Follica, Inc.

Trademark Trial and Appeal Board

Sep 30, 2010

No. 77665184 (T.T.A.B. Sep. 30, 2010)

Mailed: September 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Follica, Inc.
___________

Serial No. 77665184
___________

Karen L. Elbing of Clark & Elbing for Follica, Inc.

Esther A. Borsuk, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
____________

Before Hairston, Walters, and Zervas, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Follica, Inc. has filed an application to register the
mark FOLLICA on the Principal Register for, inter alia,
“pharmaceutical preparations for hair growth treatments,” in
International Class 5.1
With respect only to these goods in International Class
5, the examining attorney has issued a final refusal to

1 Serial No. 77665184, filed February 6, 2009, based on an allegation of
a bona fide intent to use the mark in commerce. The application
includes goods and services in International Classes 10 and 44 that are
not part of the refusal and appeal.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77665184

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register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark PROFOLLICA, previously registered for “shampoos;
hair care kits comprising non-medicated hair care
preparations, namely, a shampoo and activator gel; hair
gel,” in International Class 3,”2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
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).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by

2 Registration No. 3453331, issued June 24, 2008, to Leading Edge
Marketing, Inc.

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Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
The Marks
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715
(TTAB 2008). The 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).
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
Serial No. 77665184

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determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Applicant contends that the “Pro” portion of the
registered mark, PROFOLLICA, is sufficient to distinguish it
from applicant’s mark, FOLLICA. Whereas, the examining
attorney argues that “Pro” is defined in the Merriam-Webster
Online Dictionary (11th ed. 2010) as “noun or adj,
Professional”3; that “Pro is a commonly used term, which
renders “Follica” the dominant portion of applicant’s mark;
and, that, therefore, the marks create the same overall
commercial impression. We take judicial notice of the
additional definitions in the Merriam-Webster Online
Dictionary (2010) of “Pro” as “prefix, 1. a. earlier than;
prior to; before; b. rudimentary c. precursory; 2. a.
located in front of or at the front of; anterior to” and
“adverb, on the affirmative side; in affirmation.”
Regardless of which of the above definitions is
attributed to the “Pro” portion of the registered mark, we
agree with the examining attorney that prospective
purchasers are likely to see “Pro” as a prefix to the term
“Follica,” which we find is, thus, the dominant portion of
the registered mark. Applicant’s mark is identical to this

3 We grant the examining attorney’s request that we take judicial notice
of this dictionary definition.

Serial No. 77665184

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portion of the registered mark. Therefore, although the
marks have the noted differences, when we compare them in
their entireties we find that on the whole they are similar
in appearance, sound, connotation and commercial impression,
and that the lack of the prefix “Pro” in applicant’s mark
does not distinguish it from the registered mark. Consumers
familiar with registrant’s mark may simply conclude that
applicant’s mark is an alternate version of the registrant’s
mark, perhaps adopted in conjunction with an alternate line
of products for the hair, i.e., products to stimulate hair
growth.
This du Pont factor favors a finding of likelihood of
confusion.
The Goods
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
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Further, it is a general rule that goods need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that goods
are related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which could give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of each parties’ goods.
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases
cited therein; and Time Warner Entertainment Co. v. Jones,
65 USPQ2d 1650, 1661 (TTAB 2002).
Applicant contends that its goods are pharmaceutical
preparations which are quite distinct from non-medicated
hair products; that applicant’s pharmaceutical products are
likely to be purchased upon the recommendation or
prescription of a doctor or pharmacist and, therefore, the
channels of trade differ; and that the relevant purchaser of
its goods is both careful and sophisticated, i.e.,
knowledgeable. On the other hand, the examining attorney
contends that applicant’s and registrant’s goods are for the
identical purpose of promoting hair growth; that the fact
that one is a pharmaceutical preparation while the other is
non-medicated is immaterial; and that the end consumer of
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applicant’s goods is the general consumer, who is not
sophisticated.
In support of her position that the goods are similar,
the examining attorney submitted copies of nine third-party
use-based registrations which include, among many other
items, hair care products, non-medicated hair growth
products, and medicated hair growth products. Applicant
contends that this evidence is not persuasive and points to
an excerpt from registrant’s website, which applicant
submitted in response to the refusal to register. Applicant
points to the following statements therein:
• ProFollica “lets you break free of surgery and
prescription drugs for your hair loss needs”;

• ProFollica is the natural choice for those who want an
alternative to the pharmaceutical approach for hair re-
growth”; and

• “This product is not intended to diagnose, cure, or
prevent any disease.”

Registrant’s goods are broadly identified as “shampoos;
hair care kits comprising non-medicated hair care
preparations, namely, a shampoo and activator gel; hair
gel,” which encompass products to stimulate hair growth.
Information from registrant’s website confirms this fact.
Therefore, registrant’s identified goods encompass non-
medicated hair shampoos and gels used to stimulate hair
growth, which is identical in purpose to applicant’s goods.
We take judicial notice of the definition in the Merriam-
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Webster Online Dictionary (2010) of “pharmaceutical” as “a
medicinal drug.” “Preparations” is a broad term that, in
the context of applicant’s goods, could encompass shampoos
and hair gels. Thus, the only difference between
applicant’s goods and a subset of registrant’s goods is that
applicant’s goods are medicinal, or medicated products,
whereas, registrant’s products are not medicated.
While the third-party registrations in evidence are not
evidence of use of the marks in connection with the
respectively identified products, or that the public is
familiar with them, such registrations nevertheless have
some probative value to the extent that they may serve to
suggest that such goods are of a type which may emanate from
a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467 (TTAB 1988). In this case, in view of the
obvious similarities between the goods and their purpose, we
find that these third-party use-based registrations are
sufficient to support the conclusion that the goods are
related.
This du Pont factor weighs in favor of a likelihood of
confusion.
Channels of Trade and Purchasers
There is no evidence regarding trade channels for the
respective goods and, thus, this du Pont factor is neutral.
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Similarly, there is no evidence in the record that
pharmaceutical preparations may be purchased only upon
prescription, which would require consultation with a
doctor. Therefore, we find that both applicant's and
registrant’s identified goods may be purchased by members of
the general public. These purchasers encompass all levels
of sophistication and there is no evidence that purchasers
of hair growth stimulating products exercise more than
ordinary care in purchasing these products.
This du Pont factor weighs in favor of a likelihood of
confusion.
Conclusion
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the
substantial similarity in the commercial impressions of
applicant’s mark, FOLLICA, and registrant’s mark,
PROFOLLICA, their contemporaneous use on the related goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed as to the goods in International Class 5 in this
multiclass application. The application will publish in due
course in only for the two remaining classes.