Dial Brands, Inc.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 78077135 (T.T.A.B. Aug. 29, 2003)

Mailed:
8/29/03
Paper No. 14
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dial Brands, Inc.
________
Serial No. 78/077,135
_______
Frank T. Barber of The Dial Corporation for Dial Brands,
Inc.
Florentina Blandu, Trademark Examining Attorney, Law Office
104 (Janice O’Lear, Managing Attorney).
_______
Before Cissel, Seeherman and Bucher, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 2, 2001, applicant, an Arizona corporation,
filed the above-identified application to register the mark
“TROPICAL ESCAPE” on the Principal Register for “personal
care products, namely, hand and body soap in bar and liquid
form, body wash, hand and body lotions and moisturizers,
body scrubs, defoliators, facial cleansers, facial
cleansing wipes, body deodorants and antiperspirants, and
body sprays,” in Class 3. The basis for filing this
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. S.N. 78/077,135
2
application was applicant’s assertion that it possessed a
bona fide intention to use the mark in commerce in
connection with these goods.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that the same mark is registered1 for, inter
alia, “candles,” in Class 4, and that if applicant were to
use the mark on the goods listed in the application,
confusion would be likely. She reasoned that the products
set forth in the registration and the application are of
types that emanate from the same businesses and travel
through the same channels of trade to the same consumers.
Enclosed as support for these conclusions were copies
of thirteen trademark registrations based on use in
commerce wherein the goods listed include both candles and
personal care products such as soap. Nine of these
registrations are owned by third parties, but four of them
are owned by applicant itself, or by applicant’s parent
corporation. Examples of the registrations include the
following: BIZZY BODY BUBBLES is registered by applicant
for “personal care products, namely soap,” in Class 3, and
1 Reg. No. 2,321,157, issued on the Principal Register to Sears,
Roebuck and Co. on February 22, 2000.
Ser No. S.N. 78/077,135
3
for “candles,” in Class 42; MIXED-UP BERRIES is registered
by applicant for “personal care products, namely skin
soap,” in Class 3, and for “candles,” in Class 43; STAR
SHINE is registered by A.K.A. Saunders, Inc. for “shower
gel,” “bath crystals” and “soap for hands and body,” in
Class 34; CRISP is registered by Peacock Alley, Inc. for
“scented skin soap,” in Class 3, and for “scented candles,”
in Class 45; LAVENDER FLOWERS is registered by Bath & Body
Works for “shower gel, body wash, bubble bath, hand soap,
body soap, and face soap,” in Class 3, and for “candles,”
in Class 46; and INANNA is registered by Gloria Natale for
“soap,” in Class 3, and “”scented candles,” in Class 47.
Applicant responded to the refusal to register with
argument that confusion would not be likely because the
personal cars products listed in the application are
unrelated to candles. Applicant noted that these goods
2 Reg. No. 2,352,768, issued on the Principal Register on May 23,
2000.
3 Reg. No. 2,358,653, issued on the Principal Register on June
13, 2000.
4 Reg. No. 2,263,470, issued on the Principal Register on July
20, 1999.
5 Reg. No. 2,208,093, issued on the Principal Register on
December 8, 1999.
6 Reg. No. 2,447,247, issued on the Principal Register on April
24, 2001.
7 Reg. No. 2,464,148, issued on the Principal Register on June
26, 2001.
Ser No. S.N. 78/077,135
4
are, “by all measurements, mutually exclusive; they are
used for mutually exclusive purposes; they are not
functionally related; there is no overlapping in function;
they are not competitive; and they are classified in
different classes in the U.S. Patent and Trademark Office.
There is an obvious competitive distance between the
goods.” As to the registrations encompassing candles and
soap, applicant contended that the Examining Attorney had
not demonstrated how this evidence could establish that
these goods are related. Applicant took the position that
the mere fact that one company may register its mark for
goods in more than one class does not establish that the
goods in those classes are related. Applicant pointed out
that the owner of the cited registration, Sears Roebuck,
operates department stores which feature a wide variety of
otherwise unrelated products. In a similar sense,
applicant contended that the fact that it has itself
registered marks for many different products, including
both candles and soaps, does not, by itself, establish that
these goods are commercially related in such a way that the
use of the same marks on them would lead consumers to
assume that they have a common source.
The Examining Attorney was not persuaded by
applicant’s arguments, and in her second Office Action, she
Ser No. S.N. 78/077,135
5
continued and made final the refusal to register based on
likelihood of confusion. Submitted with the final refusal
were copies of sixteen applications and registrations owned
by applicant wherein the goods consist of or include
“candles.” The Examining Attorney concluded that the fact
that applicant itself apparently markets both candles and
soap is an indication that consumers presented with the
same mark on both products have a basis for assuming a
common source for both.
In response to the final refusal to register,
applicant submitted a request for reconsideration with
additional evidence and argument, as well as a Notice of
Appeal. Applicant made of record 49 subsisting
registrations or pending applications for marks in Class 3
which contain the word “TROPICAL,” and 23 such
registrations or applications for marks which consist of or
include the word “ESCAPE.” Applicant argued that in order
for the Examining Attorney to expand the scope of
protection accorded to the registered mark to include “non-
competing goods” such as those identified in the
application, the registered mark must be a strong mark, but
that the third-party applications and registrations of
marks with either “TROPICAL” or “ESCAPE” in them “has
Ser No. S.N. 78/077,135
6
seriously eroded the scope of protection to be given to
these words.” (brief, p. 2).
The Board instituted the appeal, but suspended action
on it and remanded the application to the Examining
Attorney for reconsideration in light of the additional
evidence and argument applicant based on it. The Examining
Attorney was not persuaded to withdraw the refusal to
register, however. She issued a brief Office Action
maintaining her position, and the application was returned
to the Board, which resumed action on the appeal.
Applicant filed its brief on appeal, the Examining
Attorney filed her appeal brief and applicant filed a reply
brief, but applicant did not request an oral hearing before
the Board. Accordingly, we have resolved this appeal based
on consideration of the written arguments and record.
The sole issue to be resolved is whether confusion
with the cited registered mark would be likely within the
meaning of Section 2(d) of the Lanham Act if applicant were
to use the mark it seeks to register in connection with the
goods specified in the application. In view of the fact
that the mark which applicant has chosen is identical to
the registered mark, we turn to the question of whether
applicant’s goods are related to those listed in the cited
registration in such a way that the use of the same mark on
Ser No. S.N. 78/077,135
7
all of them would be likely to result in confusion, mistake
or deception.
As noted above, the Examining Attorney contends that
the record establishes that confusion would be likely
because the marks are identical and the goods specified in
the application are related to those identified in the
registration. Evoking the image of a candle-lit bubble
bath, she argues that both candles and soap are sold
through the same trade channels to the same ordinary
consumers for possible use at the same time as
“aromatherapy.” Applicant takes the position that
differences in the natures and the uses of these products
mandate the conclusion that the use of the same mark on
them would not be likely to cause confusion, especially in
view of the fact that “the cited mark in the present case
is not arbitrary and fanciful and is indeed subject to
weakness created by extensive third-party usage.” (reply
brief, p. 3).
We cannot adopt applicant’s position in this regard.
Of course, the third-party registrations to which applicant
refers8 are not evidence of the use of the marks therein,
but even more significantly, those marks are not the same
Ser No. S.N. 78/077,135
8
mark that applicant here seeks to register, so even if we
were presented with evidence of the widespread uses of
these marks, we still would not have evidence of the
weakness of the cited registered mark. As the Examining
Attorney points out, the only registration for the mark
“TROPICAL ESCAPE” is the one she has cited as a bar under
Section 2(d) of the Act. The refusal to register is not
based on only the word “TROPICAL” or only the word
“ESCAPE,” but rather pertains to the entire mark, the
combined term “TROPICAL ESCAPE,” which creates a commercial
impression that is distinct from the impressions created by
the marks to which applicant’s evidence is directed. There
is absolutely no evidence of any use of the cited
registered mark by third parties, much less any evidence
that the use of this mark has been so extensive that
consumers of the goods at issue in this appeal have become
so familiar with such uses that they would not be likely to
be confused by the use of the same mark on related goods.
Contrary to applicant’s argument, the Examining
Attorney has demonstrated that the “candles” listed in the
cited registration are commercially related to the goods
8 With respect to applicant’s reliance on various third-party
applications, such applications are probative only of the fact
that they have been filed.
Ser No. S.N. 78/077,135
9
identified in the application as “soap.” “Although third-
party registrations are not evidence that the marks shown
therein are in commercial use, or that the public is
familiar with them, nevertheless third-party registrations
which individually cover a number of different items and
which are based on use in commerce may have some probative
value to the extent that they serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source.” In re Albert Trostel & Sons
Co., 29 USPQ 2d 1783, 1784 (TTAB 1993), citing In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). The
thirteen registrations made of record by the Examining
Attorney, especially the four owned by applicant or its
parent corporation, demonstrate that candles and soap are
products which consumers may expect to come from a single
source. In fact, the record shows not only that applicant
and others have registered their marks for both of these
types of products, but that in addition to the instant
application listing soap, applicant has registered and
applied to register a number of marks for candles.
Applicant has not challenged or rebutted these facts.
In summary, because the mark applicant seeks to
register is identical to the cited registered mark and
because the record demonstrates that consumers have a basis
Ser No. S.N. 78/077,135
10
upon which to expect that the goods specified in the
application may emanate from the same source as the goods
identified in the cited registration, confusion would be
likely if applicant were to use the mark it seeks to
register in connection with the goods listed in the
application.
We do not doubt the propriety of this conclusion, but
even if we did, any such doubt would have to be resolved in
favor of the prior user and registrant, and against the
applicant, who, as the second comer, has a duty to select a
mark which is not likely to cause confusion with a mark
already in use in the same field of commerce. Burroughs
Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB
1979).
DECISION: The refusal to register based on likelihood
of confusion under Section 2(d) of the Lanham Act is
affirmed.