D-CocoonDownload PDFTrademark Trial and Appeal BoardMar 20, 2009No. 77164717 (T.T.A.B. Mar. 20, 2009) Copy Citation Mailed: March 20, 2009 jtw UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re D-Cocoon ________ Serial No. 77164717 _______ D-Cocoon Pro Se Chris Wells, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Rogers, Walsh and Mermelstein, Administrative Trademark Judges. Opinion by Walsh, Administrative Trademark Judge: D-Cocoon (applicant) has applied to register the mark shown below for “body lotion; essential oils; facial lotion; hair colorants; hair conditioner; hair dyes; hair gels; hair shampoo; hand lotions; shampoos” in International Class 3.1 1 Application Serial No. 77164717, filed April 24, 2007, claiming both first use of the mark anywhere and first use of the mark in commerce on April 17, 2007. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77164717 2 The application includes the following statements: The mark consists of a Swallowtail Butterfly with the text "Chrysallis." Color is not claimed as a feature of the mark. The stippling is a feature of the mark. The foreign wording in the mark translates into English as "Cocoon." The application also includes a reference to Trademark Act Section 2(f), 15 U.S.C. § 1052(f).2 The Examining Attorney has issued a final refusal under Trademark Act Section 2(d), 15 U.S.C. 1052(d), on the grounds that applicant’s mark is likely to be confused with the mark CHRYSALIS in standard characters in Registration No. 3421566 for services identified as “health and beauty spa services, namely, cosmetic, body, nail, skin and hair care services; beauty salons” in International Class 44. The registration issued on May 6, 2008. The registration 2 The Examining Attorney has advised applicant that the reference to Section 2(f) and the “translation” are unnecessary and would not appear in a registration. The Examining Attorney provided a definition from an English-language dictionary for “chrysalis.” Serial No. 77164717 3 claims first use of the mark anywhere and first use of the mark in commerce on February 1, 2005. Applicant has appealed. Applicant and the Examining Attorney have filed briefs. We affirm. Likelihood of Confusion Section 2(d) of the Trademark Act precludes registration of an applicant’s mark “which so resembles a mark registered in the Patent and Trademark Office… as to be likely, when used on or in connection with the goods of the applicant, to cause confusion…” 15 U.S.C. § 1052(d). The opinion in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the factors to consider in determining likelihood of confusion. Here, as is often the case, the crucial factors are the similarity of the marks and the similarity of the goods and services in the application and the cited registration. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [and services] and differences in the marks.”). The Goods and Services The goods and services in the application and the cited registration need not be identical to find a Serial No. 77164717 4 likelihood of confusion under Trademark Act Section 2(d). They need only be related in such a way that the circumstances surrounding their marketing would result in relevant consumers mistakenly believing that the goods and services originate from or are associated with the same source. On-Line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The goods identified in the application are “body lotion; essential oils; facial lotion; hair colorants; hair conditioner; hair dyes; hair gels; hair shampoo; hand lotions; shampoos.” The services identified in the cited registration are “health and beauty spa services, namely, cosmetic, body, nail, skin and hair care services; beauty salons.” In this appeal, applicant has not discussed the goods and services. The Examining Attorney argues that the goods and services are complementary and states, “Applicant’s goods are of a type that would ordinarily be used in the performance of registrant’s beauty services.” Examining Attorney’s Brief at 6. Also, the Examining Attorney has provided several third-party, use-based registrations showing that the same Serial No. 77164717 5 mark has been registered for both the goods in the application and the services in the cited registration, for example: Registration No. 3152143 which includes, among other things, beauty salon services and shampoo, conditioner and body lotions; Registration No. 3455249 which includes, among other things, beauty salon services and essential oils, lotions, shampoo and conditioner; and Registration No. 3255853 which includes, among other things, beauty salon services and shampoo, conditioner and skin lotions. See Attachments to Office Action of August 13, 2008. The Examining Attorney has also provided examples of used-based, third-party registrations which specify that the types of products identified in the application may be sold through service businesses like the one identified in the cited registration. For example, Registration No. 3202905 identifies the goods as “tanning products, namely suntan lotions and moisturizing creams sold only in professional tanning salons and beauty salons.” Id. These third-party registrations provide evidence that the goods in the application and the services in the cited registration are the types of goods and services which may emanate from the same source. In re TSI Brands Inc., 67 Serial No. 77164717 6 USPQ2d 1657, 1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Accordingly, we conclude that the goods identified in the application and the services identified in the cited registration are closely related. The Marks We now proceed to compare applicant’s mark with the cited mark. In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Also, “… it is well established that the test to be applied in determining likelihood of confusion is not whether marks are distinguishable on the basis of a side- by-side comparison but rather whether they so resemble one another as to be likely to cause confusion, and this necessarily requires us to consider the fallibility of memory over a period of time. That is to say, the emphasis must be on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks.” Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations omitted). Serial No. 77164717 7 Furthermore, as the Court of Appeals for the Federal Circuit observed, “… in articulating reasons for reaching a conclusion on the issue of confusion, 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 consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Applicant argues that the marks differ. Specifically, applicant argues that the butterfly design in its mark is the dominant element. Applicant states, “The Examining Attorney does not address the larger, prominent display, or dominant position of the butterfly design in applicant’s mark in determining that the word portion is the dominant feature.” Applicant’s Brief at 1. On the other hand, the Examining Attorney argues that the marks are similar when viewed in their entireties. Specifically, the Examining Attorney argues that the word element is the dominant element in applicant’s mark, and the only element in the cited mark. The Examining Attorney argues further that CHRYSALLIS is dominant in applicant’s mark because word elements in marks are generally more Serial No. 77164717 8 important “… because consumers will call for the goods and/or services in the marketplace by that portion…” citing In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) and other cases. We concur with the Examining Attorney and conclude that the marks, when viewed in their entireties, are similar. First, and most importantly, we conclude here, as is most often the case, that the word elements in the marks are dominant. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997). As the Examining Attorney notes, it is the word element which consumers will verbalize in requesting or discussing applicant’s goods. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Appetito Provisions Co. Inc., 3 USPQ2d at 1554. We find applicant’s arguments that this is a case where we should depart from this general rule of construction unpersuasive. In this case, the design element in applicant’s mark is a significant element, but it is not more significant than the word element. Applicant discounts the importance of CHRYSALLIS in its mark entirely without justification. CHRYSALLIS is not just the only word element in applicant’s Serial No. 77164717 9 mark, it is a highly distinctive word element. Of course, CHRYSALIS is the only element in the cited mark. Because CHRYSALLIS/CHRYSALIS is the dominant element in both marks we conclude that the marks are similar in appearance. The difference in spelling, the double “LL” in applicant’s mark, is utterly insignificant. The marks are not just similar but identical in pronunciation. As to connotation, the Examining Attorney has provided a definition of “chrysalis” from the ENCARTA dictionary which states, in relevant part: “2. insect cocoon: the hard cocoon that protects a butterfly, moth or other pupa during its change from larva to adult.” See Attachment to Office Action dated October 8, 2008 (emphasis added). Thus, the design and word elements in applicant’s mark possess similar connotations, a connotation which is similar to, if not identical to the connotation of the cited mark. To the extent either mark may have a connotation, we conclude that both marks would connote the cocoon which protects a butterfly in development. Thus, both marks may suggest that the relevant products and services will protect the user and produce butterfly-like beauty. The same analysis essentially applies with regard to the commercial impressions of the marks. Serial No. 77164717 10 Therefore, we conclude that applicant’s CHRYSALLIS and Design mark and the cited CHRYSALIS mark are similar in appearance, sound, connotation and commercial impression, and similar overall. Conclusion After considering all evidence and arguments bearing on the du Pont factors, including those not specifically discussed here, we conclude that there is a likelihood of confusion between applicant’s CHRYSALLIS and Design mark when used in connection with “body lotion; essential oils; facial lotion; hair colorants; hair conditioner; hair dyes; hair gels; hair shampoo; hand lotions; shampoos” and the cited CHRYSALIS mark when used in connection with “health and beauty spa services, namely, cosmetic, body, nail, skin and hair care services; beauty salons.” Decision: We affirm the refusal under Trademark Act Section 2(d). Copy with citationCopy as parenthetical citation