Fred Rosengart

Trademark Trial and Appeal Board

Feb 11, 2011

No. 77671600 (T.T.A.B. Feb. 11, 2011)

Mailed:
February 11, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fred Rosengart
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Serial No. 77671600
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Dr. Mark M. Friedman for Fred Rosengart

John D. Dalier, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Fred Rosengart has filed an application to register
the standard character mark ROXO for goods identified as
“cosmetics; cosmetic creams for skin care; wrinkle removing
skin care preparations; beauty creams; skin creams; skin
fresheners; skin care products, namely, non-medicated skin
serum; body lotions; facial lotions; sun-block lotions;
skin lotions; eye creams; beauty masks; night creams;
facial beauty masks; facial cream; facial and body
emulsions; beauty serums; perfumes; eau de perfumes;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77671600
2
colognes; oils for perfumes and scents; make-up; eye make-
up; make-up for the face and body” in International Class
3.1 In response to the examining attorney’s requirement,
applicant provided the following translation statement:
The English translation of ‘ROXO’ in the mark is PURPLE.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods, so
resembles the registered standard character mark PURPLE for
“non-medicated skin care preparations” in International
Class 3,2 as to be likely to cause confusion, mistake or
deception.
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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

1 Application Serial No. 77671600, filed February 17, 2009,
alleging a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b).

2 Registration No. 3178683, issued November 28, 2006, on the
Supplemental Register.

Serial No. 77671600
3
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 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).
We turn first to a consideration of the goods
identified in the application and the cited registration.
The identification “non-medicated skin care preparations”
in the registration encompasses all of the skin care
preparations in the application (e.g., cosmetic creams for
skin care, wrinkle removing skin care preparations, skin
creams, skin lotions) and, as such, are legally identical.
Moreover, given that some of the goods are legally
identical, we must presume that the identical goods will be
sold in the same channels of trade and will be bought by
the same classes of purchasers. See Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); and In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994).
With regard to applicant’s argument that the actual
trade channels do not overlap, we must consider applicant’s
goods and the cited registrant’s goods as they are
Serial No. 77671600
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identified in the application and the registration and we
cannot read limitations into those identifications. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987). If the identification in an
application or a cited registration describes goods or
services broadly, and there is no limitation as to the
nature, type, channels of trade or classes of purchasers,
it is presumed that the registration encompasses all goods
or services of the type described, that they move in all
channels of trade normal for these goods, and that they are
available to all classes of purchasers for the described
goods. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). See also In re Bercut-Vandervoort & Co., 229 USPQ
763, 764 (TTAB 1986) (applicant may not restrict the scope
of the identified goods by extrinsic evidence).
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade, and classes
of purchasers weigh in favor of likelihood of confusion as
to the cited registration.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark ROXO and registrant’s mark PURPLE are
similar or dissimilar when compared in their entireties in
Serial No. 77671600
5
terms of appearance, sound, connotation and commercial
impression. We make our analysis keeping in mind that,
“[w]hen marks would appear on virtually identical goods or
services, the degree of similarity [between the marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992). See also Shen
Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d
1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).
We make this determination in accordance with the
following principles. The test, under this du Pont factor,
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 impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. 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).
Finally, “[u]nder the doctrine of foreign equivalents,
foreign words from common languages are translated into
English to determine...similarity of connotation in order
Serial No. 77671600
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to ascertain confusing similarity with English word marks.”
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1377 (Fed.
Cir. 2005).
The examining attorney argues that ROXO is the
Portuguese equivalent of the English word PURPLE. In
support of this assertion, he submitted a translation for
ROXO retrieved from a translation website. See Office
Action dated May 14, 2009 (http://babelfish/yahoo.com).
This definition is consistent with the translation of the
mark provided by applicant. The examining attorney argues
that under the doctrine of equivalents, PURPLE is the
“literal and exact English equivalent” to ROXO, thus, the
marks have the same connotation and connotation alone “can
be sufficient to find similarity between marks.” Br. p. 8.
Applicant challenges the application of the doctrine
of foreign equivalents because (1) “less than .4235%3 of
Americans speak Portuguese [thus] the average American
purchaser is not fluent in Portuguese, and it is extremely
unlikely that he would stop to translate the foreign word
‘ROXO’ to its English equivalent ‘PURPLE’,” (2) “the word

3 This figure is derived from data retrieved from the Concordia
Language Villages website and the U.S. Census Bureau website
attached to applicant’s July 21, 2009 response.

Serial No. 77671600
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‘roxo’ in the Portuguese language ... is pronounced like
‘rosho’ ...[making it] unlikely that the ordinary American
purchaser will identify the Applicant’s mark as a
Portuguese word and translate it into its English
equivalent,” and (3) ROXO and PURPLE are not equivalents
because, based on a translation found on the website Google
Translate, ROXO translates to purple or violet. Br. p. 5.
The doctrine of foreign equivalents is applied when
the term is from a common modern language and it is likely
that “the ordinary American purchaser would ‘stop and
translate [the term] into its English equivalent.” Palm
Bay, supra at 1696, quoting In re Pan Tex Hotel Corp., 190
USPQ 109, 110 (TTAB 1976). See also In re Thomas, 79
USPQ2d 1021 (TTAB 2006). “The ‘ordinary American
purchaser’ in this context refers to the ordinary American
purchaser who is knowledgeable in the foreign language.”
In re Thomas, 79 USPQ2d at 1024. Thus, applicant’s
argument defining the ordinary purchaser as the “average
American ...not fluent in Portuguese” is misplaced.4

4 To the extent applicant is relying on In re Spirits N.V., 563
F.3d 1347, 90 USPQ2d 1489, 1495 n. 5. (Fed. Cir. 2009), based on
the Court’s statement that a “substantial portion” of the
relevant consumers be deceived to establish the materiality
requirement under a Section 2(e)(3) refusal, the Court expressly
noted that “[t]here are cases applying the doctrine of foreign
equivalents somewhat differently in other contexts” but in the
case before it, it was only addressing “subsection (e)(3) and its
materially requirement” and, therefore, the Court had “no
Serial No. 77671600
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We find that Portuguese is a common modern language.
Further, we find that PURPLE is the exact translation of
ROXO. The fact that the word VIOLET is also a possible
translation does not change the similarity in connotation,
inasmuch as violet is simply part of the color spectrum
shared by purple. See Office Action dated August 10, 2009,
Merriam-Webster Online entries for violet and purple.
Finally, we find that the mark would be translated by those
who are familiar with the Portuguese language. This is not
a case where the mark would not be translated because of
the inherent nature of the mark. See In re Thomas, supra,
citing, In re Tia Maria, Inc. 188 USPQ 524 (TTAB 1984). We
acknowledge that this doctrine is not absolute and “where
the only similarity between the marks is in connotation, a
much closer approximation is necessary...to justify a
refusal to register on that basis alone.” In re Sarkli,
721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983) (REPECHAGE
not confusingly similar to SECOND CHANCE). See also In re
Buckner Enterprises Corp., 6 USPQ2d 1316 (TTAB 1987)
(PALOMA, meaning both “dove” and “pigeon,” not confusingly

occasion ... to decide the scope of the doctrine of foreign
equivalents in other contexts.” As noted in In re Thomas,
“applicant’s interpretation of it would write the doctrine out of
existence.” Thomas, 79 USPQ2d at 1024.

Serial No. 77671600
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similar to DOVE). However, in this case, the translation
is exact. Thus, despite the differences in appearance and
sound, because of the identity in connotation we find the
marks to be confusingly similar.
We recognize that registrant’s mark is on the
Supplemental Register and, as such, is descriptive and not
to be accorded a wide scope of protection. However, as
noted by the examining attorney even marks on the
Supplemental Register may prevent registration of a
confusingly similar designation. In re Clorox Co., 578
F.2d 305, 198 USPQ 337, 340 (CCPA 1978). Moreover, with
regard to the coexistence of “purple” marks on the register
for skin care products, we first note that the relevant
examples of third-party registrations submitted by
applicant include other matter by which consumers may
distinguish the marks.5 Second, it is well established that
each case must stand on its own merits. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
“[P]rior decisions in trademark cases, where the issue is a
likelihood of confusion, furnish meager assistance in the
resolution of that issue. Each case must be decided on the
basis of the factual situation thereby presented.”

5 Some of applicant’s examples are merely applications and, as
such, only serve as evidence of the fact that they were filed.
Serial No. 77671600
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Polaroid Corp. v. Richard Mfg. Co., 341 F.2d 150, 144 USPQ
419, 421 (CCPA 1965). See also In re Scholastic Testing
Service, Inc., 196 USPQ 517 (TTAB 1977).
Applicant contends that the purchasers of the
respective goods often exercise “special care when
purchasing skin care preparations and cosmetics, making
such decisions ones that are made after much deliberation.”
Br. p. 9. Applicant provides no evidentiary support for
this contention. Moreover, registrant’s and applicant’s
goods and channels of trade are not limited by classes of
purchasers. Therefore, we must consider applicant’s
potential purchasers to include all usual purchasers of the
goods, and make our determination on the least
sophisticated. In this case that would include members of
the general public who are ordinary purchasers.
In conclusion, we find that because the marks are
similar, the goods are legally identical, and the channels
of trade and classes of purchasers are the same, confusion
is likely between applicant’s mark and the mark in the
cited registration. To the extent there are any doubts, we
resolve them, as we must, in favor of the registrant. In
re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Serial No. 77671600
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Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.