First Quality Baby Products, LLC

Trademark Trial and Appeal Board

Mar 12, 2018

No. 87018922 (T.T.A.B. Mar. 12, 2018)

Mailed: March 12, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re First Quality Baby Products, LLC.
_____

Serial Nos. 87018922 and 870189351
_____

Holly Pekowsky of Amster Rothstein & Ebenstein LLP,
for First Quality Baby Products, LLC.
Tamara Hudson, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Cataldo, Ritchie and Lynch, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

1 The Examining Attorney’s November 9, 2017 motion to consolidate these proceedings (9
TTABVUE) was granted in a paralegal order issued on November 15, 2017 (10 TTABVUE).
The records in these consolidated appeals are essentially identical, and we will refer in this
decision to the record in application Serial No. 87018922.
Page references herein to the application record refer to the .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal refer to the Board’s TTABVUE docket system.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 87018922 and 87018935
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First Quality Baby Products, LLC (Applicant) seeks registration on the Principal
Register of the marks SKIN SENSE and SKINSENSE (both in standard characters)
for “disposable baby diapers” in International Class 5.2
The Trademark Examining Attorney has refused registration as to both
applications under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that Applicant’s marks, as intended to be used in connection with the goods
identified in the applications, so resemble the mark SKINSENSE ORGANIC (in
standard characters, “ORGANIC” disclaimed), previously registered on the Principal
Register for the following goods:
Organic beauty serums; organic body and beauty care cosmetics; organic body
butter; organic body creams; organic body lotion; organic body scrub; organic
body sprays; organic exfoliant creams; organic face and body creams; organic
face and body lotions; organic facial cleansers; organic facial cream; organic
facial lotion; organic facial masks; organic facial scrubs; organic moisturizing
creams; organic moisturizing preparations for the skin; organic skin cleansers;
organic skin moisturizer, in International Class 3,3

as to be likely to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusals final, Applicant appealed to this
Board. We affirm the refusal to register as to each application.
A. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of

2 Application Serial Nos. 87018922 and 87018935 both were filed on April 29, 2016 under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a
bona fide intention to use the marks in commerce.
3 Registration No. 4462967 issued on January 7, 2014.
Serial Nos. 87018922 and 87018935
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confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 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, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
1. Strength of the Mark in the Cited Registration
Applicant argues that the SKINSENSE ORGANIC mark in the cited registration
is weak because both shared elements of the Cited Mark, SKIN and
SENSE, are highly suggestive in connection with skincare products –
i.e., indicating that the products will be good for the user’s skin, and
therefore it makes “sense” to use these products.4

However, even if we accept that the term SKIN is suggestive of the goods identified
in the cited registration, Applicant has submitted no evidence to support its
speculative argument that term SKINSENSE in the cited mark is weak, and we reject
Applicant’s apparent contention that the mark is highly suggestive on its face. In
support of its contention that the cited SKINSENSE ORGANIC mark is weak,
Applicant introduced into the record with its December 22, 2016 Response to the

4 7 TTABVUE 3.
Page references herein to the application record refer to the downloadable .pdf version of the
United States Patent and Trademark Office (USPTO) Trademark Status & Document
Retrieval (TSDR) system. References to the briefs refer to the Board’s TTABVUE docket
system.
Serial Nos. 87018922 and 87018935
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Examining Attorney’s first Office Action a copy of a third-party registration for a
mark issued on the Principal Register in standard characters:5
Reg. No. 3425622 for the mark INTELLIGENT SKIN SENSE
(“SKIN” disclaimed) for “face and body lotions; make-up remover;
facial cleansers; cleansing creams; cosmetic creams for skin care.”

With its July 17, 2017 request for reconsideration, Applicant introduced into the
record an additional copy of the above registration, as well as copies of the following
four third-party registrations, all issued on the Principal Register to different entities
(all marks are in standard characters):6
Reg. No. 2527398 for the mark SKIN SENSE for “spas in the nature
of massage, skin care, manicure, pedicure and make-up;”

Reg. No. 3461546 for the mark SKINCENTS for “non-medicated skin
care preparations; skin cleansers; skin conditioners; skin cream; skin
lotions; skin moisturizer;”

Reg. No. 4269359 for the mark SKINSMART SOLUTIONS
(“SOLUTIONS” disclaimed) for numerous skin care products;

Reg. No. 1783801 for the mark SKINTELLIGENCE for “cosmetics;
namely, skin cleanser preparations, skin freshener preparations,
skin moisturizer, toning lotion, emollient cream, toning mask, eye
toning gel.”

Evidence of third-party use and registration of a term in the relevant industry is
considered in the likelihood of confusion analysis. Juice Generation, Inc. v. GS

5 At .pdf 10-11.
6 At .pdf 10-21. Applicant further submitted a copy of an expired registration, which “is
evidence only of the fact that it previously existed.” UMG Recordings Inc. v. Mattel Inc., 100
USPQ2d 1868, 1872 n.2 (TTAB 2011). Any benefits conferred by the registration, including
the evidentiary presumptions afforded by Section 7(b) of the Trademark Act, were lost when
the registration expired. See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ
46 (CCPA 1973); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002).

Serial Nos. 87018922 and 87018935
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Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015); Jack
Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). The “existence of [third party]
registrations is not evidence of what happens in the market place or that customers
are familiar with them.” AMF Inc. v. American Leisure Prods., Inc., 474 F.2d 1403,
177 USPQ 268, 269 (CCPA 1973). Nevertheless, in determining the degree of
weakness, if any, in the shared terms, we must “adequately account for the apparent
force of [third-party use] evidence,” regardless of whether “specifics” pertaining to the
extent and impact of such use have been proven. Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-5 (Fed. Cir. 2015). “[E]xtensive evidence
of third-party use and registrations is ‘powerful on its face,’ even where the specific
extent and impact of the usage has not been established.” Jack Wolfskin, 116 USPQ2d
at 1136, citing to Juice Generation, 115 USPQ2d at 1674.
In the case before us, however, Applicant points to no evidence of third-party use,
and instead relies on third-party registrations of marks that include SKINSENSE or
formatives of SKIN. Applicant’s record thus does not demonstrate commercial
weakness from third-party use, and fails to show that consumers actually are
conditioned to distinguishing among marks including SKINSENSE or SKIN SENSE.
Of the five third-party registrations introduced into the record by Applicant, Reg.
No. 3461546 for the mark SKINCENTS for “non-medicated skin care
preparations; skin cleansers; skin conditioners; skin cream; skin lotions; skin
moisturizer” is arguably the closest overall, in that the mark is similar to the
Serial Nos. 87018922 and 87018935
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involved marks in appearance and sound, although it differs in meaning, and it
recites goods that are related to those in the cited registration. Reg. No. 3425622
for the mark INTELLIGENT SKIN SENSE identifies similar goods and contains
the term in question but also features additional distinguishing matter. Reg. No.
2527398 for the mark SKIN SENSE is legally identical to both of the involved
marks, and similar to the cited mark, but differs in that it recites the services “spas
in the nature of massage, skin care, manicure, pedicure and make-up,” which are
dissimilar from the goods in the cited registration. Reg. Nos. 4269359 and
1783801 for the marks SKINSMART SOLUTIONS and SKINTELLIGENCE
differ from both the cited mark and the marks in the involved applications,
although the goods are related to Registrant’s goods.
Thus, unlike in Juice Generation and Jack Wolfskin, where “voluminous” third-
party evidence involved the very same goods and services at issue, here Applicant’s
five third-party registrations proffered as evidence relate to different services in one
of the registrations and different marks in three of them. It therefore lacks probative
value as to alleged weakness of the term in relation to the registrant’s goods. See
i.am.symbolic, 123 USPQ2d at 1751 (disregarding third-party registrations for goods
in other classes where the proffering party “has neither introduced evidence, nor
provided adequate explanation to support a determination that the existence of I AM
marks for goods in other classes, … support a finding that registrants’ marks are
weak with respect to the goods identified in their registrations”). Overall, given the
nature and quantity of the third-party registration evidence, we find it insufficient to
Serial Nos. 87018922 and 87018935
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diminish the scope of protection to be afforded the [term] portion of the mark in the
Registration. Cf. Juice Generation, 115 USPQ2d at 1675 (weakness shown by at least
26 third-party uses and registrations containing the same phrase for the same
services); Jack Wolfskin, 116 USPQ2d at 1136 (third-party weakness evidence
characterized as “voluminous”).
2. Similarity or Dissimilarity of the Marks
We address the du Pont likelihood of confusion factor focusing on “the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). “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) (quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 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
Serial Nos. 87018922 and 87018935
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determining likelihood of confusion.”). On the other hand, 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 Nat’l Data, 224 USPQ at 751.
The only difference between Applicant’s marks SKIN SENSE and SKINSENSE
and the registered mark SKINSENSE ORGANIC is the presence of the disclaimed
word “ORGANIC” in the registered mark. The presence or absence of a space between
virtually the same words (SKINSENSE and SKIN SENSE) is not a significant
difference. Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983),
aff’d, 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the
marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The
word marks are phonetically identical and visually almost identical”); In re Best
Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be
little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically
identical”).
With regard to the term ORGANIC in the registered mark, disclaimed matter is
often “less significant in creating the mark’s commercial impression.” In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). However, while a disclaimed
term … may be given little weight … it may not be ignored.” M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). We
take judicial notice of the following definition of “organic” from
OxfordDictionaries.com/definition/organic: “relating to or derived from living matter;
Serial Nos. 87018922 and 87018935
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produced or involving production without the use of chemical fertilizers, pesticides,
or other artificial chemicals.”7 The disclaimed term “ORGANIC” in the registered
mark thus describes a feature of the recited goods, which are explicitly identified as
organic, namely, that they are produced or derived from living matter without the
use of artificial chemicals. “Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’” Cunningham v. Laser Golf Corp., 55 USPQ2d 1842,
1846 (Fed. Cir. 2000), quoting, In re Nat’l Data, 224 USPQ at 752.
With regard to connotation, there is no evidence of record of the meaning of the
term SKIN SENSE or SKINSENSE, to the extent the term has a meaning. The term
may suggest products that may sense the condition of the skin, allow the consumer
to better sense the condition of his or her skin or, as Applicant opines, be a sensible
choice for the skin. In any event, we must evaluate the mark in connection with the
goods identified in applications and the cited registration, which include diapers and
various skin care products. In the contexts of these goods, respectively, there is
nothing in the record to suggest that customers would perceive SKIN SENSE or
SKINSENSE on the one hand and SKINSENSE ORGANIC on the other, to have
different meanings. In other words, even if we view the term SKINSENSE in the

7 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
fixed editions. In re Hotels.com, L.P., 87 USPQ2d 1100, 1103 (TTAB 2007), aff’d, 573 F.3d
1300, 91 USPQ2d 1532 (Fed. Cir. 2009); In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1642
n.4 (TTAB 2011).

Serial Nos. 87018922 and 87018935
- 10 -
SKINSENSE ORGANIC mark as connoting products that are good for the skin and
that it makes sense to use them, that connotation would not be so far removed from
the connotation of SKIN SENSE or SKINSENSE as applied to diapers.
We acknowledge that the additional term ORGANIC serves to visually and aurally
distinguish the Applicant’s marks and the cited mark. However, the only term in
Applicant’s marks is SKIN SENSE or SKINSENSE, and SKINSENSE is the only
distinctive term in the registered mark. This common identical term in both marks
results in marks that, as discussed above, are similar in sound, appearance, meaning,
and commercial impression. The presence of the additional term ORGANIC does not
distinguish the marks since it merely indicates that the owner of the cited
registration offers products under its mark that are made of natural ingredients and
free from artificial chemicals. See In re Jewelmasters, Inc., 221 USPQ 90 (TTAB 1983)
(JEWELMASTERS for retail jewelry store services held likely to be confused with
MASTER JEWELER’S COLLECTION for jewelry); Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Given the
dominance of the word ‘Packard’ in PACKARD TECHNOLOGIES and HP’s heavy
involvement in the technology field, this court agrees with the Board that the
similarities in the marks [PACKARD TECHNOLOGIES and HEWLETT PACKARD]
outweigh the differences. Substantial evidence supports the Board’s finding that the
marks are similar in their entireties”).
Furthermore, we note that SKIN SENSE or SKINSENSE, the term which the
marks share in common, and the entirety of Applicant’s marks, is also the first term
Serial Nos. 87018922 and 87018935
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and dominant part of the cited mark. 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.”). See also Palm Bay Imps., 73 USPQ2d at 1692 (“The
presence of this strong distinctive term as the first word in both parties’ marks
renders the marks similar, especially in light of the largely laudatory (and hence non-
source identifying) significance of ROYALE.”).
We find, as a result, that the differences between the marks are outweighed by
their similarity in appearance, sound and meaning. Considered in their entireties, we
find that the marks convey similar overall commercial impressions. This du Pont
factor thus supports a finding that confusion is likely.
3. Relatedness of the Goods, Their Trade Channels and Consumers
We next consider the du Pont factors addressing the similarity of the goods, the
channels of trade in which they may be encountered and the purchasers to whom they
are marketed. We are mindful that the test is not whether consumers would be likely
to confuse these goods, but rather whether they would be likely to be confused as to
their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Therefore, to
support a finding of likelihood of confusion, it is not necessary that the goods be
identical or even competitive. It is sufficient that the goods are related in some
manner, or that the circumstances surrounding their marketing are such that they
would be encountered by the same persons in situations that would give rise, because
of the marks, to a mistaken belief that they originate from the same source or that
Serial Nos. 87018922 and 87018935
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there is an association or connection between the sources of the goods. In re Thor Tech
Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
We must look to the goods as identified in the involved applications and cited
registration, not to any extrinsic evidence of actual use. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014).
Because there are no limitations as to channels of trade or classes of purchasers in
the recitation of goods in either the cited registration or the applications, we must
presume that the identified goods move in all channels of trade normal for such goods
and are available to all potential classes of ordinary consumers of such goods. See
Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applicant’s goods in both applications are “disposable baby diapers” and the goods
in the cited registration are
Organic beauty serums; organic body and beauty care cosmetics; organic
body butter; organic body creams; organic body lotion; organic body
scrub; organic body sprays; organic exfoliant creams; organic face and
body creams; organic face and body lotions; organic facial cleansers;
organic facial cream; organic facial lotion; organic facial masks; organic
facial scrubs; organic moisturizing creams; organic moisturizing
preparations for the skin; organic skin cleansers; organic skin
moisturizer.

Serial Nos. 87018922 and 87018935
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In support of the refusal of registration, the Examining Attorney introduced with her
June 28, 2016 first Office Action printouts from three third-party internet websites
offering under the same mark both disposable baby diapers and various organic skin
care products identified in the cited registration, namely: honest.com,
seventhgeneration.com and babyganics.com.8 With her January 17, 2017 final Office
Action, the Examining Attorney introduced into the record screenshots from the
additional website babyearth.com that also offer disposable baby diapers and skin
care products, including organic skin care products under the same marks.9 This
evidence demonstrates that at least four third parties identify both Applicant’s goods
and the goods in the cited registration under the same mark.
In addition, the Examining Attorney introduced into the record with her January
17, 2017 first Office Action copies of ten use-based, third-party registrations for
marks identifying both diapers and various skin products. The following examples
are illustrative:10
Registration No. 3051906 for the mark FRED’S (in stylized form) for goods in
a number of classes including “baby diapers; baby, body, bath and face
powders, skin, hair, facial, body lotions, cold, hand, shaving, skin and
vanishing cream.”

Registration No. 4369387 for the mark BIO SPECTRA ATTITUDE (in
standard characters) for “eco-friendly baby diapers; shampoo and hair
conditioner for adults; body wash; body lotion; soap for hands and body;
moisturizers; day cream; night cream.”

8 At .pdf 8-21.
9 At .pdf 7-34.
10 At .pdf 7-74.
Serial Nos. 87018922 and 87018935
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Registration No. 4594164 for the mark CARING TODAY FOR SEVEN
GENERATIONS OF TOMORROWS. (in standard character) for “non-
medicated skin care preparations, skin lotions, cremes, oils and gels for
infants, children and adults; disposable baby diapers.”

As a general proposition, although use-based, third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have some probative value to the extent they may serve
to suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). In this case, while we recognize that consumers
are able to distinguish diapers from skin care products, the totality of the internet
and third-party registration evidence demonstrates that these goods may emanate
from the same sources under the same marks.
Furthermore, the identifications of goods in the involved applications and cited
registration do not recite any limitations as to the channels of trade in which they are
or will be offered. In the absence of trade channel limitations in any of the recitations
of goods, we presume Applicant’s disposable baby diapers and the various organic
skin care products identified in the cited registration are offered in all customary
trade channels. The internet evidence of record also supports a finding that these
goods are offered on the same websites under the same marks, in other words, in at
least one common channel of trade. As a result, in our likelihood of confusion analysis,
these findings under the du Pont factors of the relatedness of the goods, their trade
channels and classes of consumers also support a finding that confusion is likely.
Serial Nos. 87018922 and 87018935
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4. Summary
Considering all the evidence of record, including any evidence not specifically
discussed herein, we find that the marks in their entireties are similar and that the
identified goods are related and may be encountered by the same consumers in at
least one common channel of trade. Applicant’s modest evidence of third-party
registration of similar marks is insufficient to mitigate in favor of a finding of no
likelihood of confusion. We find therefore that Applicant’s marks are likely to cause
confusion with the mark in the cited registration when used in association with the
identified goods.
Decision: The refusal to register Applicant’s marks on the ground of likelihood of
confusion is affirmed as to both applications.