Edgar Osorio

Trademark Trial and Appeal Board

Jun 27, 2014

No. 85686148 (T.T.A.B. Jun. 27, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: June 27, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Edgar Osorio _____ Serial No. 85686148 _____ Matthew H. Swyers of The Trademark Company for Edgar Osorio. Toby E. Bulloff, Trademark Examining Attorney, Law Office 119, J. Brett Golden, Managing Attorney. _____ Before Seeherman, Lykos and Adlin, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: Edgar Osorio (“Applicant”) seeks registration on the Principal Register of the mark for “Body lotion; Body scrub; Body sprays; Body wash; Cosmetics; Make-up” in International Class 3.1 The description of the mark is as 1 Application Serial No. 85686148, filed June 25, 2012 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The application alleges November 2011 as the date of first use Serial No. 85686148 - 2 - follows: “The mark consists of the stylized design of a human face. Half of the face displays terms [sic] ‘REFINE’ vertically.” Color is not claimed as a feature of the mark. Applicant has appealed the Trademark Examining Attorney’s final refusal to register the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles the following three registered marks owned by Lola Cosmetics, LLC (“Registrant”) that, when used on or in connection with Applicant’s identified goods in International Class 3, it is likely to cause confusion or mistake or to deceive. Registration No. 3521263 for the mark REFINE EYE on the Principal Register in standard character format for “Cosmetics, namely, perfecting eye primer” in International Class 3, with a disclaimer of EYE;2 Registration No. 3382415 for the mark REFINE PRIME on the Principal Register in standard character format for “non-medicated skin treatment priming lotions, creams and preparations to be applied to the skin prior to foundation” in International Class 3, with a disclaimer of PRIME;3 and Registration No. 3362865 for the mark REFINE SHINE on the Principal Register in standard character format for “non-medicated skin treatment priming lotions to be applied to skin prior to foundation” in International Class 3.4 . anywhere and in commerce. The application also includes “Bracelets; Earrings; Jewelry; Necklaces; Rings” in International Class 14, but the application in that class is not the subject of this appeal. 2 Registered October 21, 2008, alleging December 31, 2006 as the date of first use anywhere and February 28, 2007 as the date of first use in commerce. 3 Registered February 12, 2008, alleging July 2006 as the date of first use anywhere and August 2006 as the date of first use in commerce; Section 8 affidavit accepted. 4 Registered January 1, 2008, alleging June 10, 2006 as the date of first use anywhere and in commerce; Section 8 affidavit accepted. Serial No. 85686148 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the Request for Reconsideration, the appeal was resumed. For the reasons set forth below, we affirm the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re Majestic Distilling Company, Inc., 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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors, are discussed below. A. The Goods First we compare Applicant’s and Registrant’s respective goods as they are identified in the application and each registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Applicant argues that the goods as identified in his application and the cited registrations are significantly Serial No. 85686148 - 4 - different because his products are designed for men whereas Registrant’s goods are intended for women. As Applicant contends: Applicant’s mark is used exclusively in connection with a high quality complexion enhancer for men. Specifically, the …mark is used with a 100% mineral, non-comedogenic product intended to cover up any facial imperfections such as acne, acne scars, or blemishes. In the alternative, the Lola Cosmetics LLC marks are used in conjunction with a line of makeup products for women…[s]pecifically…with an anti-shine gel, foundation, and eye primer. Applicant’s Brief, p. 5. See Request for Reconsideration, Affidavit of Edgar Osorio, ¶¶1-2, Ex. 6. Applicant also states that other companies in the industry specialize exclusively in mineral complexion enhancers for men, such as Jane Iredel, Erno Laszlo, and Artdeco. See id. at ¶2, Ex. 6 (B-D). Applicant’s arguments are unpersuasive. As explained above, we must compare the goods as identified “regardless of what the record may reveal as to the particular nature of the goods.” Octocom Systems, Inc., 16 USPQ2d at 1787 (internal citations omitted). None of the goods listed in Applicant’s application or any of the cited registrations is restricted by gender. As a result, Applicant’s and Registrant’s goods, as identified, must be deemed to be used by both men and women. In any event, even if we were to assume that Registrant’s goods are used only by women, Applicant’s goods as identified may be used by women as well. In fact, Applicant’s identified “make-up” are products that are more commonly used by women. With regard to the registered mark REFINE EYE for “Cosmetics, namely, perfecting eye primer,” Applicant overlooks that his identified goods also include the broadly worded designation “cosmetics.” This particular item in Applicant’s Serial No. 85686148 - 5 - identification of goods is sufficiently broad to encompass Registrant’s more specific “Cosmetics, namely perfecting eye primer.” Hence, Applicant’s goods are, in part, legally identical to the goods in Registration No. 3521263. Likewise, the remaining two cited registrations for the marks REFINE PRIME and REFINE SHINE also consist of products legally identical to “cosmetics.” “Cosmetics” is defined as “a powder, lotion, lipstick, rouge, or other preparation for beautifying the face, skin, hair, nails, etc….” Definition of “cosmetics” obtained from www.dictionary.com (Request for Reconsideration). This term is so broad as to encompass both “non-medicated skin treatment priming lotions, creams and preparations to be applied to the skin prior to foundation” and “non-medicated skin treatment priming lotions to be applied to skin prior to foundation.” (emphasis added). The fact that some of the goods identified in the application are legally identical to the goods identified in each of the cited registrations weighs in favor of a finding of likelihood of confusion. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application). We also note that while Applicant has presented evidence and argues that his particular brand of lotions are designed solely for the face, not body, this is not reflected in the identification. The listings for body wash, body scrub, body spray and body wash show that Applicant is seeking to register his mark for goods for use on the body. Serial No. 85686148 - 6 - In sum, the second du Pont factor weighs in favor of finding a likelihood of confusion. B. Trade Channels Next we consider established, likely-to-continue channels of trade. Applicant contends that his products and Registrant’s travel in disparate trade channels because Applicant’s goods are currently offered exclusively online at the website www.refineformen.com,5 whereas Registrant’s goods are sold primarily at Lola Cosmetics retail stores. Applicant further argues that his goods are marketed through word of mouth, informational fliers, direct sales calls, and social media (e.g., Twitter, Facebook and YouTube), while Registrant’s are advertised only via its official company web site. See Request for Reconsideration, Affidavit of Edgar Osorio, ¶¶4-5, Ex. F. The proper focus, however, is on the channels of trade for the goods as they are identified in the involved application and registrations as opposed to the “real-world conditions.” See Stone Lion Capital Partners, 110 USPQ2d at 1162. Because the identifications in the application and registrations have no restrictions on channels of trade, we must presume that the goods travel in all channels of trade appropriate for such goods, which the record shows includes cosmetics stores and web sites, and online retailers. Furthermore, because the goods are legally identical in part, we must presume that these goods travel in the same channels of trade to the same classes of consumers. Id. at 1161. See also In re Viterra Inc., 671 F.3d 1358, 101 5 Applicant also noted future plans to sell his products at retail locations. Affidavit of Edgar Osorio, Ex. A. Serial No. 85686148 - 7 - USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Therefore, even if both Applicant and Registrant were to only market and sell their products via their own websites, because there is no such limitation in the identification of goods, we must presume that the channels of trade and classes of purchasers for the goods identified in the application and registration are the same. As such, the du Pont factor regarding the similarity or dissimilarity of established, likely to continue trade channels also favors a finding of likelihood of confusion. C. Conditions of Purchase We now turn to the fourth du Pont factor, the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. Applicant argues that his mineral complexion enhancer, priced at $ 20.00 per item, is marketed towards a specific demographic group, namely young men between the ages of 15 to 29, and that Registrant’s anti-shine gel and foundation products, priced between $24.00-$38.00 per item, are targeted towards women. Because the goods identified in the involved application and registrations do not include restrictions regarding gender, purpose or price, Applicant’s arguments are unpersuasive. These items fall in the category of everyday purchases by the general public. While some of the prospective consumers of Applicant’s and Registrant’s goods may indeed be relatively knowledgeable about skin care products and exercise a great deal of care in their purchasing decisions by comparing, for example the Serial No. 85686148 - 8 - ingredients in each product, this does not mean that all customers for the goods as identified in the application and cited registrations are knowledgeable and careful. Because these items, as identified, may be inexpensive and be purchased by the public at large, we must assume that the purchasers include casual consumers purchasing relatively inexpensive items for daily use. This fourth du Pont factor therefore also favors a finding of likelihood of confusion. D. Comparison of the Marks Because the goods are in part identical, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). With this in mind, we now turn to the first du Pont likelihood of confusion factor regarding 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). Our analysis cannot be predicated on dissection of Applicant’s and Registrant’s marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Rather, we are obliged to consider each mark in its entirety. Id. See also Serial No. 85686148 - 9 - Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It 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”). However, 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 a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. Applicant focuses on the presence of a design element in his mark to argue that the differences in appearance between his mark and the cited marks result in separate and distinct commercial impressions. More specifically, Applicant contends that his applied-for mark consists of a “highly stylized logo” of “an artistic outline of half of a human face with the word ‘REFINE’ displayed vertically in the place of the other half of the human face,” whereas the cited marks are registered in standard character format with the term REFINE followed by either the words EYE, PRIME, or SHINE. Applicant’s Brief, p. 10. Applicant submits that the dominant element of his mark is the design as opposed to the word “refine,” thereby making the marks distinguishable. Applicant’s arguments are unconvincing. Applicant’s and Registrant’s marks are comprised, either in whole or in part, of the word REFINE. We further observe that each registered mark commences with the word REFINE, the sole literal element in Applicant’s mark. It is well-established that prospective consumers are often more inclined to focus on the first word, prefix or syllable in any trademark or Serial No. 85686148 - 10 - service mark. See Palm Bay Imports, 73 USPQ2d at 1692. See also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). While acknowledging the distinctions noted above by Applicant in terms of wording, we find that Applicant overemphasizes their effect. The disclaimed descriptive wording EYE and PRIME as well as the highly suggestive term SHINE in Registrant’s marks are merely ancillary to the dominant commercial impression created by the initial term REFINE. Disclaimed matter in a mark typically is of less significance in creating a commercial impression. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) (finding “delta” the dominant part of the mark THE DELTA CAFÉ because CAFÉ was disclaimed). Thus, it is more likely that prospective consumers will overlook the secondary wording in Registrant’s marks. For the foregoing reasons, we find REFINE to be the dominant element of each of the registered marks. As to the design element in Applicant’s mark, we find that in this particular case, it fails to mitigate the similarity of the respective literal portions of the involved marks. Applicant is reminded of the often-recited principle that when a mark consists of a literal portion and a design portion, the literal portion is generally more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services; therefore, the literal portion is normally Serial No. 85686148 - 11 - accorded greater weight in determining whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011). As a practical matter, in searching for Applicant’s goods either in a store or online, prospective consumers are more likely to ask for REFINE without referencing the design element. Hence, the literal element of Applicant’s mark, the word REFINE, is the dominant feature of the mark. Moreover, the design element is of a face, which is highly suggestive of cosmetics and make-up that are applied to the face; for this reason as well, consumers will look to the word REFINE as the stronger source- indicating element of Applicant’s mark. We therefore find that Applicant’s and Registrant’s marks are highly similar in appearance, sound, connotation and commercial impression. This first du Pont factor weighs in favor of finding a likelihood of confusion. E. Strength of the Marks/Scope of Protection/Third-Party Uses We will now consider the strength of the cited marks as well as the number and nature of similar marks in use on similar goods. If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imports, 73 USPQ2d at 1693. Applicant essentially argues that because the term REFINE is diluted in the marketplace for similar goods, the cited registrations are entitled to only a narrow Serial No. 85686148 - 12 - scope of protection. In support thereof, Applicant submitted the following use-based third-party registrations purporting to show that the consuming public is exposed to third-party use of similar marks on a variety of goods and are readily able to distinguish between multiple REFINE formative marks: · REFINEMENT (standard characters), Reg. No. 4064805 for “bleaching preparations for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, cosmetic preparations for skin care” in International Class 3; · REFINEE (standard characters), Reg. No. 3273891 for “exfoliants for skin; eye cream; eye gels; lotions for face and body care; non-medicated skin creams; skin care preparations, namely, chemical peels for skin; skin care products, namely, non-medicated skin serum; skin cleaners” in International Class 3; · REDEFINER (standard characters), Reg. No. 3474795 for “hair cleaning preparations” in International Class 3; · NO 7 REFINE & REWIND (standard characters), Reg. No. 3425782 for “non-medicated skin care products, namely, skin moisturizers, night cream, day cream, eye cream; facial firming and anti-ageing creams and serums; body firming and anti-ageing creams and serums; beauty serums with anti-ageing properties” in International Class 3; · REDEFINE (standard characters), Reg. No. 3680876 for “cologne” in International Class 3; · SO REFINED (standard characters), Reg. No. 2834677 for “non-medicated facial scrub” in International Class 3; · LASHREFINE (standard characters), Reg. No. 4048709 for “semi-permanent cosmetic preparations for eyelashes” in International Class 3; Serial No. 85686148 - 13 - · HYDRA REFINE (standard characters), Reg. No. 2882460 for “non-medicated skin care products, namely, skin cleansers, skin tonics, skin creams, skin masks, skin moisturizers, skin ampoules and serums, skin powders, skin toners, skin lotions, exfoliants, skin soaps, gels and facial treatment kits containing cleansing mousse, astringent for cosmetic purposes, skin care products, namely, nonmedicated skin serum, facial masks, eye gel” in International Class 3; · MEDI-REFINE (standard characters), Reg. No. 2700036 for “non-medicated skin care products, namely, skin care creams and lotions; face creams, peeling creams and gels; exfoliants; facial masks; foot care and body products, namely foot creams, foot powders, non-medicated salts and lotions; skin and facial cleansers; shaving crèmes; and eye creams and gels” in International Class 3; · AFFINAGE (standard characters - translating to “refine”), Reg. No. 3101434 for “non-medicated preparations for the care and treatment of the hair and/or scalp, namely, hair cosmetics; hair colourants; shampoos; conditioners; styling gels; hair sprays and mousses; and personal essential oils” in International Class 3; · DERMA-REFINE TECHNOLOGY (standard characters), Reg. No. 3428210 for “non-medicated cosmetic ingredient complex as a component in the manufacture of eye gels and creams” in International Class 3; · THE REFINERY (standard characters), Reg. No. 3933355 for “toilet preparations, namely, toilet water; perfumery; fragrances for personal use; colognes; toilet waters; talcum powder; bath additives, namely, bath gels, bath oils and nonmedicated bath salts; shower gels; hand soaps, facial soaps, body soaps, laundry soaps, medicated soaps, shaving soaps; shampoos; preparations for the care of the hair; preparations for care of the teeth, namely, toothpaste; antiperspirants; deodorants for personal use; depilatories; depilatory wax; shaving preparations; after shave preparations; massage oils, massage creams; essential oils for personal use; cosmetic preparations for skin renewal; sun-tanning preparations; non medicated skin and body care preparations, namely, cleansers and washes for the face and body, shaving oils, gels and foams, Serial No. 85686148 - 14 - moisturizing oils, lotions, non-medicated balms and non- medicated serums for the face and skin; cosmetic preparations for body care, skin care preparations, namely, body polish; skin lotions, skin creams, skin toners; skin moisturizers; skin cleansers; non medicated astringents for cosmetic purposes; lip balm and gloss; sunscreen lotions; sunscreen gels; sunscreen oils and sunscreen roll on sticks; beauty masks, beauty facial packs, namely, facial masks, facial scrubs; nail care preparations; nail polish and varnish; nail polish and varnish remover; emery boards and emery paper; cotton wool for cosmetic purposes; cotton wool sticks, pads and balls for cosmetic purposes; potpourri; gift packages comprising cosmetics and skin care products, namely, cosmetics, non-medicated skin care preparations” in International Class 3; and · LANEIGE POWER ESSENTIAL SKIN REFINER (standard characters), Reg. No. 3493974 for “beauty milks; face and body milks; skin moisturizer in the nature of cream; skin care products, namely, non-medicated skin serum; skin toners; non medicated skin care preparations to refine skin; skin clarifiers; skin emollients; skin lotions; skin moisturizer; cosmetics; preparations for skin renewal” in International Class 3. Applicant’s submissions are of limited probative value. Third-party registrations are not evidence that the registered marks are in use, or that consumers have been exposed to them. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). Rather, third-party registrations can be used in the same way dictionaries are used, namely to show the meaning of a mark or portion thereof. Several of the third-party registrations are not relevant here because they are for marks which include different words (e.g., REDEFINER, REDEFINE and THE REFINERY). The remaining third-party registrations, while incorporating the word “refine” or variations thereof (such as “refiner”), do so in a manner which tends to indicate that the term is suggestive when used in connection with the Serial No. 85686148 - 15 - involved goods. That does not mean, however, that the cited registrations are undeserving of protection, given that they are each owned by the same entity, and follow the same syntax of the initial word “refine” followed by a descriptive or highly suggestive term. These du Pont factors of strength of the cited marks and the number and nature of similar marks in use on similar goods are therefore neutral in our analysis. F. Contemporaneous Use without Actual Confusion Lastly, we consider the eighth du Pont factor, the length of time during and conditions under which there has been concurrent use without evidence of actual confusion. Applicant states that he has been using his applied-for mark on his products since March 2012 with no instances of actual confusion. See Request for Reconsideration, Affidavit of Edgar Osorio, ¶10-11. We find Applicant’s statements to be of minimal, if any, probative value. First, contemporaneous use for 15 months (the affidavit was signed by applicant on June 3, 2013)6 is not particularly significant; it is a relatively short amount of time, and there is no evidence regarding the nature and extent of contemporaneous use in the marketplace by Applicant and Registrant that would show that there has been an opportunity for confusion to occur if it were likely to occur. In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). Further, Registrant has had no meaningful opportunity to rebut Applicant’s statement. Id. Without a meaningful opportunity for rebuttal, Applicant’s statement is of limited probative value. In any event, the 6 The notarial certification says that Applicant appeared to take the oath on July 3, 2013, but the date of signature is June 3, 2013. Serial No. 85686148 - 16 - lack of evidence of “actual confusion” carries little weight, especially in an ex parte context. In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). We therefore find that this du Pont factor is neutral. To the extent that there are any other relevant du Pont factors, we treat them as neutral. After considering all of the evidence of record and arguments pertaining to the du Pont likelihood of confusion factors, we find that because the marks are similar in sound, appearance, connotation and commercial impression, and Applicant’s goods are, in part, legally identical to Registrant’s goods, and therefore they are presumed to be directed towards the same purchasers and sold in the same trade channels, confusion is likely between Applicant’s mark for his identified goods and the marks in the cited registrations. Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed as to International Class 3. The application will proceed to publication for the goods listed in International Class 14.