D-Cocoon

Trademark Trial and Appeal Board

Mar 20, 2009

No. 77164717 (T.T.A.B. Mar. 20, 2009)

Mailed:
March 20, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re D-Cocoon
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Serial No. 77164717
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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
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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
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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
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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
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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
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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
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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
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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).