor is not measured by cost
alone.”21
The Examining Attorney points out that “Applicant’s goods can be relatively
inexpensive and easy to purchase.”22 The record shows “lip saver” offered at $8.50;
lipstick at $16; and foundation make-up at $24.23 The Examining Attorney points
out evidence of haircuts offered at $18, $25 and $35, and she observes, “Even if
there were negative consequences to these purchases, hair grows back; in the
interim it can be redyed, recut, and restyled relatively easily.”24
Applicant’s argument that the relevant customers are sophisticated or careful is
not supported by evidence of record. Rather, the evidence indicates that the relevant
customers are ordinary consumers and that the prices of some of the goods and
services at issue are relatively moderate. There is no reason on this record to
perceive the relevant customers as particularly sophisticated or as exercising more
than a moderate degree of care.
F. Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The evidence
shows that the common element appearing in Applicant’s mark and the cited
registered marks, i.e., COLOR BAR or COLORBAR, is quite weak in the field of

21 Applicant’s reply brief at 7, 11 TTABVUE 9.
22 Examining Attorney’s brief, 9 TTABVUE 14.
23 Office Action of October 16, 2014 at 29-30.
24 Examining Attorney’s brief, 9 TTABVUE 14.
Serial No. 86323815
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Registrants’ services and should, therefore, be accorded a relatively narrow scope of
protection. Applicant’s mark is sufficiently different from the cited marks under the
circumstances that, despite the relationship between the goods and services,
customers would not be likely to believe that Applicant’s goods, offered under
Applicant’s mark, emanate from the same source as Registrants’ services offered
under such a commonly used term in the hair salon field.
Decision: The refusal to register is reversed.