Eveready Battery Company, Inc.v.Green Planet, Inc.

Trademark Trial and Appeal Board

Jul 21, 2009

No. 91180015 (T.T.A.B. Jul. 21, 2009)

Mailed: July 21, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Eveready Battery Company, Inc.
v.
Green Planet, Inc.
_____

Opposition No. 91180015
to application Serial No. 77055909
_____

Michael A. Kahn and Emma C. Harty of Bryan Cave LLP for
Eveready Battery Co., Inc.

Robert J. Lauson of Lauson & Schewe LLP for Green Planet,
Inc.
______

Before Seeherman, Hairston and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On December 2, 2006 applicant, Green Planet, Inc.,
filed the above-noted application to register in standard
characters on the Principal Register the mark SLICK ULTRA
PLUS, based upon its assertion of a bona fide intention to
use the mark in commerce for the following goods, as
amended: “disposable razors,” in International Class 8.
Registration has been opposed by Eveready Battery
Company, Inc. (“opposer”). As grounds for opposition,
opposer asserts that it is the owner of the following marks,
THIS OPINION IS
A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91180015
2
previously used and registered on the Principal Register by
opposer and its predecessors in interest, for the following
goods:
SCHICK
(in typed form) for “safety razors and appurtenances
therefor - namely, safety razor blades, devices for
inserting blades into razors, and razor blade dispensing
devices” in International Class 8;1
SCHICK
(in typed form) for “razors and razor blades” in
International Class 8;2

for “razor blades, razors” in International Class 8;3
ULTRA GLIDE
(in standard characters) for “lubricating plastic and/or
polymer comfort strips sold as an integral component of
razors and razor blades” in International Class 8;4
COMFORT PLUS
(in standard characters) for razor blades, razors” in

1 Registration No. 0788722 issued on April 27, 1965. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
2 Registration No. 2881805 issued on September 7, 2004.
3 Registration No. 3210869 issued on February 20, 2007.
4 Registration No. 3053978 issued on January 31, 2006, and
registered pursuant to the provisions of Section 2(f) of the
Trademark Act.
Opposition No. 91180015
3
International Class 8;5 and
INTUITION PLUS
(in standard characters) for “razors, razor blades” in
International Class 8.6
Opposer alleges that it has used its pleaded marks in
connection with the above goods since prior to the filing
date of applicant’s intent-to-use application; and that
applicant’s mark, SLICK ULTRA PLUS, when used on applicant’s
goods so resembles opposer’s SCHICK, ULTRA GLIDE, and
COMFORT PLUS marks for its recited goods as to be likely to
cause confusion, to cause mistake, or to deceive.7 In
addition, opposer argues that its SCHICK marks are famous;
that its SCHICK marks became famous prior to the filing date
of the involved application, and that registration of
applicant’s mark will dilute the distinctive quality of
opposer’s famous SCHICK marks.
Applicant’s answer consists of a general denial of the
allegations in the notice of opposition.

5 Registration No. 3175533 issued on November 21, 2006.
6 Registration No. 3240668 issued on May 8, 2007.
7 In addition, opposer asserts that it has used and registered
SCHICK ULTRA PLUS in several foreign countries in connection with
razors. However, inasmuch as opposer further clarifies that it
does not claim “any U.S. trademark right in these foreign
registrations,” (brief, p. 23) such use and registration of
SCHICK ULTRA PLUS will be given no consideration in our
determination herein.

Opposition No. 91180015
4
Accelerated Case Resolution (ACR)
On December 5, 2008, the Board issued an order denying
opposer’s motion for summary judgment on its claim of
priority and likelihood of confusion; granting applicant’s
motion to amend the identification of goods in its involved
application from “razors” to “disposable razors;” and
resetting trial dates, beginning with opposer’s testimony
period which was reset therein to close on February 27,
2009. In a February 9, 2009 telephone conference with the
Board interlocutory attorney responsible for this case,
counsel for both parties agreed to resolve the instant
proceeding by way of Accelerated Case Resolution (ACR).
On February 11, 2009 the Board issued an interlocutory
order granting the parties’ request to resolve this case via
ACR. Pursuant thereto, the parties agreed to forego trial
and proceed directly to briefing of the case on its merits,
based upon a schedule set forth in the order. The parties
further stipulated to the following:
Opposer’s notice of opposition is amended to
withdraw its Section 43(c) dilution claim;

Opposer has priority of use for purposes of its
claim under Section 2(d) of the Trademark Act;

The parties may rely upon evidence previously
submitted in support of their briefing of
opposer’s motion for summary judgment in lieu of
trial evidence;

The parties further may rely upon additional
evidence submitted with their briefs on the merits
of the case; and
Opposition No. 91180015
5

Upon conclusion of the parties’ briefing of the
case, the Board will render a final decision on
the merits in accordance with the evidentiary
burden at trial, that is, by preponderance of the
evidence.8

The Record
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case consists of the pleadings and the
file of the involved application. In addition, pursuant to
the parties’ ACR stipulation opposer relies upon the
declarations, with exhibits, of the following individuals
submitted with its motion for summary judgment: Adel
Mekhail, Vice-President of North American Marketing for
Schick Manufacturing, Inc., a wholly-owned subsidiary of
opposer; Rondi S. Changar, a Legal Assistant for the
Intellectual Property Department for opposer; and Emma C.
Harty, one of opposer’s attorneys. Opposer further relies
upon the supplemental declaration of Adel Mekhail, with an
exhibit, submitted with its main brief on appeal.
Applicant relies upon the declarations, with exhibits,
of the following individuals submitted with its response in
opposition to opposer’s motion for summary judgment: Robert

8 As set out in the ACR provisions above, the parties’
utilization of ACR has expedited determination of the issues
under consideration herein. Additional information regarding ACR
is available on the United States Patent and Trademark Office
(USPTO) website at
www.uspto.gov/web/offices/com/sol/notices/acrognoticerule.pdf

Opposition No. 91180015
6
J. Lauson, one of its attorneys; Anil Malhi, its President;
and Steve Allen, an employee of its counsel of record.
It is noted that opposer designated certain portions of
the above evidence “confidential” and submitted such under
seal. Accordingly, we will refer to this evidence in only a
very general fashion, and will only discuss such sales and
advertising expenditures that were set forth in the parties’
briefs.
Opposer and applicant filed main briefs on the case,
and opposer filed a reply brief.
Opposer’s Standing and Priority of Use
Because opposer has made its pleaded registrations of
record, we find that opposer has established its standing to
oppose registration of applicant’s mark. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); and Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Further, and as noted above, the parties stipulated to
opposer’s priority of use.9
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence

9 We note in addition that because opposer’s pleaded
registrations are of record, Section 2(d) priority is not an
issue in this case as to the marks therefor and goods and
services covered thereby. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Opposition No. 91180015
7
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Family of Marks
We begin by addressing opposer’s contention in its
brief that it “uses the SCHICK mark as the house brand for
razors”10 sold under numerous designations and that these
marks form “collectively, the ‘SCHICK Family marks.’”11 To
the extent that opposer is asserting that it has a family of
marks, opposer did not plead this in its notice of
opposition. Nonetheless, based on the testimony, as well as
the fact that applicant addressed opposer’s arguments
directed toward its asserted family of marks in its brief,
without objection, we find this issue was tried by the
implied consent of the parties, and will consider opposer’s
arguments with regard thereto. See Fed. R. Civ. P. 15(b).
Cf. Long John Silver’s Inc. v. Lou Scharf Inc., 213 USPQ
263, 266 n.6 (TTAB 1992).

10 Brief, p. 3.
11 Id.
Opposition No. 91180015
8
In this case, although opposer submitted its
registrations of SCHICK and SCHICK formative marks, the
evidence is insufficient to support a finding that “the
pattern of usage of the common element is sufficient to be
indicative of the origin of the family.” The Black & Decker
Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1490 (TTAB
2007) citing J & J Snack Foods Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). Thus,
the requisite showing of a family of marks has not been
made. The fact that opposer has used and registered several
marks incorporating SCHICK is not in itself sufficient to
establish the existence of a family of marks. See J & J
Snack Foods, 18 USPQ2d at 1891. As stated by the Federal
Circuit, “There must be a recognition among the purchasing
public that the common characteristic is indicative of a
common origin of the goods.” Id. at 1891. Accordingly,
opposer must demonstrate that the marks asserted to comprise
the family, or a number of them, have been used and
advertised in promotional material or in everyday sales
activities in such a manner as to create common exposure and
thereafter recognition of common ownership based upon a
feature common to each mark. See Truescents LLC v. Ride
Skin Care LLC, 81 USPQ2d 1334, 1337 (TTAB 2006) citing
American Standard, Inc. v. Scott & Fetzer Co., 200 USPQ 457,
461 (TTAB 1978).
Opposition No. 91180015
9
In the present case, opposer’s evidence consists of
examples of packaging of its razors and razor blade
cartridges under the mark with the additional
wording/marks INTUITION PLUS, QUATTRO, XTREME3, QUATTRO
POWER and SILK EFFECTS.12 This material may suggest that
the public has been exposed to opposer’s mark as part
of or in connection with the additional designations noted
above. However, opposer has failed to demonstrate that it
advertises or promotes various SCHICK formative marks to the
public in such a manner that creates exposure and
recognition of common ownership thereof based upon the
SCHICK feature of each mark. See Truescents LLC, 81 USPQ2d
at 1338. As a result, we find that opposer has failed to
prove that it has a family of SCHICK marks.
Therefore, we will determine the issue of likelihood
of confusion based on the individual marks that are the
subject of opposer’s registrations. In our analysis we will
focus our discussion of the issue of likelihood of confusion
on that pleaded registration of opposer’s which is closest
to the mark for which applicant is seeking registration for
the most similar goods, namely, opposer’s Registration No.
2881805 for the mark SCHICK in typed form for “razors and
razor blades” in International Class 8.

12 Mekhail Declaration, Exhibit 3.
Opposition No. 91180015
10
The Goods
The goods identified in opposer’s Registration No.
2881805 for its SCHICK mark are “razors and razor blades” in
International Class 8. Applicant’s goods under its SLICK
ULTRA PLUS mark are identified as “disposable razors,” in
International Class 8. Thus, as identified, opposer’s
“razors” are presumed to include applicant’s more narrowly
identified “disposable razors.” As a result, these goods
are legally identical.
Further, opposer’s “razor blades” are an integral part
of “razors” and “disposable razors.” We hereby take
judicial notice of the following definition of razor blade:
a thin sharp-edged piece of steel that can be fitted into a
razor.13 In accordance with the above definition, opposer’s
“razor blades” are a component part of razors, including
applicant’s “disposable razors” and thus are closely related
thereto.
In view of the in part legally identical and in part
closely related nature of opposer’s and applicant’s goods,
this du Pont factor favors opposer.

13 The American Heritage Dictionary of the English Language, 4th
ed. (2009). The Board may take judicial notice of dictionary
definitions. See University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91180015
11
Channels of Trade, Classes of Purchasers, and
Conditions of Sale

As noted above, the parties’ goods are identical in
part and otherwise closely related, and there are no recited
restrictions as to their channels of trade or classes of
purchasers. When identical goods are recited in an
application and registration with no limitations as to their
channels of trade or classes of consumers, such channels of
trade and classes of consumers must be considered to be
legally identical. 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.”); and 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.”).
Further, applicant admits in its brief on appeal that
“its disposable razor goods are in direct competition with
the disposable razor goods of Opposer.”14 Applicant goes on
to argue that its goods are sold “at a substantially

14 Brief, p. 8.
Opposition No. 91180015
12
different price point.”15 However, there are no
restrictions or limitations in the identification of either
party’s goods to support applicant’s contention that they
are priced differently. “The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.” Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
We also note in that regard that the parties’ goods are
ordinary consumer items available at a relatively low cost.
Generally, purchasers of casual, low cost ordinary consumer
items exercise less care in their purchasing decisions and
are more likely to be confused as to the source of the
goods. See Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir.
1984). Thus, we are not persuaded by applicant’s arguments

15 Id.
Opposition No. 91180015
13
regarding the assertedly substantial differences in price of
the involved goods.
We find that, as a result of the foregoing, these du
Pont factors also favor opposer.
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion. Applicant asserts
that the absence of actual confusion suggests no likelihood
of confusion. However, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). Moreover, applicant’s
evidence shows that it only sold approximately 15 thousand
razors under its SLICK ULTRA PLUS mark during a six-month
period in 2007, and ceased such sales after commencement of
this opposition.16 Thus, on the record before us there
appears to have been little opportunity for confusion to
occur. This du Pont factor is neutral.
Applicant’s Good Faith Adoption of Its Involved Mark
Applicant argues that it adopted its SLICK ULTRA PLUS
mark in good faith, with no intent to trade on opposer’s
marks. However, it is settled that while evidence of bad

16 While the involved application was filed based upon applicant’s
assertion of its bona fide intent to use the SLICK ULTRA PLUS
mark in commerce, applicant has indicated that it has used its
mark. Mahli Declaration, p. 2, Exhibit K.

Opposition No. 91180015
14
faith adoption typically will weigh against an applicant,
good faith adoption typically does not aid an applicant
attempting to establish no likelihood of confusion. See J &
J Snack Foods Corp. v. McDonald's Corp., 18 USPQ2d at 1891.
Thus, this du Pont factor also is neutral.
Fame of Opposer’s SCHICK Mark
Prior to determining the similarity or dissimilarity of
the parties’ marks, we consider evidence of the fame of
opposer’s SCHICK mark. Fame of an opposer’s mark or marks,
if it exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot Inc. v. Becton, 214
F.3d 1322, 1327, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) and
“[f]amous marks thus enjoy a wide latitude of legal
protection.” Id. This is true because famous marks are
more likely to be remembered and associated in the public
mind than a weaker mark, and are thus more attractive as
targets for would-be copyists. Id. Indeed, “[a] strong
mark … casts a long shadow which competitors must avoid.”
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 353, 22 USPQ2d 1453, 1456 (fed. Cir. 1992). A
famous mark is one “with extensive public recognition and
renown.” Id.
Upon careful review of the record in this case, we are
persuaded that opposer’s SCHICK mark is famous. Opposer and
its predecessors in interest have used the SCHICK mark
Opposition No. 91180015
15
continuously since 1926 in connection with razors.17
Opposer’s razors and razor blades are sold throughout the
United States in retail stores, grocery stores, drugstores,
convenience stores and warehouse club stores.18 From 2000
to 2008, opposer has sold over $2 billion of its razors and
razor blades.19 During that same time period, opposer’s
sales of disposable razors alone were over $100 million
annually.20 Opposer’s SCHICK brand has the second largest
market share for razors and shaving-related products in the
United States.21 From 2001 to 2007, opposer has spent over
$300 million advertising its goods under its SCHICK mark,
including over $75 million for advertising its disposable
razors.22 Opposer has advertised and promoted its goods
under the SCHICK mark in national magazines and periodicals
such as USA Today, TV Guide, Us Weekly, Seventeen, People,
Glamour, Cosmopolitan, Sports Illustrated, Rolling Stone,
Allure, ESPN Magazine, and Maxim;23 and through radio and
television advertisements on such national and cable
networks as ABC, NBC, CBS, FOX, ESPN, CMT, Comedy Central,
FX, MTV, TBS, TNT, TOON, USA, VH1, and Sci Fi.24

17 Changar Declaration, Exhibit 19; Mekhail Declaration, Exhibit
1.
18 Mekhail Declaration, p. 10.
19 Id. at 9, Exhibit 13; Supplemental Mekhail Declaration p. 2,
Exhibit 36.
20 Id. at 3, 9, Exhibit 4.
21 Id. at 9.
22 Id. at 4, Exhibit 4.
23 Id. at 5, Exhibit 17.
24 Id. at 6, Exhibits 6-7.
Opposition No. 91180015
16
Opposer also sponsors numerous sporting events and
professional athletes, including the Summer and Winter X
Games from 2004-2008, LPGA events in 2006, Big 10 Athletic
Conference events in 2007, as well as professional beach
volleyball events.25 Such events prominently display the
SCHICK mark, and often feature promotional booths and give-
aways featuring SCHICK razor products.26
Accordingly, we find that the evidence establishes that
opposer’s SCHICK mark is famous for purposes of our
likelihood of confusion determination, and, as indicated
above, this factor weighs heavily in opposer’s favor.
The Marks
We turn our attention to a comparison of the marks. In
determining the similarity or dissimilarity of the marks, we
must compare the marks in their entireties as to appearance,
sound, meaning and commercial impression. See Palm Bay
Imports, supra. The test is not whether the famous mark
SCHICK and the mark SLICK ULTRA PLUS can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in their
entireties that confusion as to the source of the goods
offered under the respective marks is likely to result.
Because the involved goods would be marketed to the general

25 Id. at 6-8, Exhibits 8-11.
26 Id.

Opposition No. 91180015
17
public, our focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Further, when
applicant’s mark would appear, as it does here, on goods
that are identical in part to goods identified under
opposer’s famous mark, the degree of similarity between the
marks necessary to support a finding of likely confusion
declines. See Century 21 Real Estate v. Century Life, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In comparing the marks, we find that SLICK is the
dominant element of applicant’s mark. Applicant admits
this: “‘SLICK’ dominates ULTRA and PLUS in Applicant’s
mark.”27 Accordingly it is entitled to more weight in our
analysis. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood 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 a consideration of the marks in
their entireties. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Furthermore, applicant has introduced evidence in the
form of use-based, third-party registrations and

27 Brief, p. 9.
Opposition No. 91180015
18
advertisements from commercial Internet websites showing
various marks for shaving products that include the term
PLUS. These third-party registrations and uses include:
ATRA PLUS (Registration No. 1491967 issued to Gillette Co.
for razors and razor blades) and Internet advertisements for
such goods under this mark at drugstore.com;28 CUSTOMPLUS
(Registration No. 1865174 issued to Gillette Co. for razors)
and Internet advertisements for such goods under this mark
at americarx.com;29 PERSONNA II PLUS (Registration No.
1536107 issued to American Safety Razor Co. for razor
blades) and Internet advertisements for such goods under
this mark at shavesite.com;30 LADY PERSONNA PLUS
(Registration No. 1538951 issued to American Safety Razor
Co. for disposable razors) and Internet advertisements for
such goods under this mark at ebay.com;31 and Internet
advertisements for shaving cream under the mark ULLTRA.32
The third-party registrations showing that different
companies have adopted marks that include PLUS indicate PLUS
has a significance for razors and razor blades, while the
advertisements indicate that the marks are in use and that

28 Lauson Declaration, Exhibit G.
29 Id.
30 Id.
31 Id.
32 Id.
Opposition No. 91180015
19
consumers are accustomed to encountering the term PLUS as
applied to razors and other shaving products.33
Similarly, the word ULTRA is defined as “going beyond
what is usual or ordinary; excessive; extreme.”34 This
definition shows that, as applied to applicant’s goods,
ULTRA has a laudatory meaning indicating disposable razors
of a very high level of quality.
As a result, the terms ULTRA and PLUS are highly
suggestive and therefore consumers are likely to view them
as having less source-identifying significance than SLICK
or, put another way, they will look to SLICK as the element
of the mark with the most source-identifying significance.
In addition, SLICK is the first word in applicant’s
mark. See Presto Products, Inc. v. Nice-Pak Products Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). This is particularly true in the present

33 Third-party registrations can be used in the manner of
dictionary definitions to illustrate how the term is perceived in
the trade or industry. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987) (“[T]hird party registrations are of use only if
they tend to demonstrate that a mark or a portion thereof is
suggestive or descriptive of certain goods and hence is entitled
to a narrow scope of protection. Used in this proper, limited
manner, ‘third party registrations are similar to dictionaries
showing how language is generally used.’ 1 McCarthy, Trademarks
and Unfair Competition, § 11:26 at p. 516 (2d ed. 1984)”).
34 Random House Dictionary, Random House, Inc. (2009).

Opposition No. 91180015
20
case, given the highly suggestive nature of the words ULTRA
and PLUS.
In light of the foregoing, we find that SLICK is the
dominant portion of applicant’s SLICK ULTRA PLUS mark. This
term is highly similar in appearance to opposer’s famous
SCHICK mark. Both of these words begin with the letter “S”
and end with “ICK.” Although the interior letters “CH” and
“L” are different, these differences are not likely to be
noticed by consumers who may purchase razor blades, an
inexpensive item, without great care, and who, because of
their familiarity with the famous SCHICK mark, are likely to
“misread” SLICK in a quick glance at the mark. Because of
the highly similar nature of the first word of applicant’s
mark and the entirety of opposer’s famous mark, the
similarities in appearance between SCHICK and SLICK ULTRA
PLUS outweigh the differences. As noted above, the terms
ULTRA and PLUS have less source-identifying significance
than SLICK and, as a result, contribute less to the visual
impression of the mark.35

35 We note in addition that although opposer failed to prove its
claim of a family of SCHICK marks, as discussed above, it has
pleaded and proven ownership of numerous registrations that
include the suggestive terms ULTRA or PLUS. Thus, the presence
of these terms in applicant’s mark may reinforce a connection
with opposer’s marks, rather than distinguishing them. Cf.
Schering-Plough Healthcare Products, Inc. v. Ing-Jing Huang, 84
USPQ2d 1323 (TTAB 2007) (opposer met difficult burden of showing
it routinely made combined use of “Dr. Scholl’s” and “Air-Pillo”
such that the two marks came to be associated together as
indicators of origin in the mind of the buying public).
Opposition No. 91180015
21
As to sound, it is settled that there is no correct way
to pronounce a trademark that is not a recognized English
word, as is the case with opposer’s mark SCHICK. See In re
Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969) and
Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d
1862 (TTAB 2002). See also In re Microsoft Corp., 68 USPQ2d
1195 (TTAB 2003) (it is not possible to control how
consumers will vocalize marks). However, it certainly is
reasonable to pronounce SCHICK in a very similar manner to
SLICK. As such, there are strong similarities in the
pronunciation of SCHICK and SLICK, while the aural
dissimilarity caused by the inclusion of the suggestive
wording ULTRA PLUS in applicant’s mark is not, for the
reasons we have previously discussed, sufficient to
distinguish the marks. Thus, when taken as a whole, the
marks SCHICK and SLICK ULTRA PLUS are similar in sound.
As for the connotations of the marks, they are
dissimilar. Opposer’s mark appears to have originally been
the surname of the inventor of the safety razor,36 although
it is not clear to what extent consumers are aware of this
or that SCHICK presently is recognized as such. To those
not familiar with the historical significance of SCHICK, the
mark would appear to be an invented word, perhaps meant to
be an onomatopoeic term, while applicant’s mark is composed

36 Mekhail Declaration, Exhibit 1.
Opposition No. 91180015
22
of recognized English words that, as combined, suggest a
superlative degree of smoothness. However, similarity in
any one of the elements of sound, appearance or meaning is
sufficient to support a determination of likelihood of
confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the
similarity in either form, spelling or sound alone is likely
to cause confusion”) and In re White Swan Ltd., 8 USPQ2d
1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of
similarity as to any one factor (sight, sound or meaning)
alone ‘may be sufficient to support a holding that the marks
are confusingly similar’”) (citations omitted)). Therefore,
although the marks have different meanings, this does not
mandate a finding that there can be no likelihood of
confusion, given the similarities in appearance and sound
between applicant’s SLICK ULTRA PLUS mark and opposer’s
famous SCHICK mark.
We find that the similarities in appearance and sound
between the marks outweigh their differences in meaning. In
particular, because the goods are likely to be purchased as
“off-the-shelf” items, the similarity in appearance of the
marks plays a greater role than the differences in
connotation. This is particularly true because the goods
are not only identical, but are likely to be purchased
without great care. In view of the fact that opposer’s mark
Opposition No. 91180015
23
is famous, consumers are likely to “see” the word SLICK in
applicant’s mark as SCHICK, and therefore not recognize the
differences in connotation. (As previously discussed, the
additional words ULTRA PLUS do not serve to distinguish the
marks.) Overall, the marks convey similar commercial
impressions, and this du Pont factor also favors opposer.
Finally, we note applicant’s argument that the marks
are dissimilar as they are actually used by the parties.37
However, both opposer’s registered SCHICK mark and the mark
applicant seeks to register are shown in their applications
for registration in typed or standard character form, with
neither party making a trademark claim to any special form
of display of its respective word mark. Therefore, the
manner in which the opposer and applicant are now displaying
their word marks on packaging and advertisements for their
goods is of no consequence in our determination of the
likelihood of confusion inasmuch as it is only the words
that are being claimed as trademarks, while the current
manner of display of those word marks is subject to change
at any time. See Phillips Petroleum v. C.J. Webb, 442 F.2d
1376, 170 USPQ 35, 36 (CCPA 1971). See also Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48
(Fed. Cir. 2000).

37 Brief, p. 9-11.
Opposition No. 91180015
24
Summary
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto, including
any evidence and arguments not specifically discussed in
this opinion.38
We conclude that opposer has established its standing
to bring this proceeding; its priority of use; and that a
likelihood of confusion exists between its famous SCHICK
mark and applicant’s SLICK ULTRA PLUS mark, as used in
connection with goods that are, in part, identical. To the
extent that any of applicant’s points raise a doubt about
our conclusion, such doubt must be resolved in favor of the
prior user and against the newcomer. See San Fernando Mfg.
Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 2 (CCPA 1977).
DECISION: The opposition is sustained, and
registration to applicant is refused.

38 We note in that regard that applicant has made of record the
determination of the Australian Trademark Office in an opposition
brought by opposer’s predecessor in interest against a third
party’s registration of the mark SLICK SHAVERS AS CLOSE AS YOU
CAN GET in stylized form. Although we have considered this
evidence, it is well settled that the findings of a foreign
tribunal are not relevant to the issues in a proceeding
concerning the right to register a trademark in the United
States. See, e.g., Societe Civile Des Domaines Dourthe Freres v.
S.A. Consortium Vinicole De Bordeaux Et De La Gironde, 6 USPQ2d
1205, 1207 n. 6 (TTAB 1988).