Cosméticos Pai, S.A. de C.V.

Trademark Trial and Appeal Board

Jun 20, 2018

No. 87067786 (T.T.A.B. Jun. 20, 2018)

Mailed: June 20, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
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In re Cosméticos Pai Pai, S.A. de C. V.
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Serial No. 87067786
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Samuel F. Pamias of Hoglund & Pamias PSC,
for Cosméticos Pai Pai, S.A. de C. V.
Heather Schubert, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.
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Before Cataldo, Lynch and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Cosméticos Pai Pai, S.A. de C. V. (“Applicant”) seeks registration on the Principal
Register of the stylized mark PAI PAI, as displayed below, for “cosmetics” in
International Class 3.1

1 Application Serial No. 87067786, filed on June 10, 2016, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b). The description of the mark statement reads as follows: “The mark consists
of two stylized words “PAI PAI”, both in lower case.” The application also includes a
translation statement that reads as follows: “The wording PAI PAI has no meaning in a
foreign language.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87067786
2

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 of
likelihood of confusion with the following three registered marks owned by the same
Registrant:
1. PAI (in standard characters) for various skin, hair and nail care
preparations, makeup products, soaps, aromatherapy products, including
“cosmetics” in International Class 3;2
2. PAI SKINCARE (in standard characters; SKINCARE disclaimed) also for
various skin, hair and nail care preparations, makeup products, soaps,
aromatherapy products, as well as “cosmetics” in International Class 3;3
and
3. PAI and design, as displayed below, for various soaps, skin and hair care
products, cosmetics and aromatherapy products in International Class 3.4

2 Registration No. 4683780, issued on February 10, 2015.
3 Registration No. 4665407, issued on January 6, 2015; the registration includes the following
translation: “The English translation of “PAI” in the mark is “GOODNESS”.
4 Registration No. 4085683, issued on January 17, 2012. The description of the mark
statement reads as follows: “The mark consists of the wording “Pai” with the letter “P” formed
by a leaf design.” Sections 71 & 15 combined affidavit filed on January 16, 2018. On February
7, 2018, the Post Registration Branch issued an Office action stating that the specimen
submitted with Registrant’s Sections 71 & 15 combined affidavit was unacceptable because
it consists of advertising for goods and allowed Registrant six months from the issuance date
of the office action to submit an acceptable specimen.
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When the refusal was made final, Applicant appealed. We affirm the refusal to
register.
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
In this case, we have based our Section 2(d) likelihood of confusion findings and
decision on only one of the cited registrations, i.e., on Registration No. 4683780, which
is of the standard character mark PAI for the International Class 3 goods identified
in the registration that include “cosmetics.” A finding of likelihood of confusion
between Applicant’s mark and this previously registered mark suffices by itself to bar
registration of Applicant’s mark under Section 2(d); we need not reach likelihood of
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confusion as to the other two cited registrations. See In re Max Capital Grp, Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1201-02 (TTAB 2009).
A. Similarity of the Goods
We turn first to a comparison of the goods identified in Applicant’s application
vis-à-vis the goods identified in the cited registration, the second du Pont factor. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Comps. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard
Press Inc., 281 F.2d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
Registration must be refused if Applicant’s mark for any of its identified goods is
likely to cause confusion with the Registrant’s mark for any of its identified goods.
See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981). Applicant’s goods are identified as “cosmetics.” The identification of
goods in cited Registration No. 4683780 includes “cosmetics.” Accordingly, the goods
are identical in part.
Thus, the second du Pont factor strongly favors a finding of likelihood of confusion.
B. Similarities in Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because Applicant’s goods and Registrant’s goods are identical in part,
and there are no restrictions on those goods in the respective identifications, these
identical in part goods are “‘presumed to travel in the same channels of trade to the
same class of purchasers.”’ In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
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Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 62 USPQ2d at 1005)
(finding that the Board is entitled to rely on this legal presumption in determining
likelihood of confusion); United Glob. Media Grp. Inc. v. Tseng, 112 USPQ2d 1039,
1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health
Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
In view of the foregoing, the third du Pont factor also weighs in favor of finding a
likelihood of confusion.
C. Similarities of the Marks
We finally address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “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 [owners].” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because this factor is based on the marks in their entireties, our 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 Nat’l
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 233, 234 (CCPA 1981) (“It
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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 assigning more or less weight to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
Applicant’s mark is . The cited mark is PAI in standard characters.
Both marks are similar in sound and appearance since they are both comprised of the
term PAI. Moreover, Applicant’s mark simply repeats the cited registered mark PAI.
The repetition of the term PAI in Applicant’s mark is simply insufficient, in overall
terms of sound, appearance, connotation and commercial impression, to distinguish
such mark from the cited PAI mark. Mere repetition does not necessarily create a
new and different meaning or commercial impression of a mark as compared to its
separate components. Cf. In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, 1155 (TTAB
2009) (repeating a generic name does not turn an otherwise invalid designation into
a protectable trademark; TIRES TIRES TIRES generic for retail tire store services);
In re Litehouse, Inc., 82 USPQ2d 1471, 1474 (TTAB 2007) (mere repetition of a
descriptive term does not negate the mere descriptiveness of the mark as a whole;
CAESAR!CAESAR! merely descriptive of salad dressing); In re Disc Jockeys, Inc., 23
USPQ2d 1715, 1716 (TTAB 1992) (DJDJ merely descriptive of disc jockey services;
repetition of DJDJ does not render mark any less descriptive by repeating the letters).
Further, Registrant’s mark is a standard character mark, and marks appearing
in standard character form may be displayed in any stylization, font, color and size,
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including the identical stylization of Applicant’s PAI PAI mark, because the rights
reside in the wording and not in any particular display or rendition. See Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (a mark in standard
character form is not limited to the depiction thereof in any special form).
While we have not overlooked the stylization of Applicant’s mark or the repetition
of the term PAI in Applicant’s mark, we nonetheless conclude that Applicant’s mark
and the cited mark, when considered in their entireties, are substantially similar.
Therefore, the first du Pont factor supports a conclusion that confusion is likely,
particularly considering that Applicant’s goods are identical in part to those identified
in cited Registration No. 4683780. See Coach Servs., 101 USPQ2d at 1722 (“When
trademarks would appear on substantially identical goods, ‘the degree of similarity
necessary to support a conclusion of likely confusion declines.’”) (internal citations
omitted).
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that the marks at issue are similar and that Applicant’s identified goods are
identical in part to Registrant’s goods and, as such, are presumed to move in the same
trade channels and would be offered to the same classes of purchasers, we conclude
that Applicant’s mark, as used in connection with the goods identified in the
application, so resembles the cited PAI mark in Registration No. 4683780 as to be
likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark
Act.
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Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.