Emblique Ltd.

Trademark Trial and Appeal Board

Jun 4, 2013

No. 77931139 (T.T.A.B. Jun. 4, 2013)

Mailed:
June 4, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Emblique Ltd.1
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Serial No. 77931139
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Elizabeth F. Janda and Anna K. Heinl, of Brooks Kushman PC,
for Emblique, Ltd.

Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Robert Lorenzo, Managing Attorney).
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Before Ritchie, Lykos and Adlin, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Emblique, Ltd. has filed an application to register on
the Principal Register the mark shown below, for goods
listed as “skin cleanser, skin toner, non-medicated anti-
oxidant skin serum, skin anti-aging anti-wrinkle lotion, eye
creme, nail polish, eye liner, eye shadow, lipstick, non-
medicated anti-acne lotion, skin bronzer, after-tan skin
lotion, suntan lotion, skin moisturizer, lip gloss, non-
medicated lip protector, face shadow make-up, skin
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77931139
2
concealer, mascara, shampoo and hair conditioner,” in
International Class 3, and “anti-bacterial skin repair
lotion, anti-bacterial skin repair cream, medicated anti-
oxidant skin serum, medicated anti-acne lotion, medicated
lip protector,” in International Class 52:

1 The application was assigned nunc pro tunc, executed and
effective November 21, 2011. Reel: 004664; Frame: 0765.
2 Serial No. 77931139, filed February 9, 2010, pursuant to Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b) alleging a bona
fide intent to use in commerce.

Ser No. 77931139
3
The application contains the following description of the
mark: The mark consists of a stylized design of a female
long-legged wading bird or flamingo wearing a neck scarf
that is floating in the breeze.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, when applied to the identified
goods, so resembles the registered mark MORRIS-FLAMINGO,3 in
standard character format, for goods listed as “hair care
preparation: skin care products namely cream; fragrances for
personal use,” in International Class 3, that that when used
on or in connection with applicant’s identified goods, it is
likely to cause confusion or mistake or to deceive. Upon
final refusal of registration, applicant filed a timely
appeal.4 Both applicant and the examining attorney filed
briefs. We reverse the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

3 Registration No. 3084073, issued April 25, 2006. Sections 8 and
15 affidavits accepted and acknowledged.
Ser No. 77931139
4
2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first consider the du Pont factor of the similarity
or dissimilarity of the goods. There is little dispute that
some of the items listed in the cited registration
encompass, or are highly similar to, those in the
application, and that there is indeed a relationship among
others. For example, the “skin care products namely
creams,” in the cited registration, would be presumed to
encompass “anti-bacterial skin repair cream,” and to include
at least the “eye crème” listed in the application, if not
also the various lotions. The examining attorney submitted
third-party registrations listing both items in the cited
registration and items in the application to show that these
items may emanate from a single source. Copies of use-
based, third-party registrations may serve to suggest that
the goods are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d

4 Applicant concurrently filed a request for reconsideration,
Ser No. 77931139
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1783, 1785 (TTAB 1993). Accordingly, we find the goods are
in part legally identical and otherwise related.
Because the goods described in the application and the
cited registration are in-part identical, we must presume
that the channels of trade and classes of purchasers are the
same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Additionally, there is nothing in the recital
of goods in either the cited registration or the application
that limits either registrant’s or applicant’s channels of
trade. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992) (because there are no limitations as to channels of
trade or classes of purchasers in either the application or
the cited registration, it is presumed that the registration
and the application move in all channels of trade normal for

which was denied.
Ser No. 77931139
6
those services, and that the services are available to all
classes of purchasers for the listed services).
Accordingly, we find that these du Pont factors weigh
strongly in favor of finding a likelihood of consumer
confusion.
We turn then to a discussion of the du Pont factor
regarding the similarity or dissimilarity of the marks. The
mark in the cited registration is a word mark in standard
character format, MORRIS-FLAMINGO. Applicant’s mark is a
drawing of a bird, the description of which includes the
term “flamingo;” however, applicant’s drawing contains no
literal elements. Under the doctrine of “legal
equivalents,” we may find an illustrated depiction of an
animal to be confusingly similar to the word form of the
same. See In re Rolf Nilsson AB, 230 USPQ 141 (TTAB 1986)
(Lion’s head design v. “LION” word mark found confusingly
similar), citing In re Serac, Inc. 218 USPQ 340 (TTAB 1983)
(“it is well settled that a picture and the word that
describes that picture are given the same significance in
determining likelihood of confusion.”); See also 4 J. Thomas
McCarthy; McCarthy on Trademarks and Unfair Competition §
23:27 (4th ed. updated 2013). The reason is fairly obvious.
A picture is worth a thousand words. But if a word or two
in a literal mark clearly captures what is depicted in a
Ser No. 77931139
7
design mark, then the marks will leave the consumer with the
same commercial impression.
As such, we ask whether applicant’s mark has the same
commercial impression as the mark in the cited registration.
As applicant notes in its brief, its mark has the impression
of a more “lady-like” flamingo, dainty of stature, and with
a scarf around its neck. The mark in the cited registration
is a compound word mark comprised of what appears to be a
surname or given name, “Morris,” with the word “flamingo.”
Because the name “Morris” appears first, it is more likely
to be impressed upon consumers, giving the registered mark
the primary commercial impression of a person’s given or
surname. In re National Data Corp., 224 USPQ 749, 751 (Fed.
Cir. 1985) (“[T]here 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.”) Accordingly, the marks have completely
different commercial impressions. There is no reason to
believe that applicant’s mark, if verbalized by consumers,
would sound like the mark MORRIS-FLAMINGO either.
As our primary reviewing court has said, we are not
concerned with the “mere possibility of confusion.” See
Bongrain Int’l (Amer.) Corp. v. Delice de France, Inc., 811
Ser No. 77931139
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F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).
Accordingly, this du Pont factor weighs heavily against
finding a likelihood of confusion.
In conclusion, although the goods are in part
identical, we cannot find a likelihood of confusion here,
since the marks are rather distinct, and in particular, the
commercial impression generated by them is quite different.
In a particular case, any of the du Pont factors may play a
dominant role. In re E. I. du Pont de Nemours & Co., 177
USPQ at 567. In fact, in some cases, a single factor may be
dispositive. Kellogg Co. v. Pack'em Enterprises Inc., 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). In the present
case, the dissimilarity of the marks and differences in
commercial impression are so great as to outweigh the other
du Pont factors, discussed above.
Decision: The refusal under Section 2(d) is reversed.