Galderma S.A.

Trademark Trial and Appeal Board

Apr 27, 2011

No. 77704186 (T.T.A.B. Apr. 27, 2011)

Mailed:
April 27, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Galderma S.A.
________

Serial No. 77704186
_______

G. Mathew Lombard and Darren M. Geliebter of Lombard &
Geliebter LLP for Galderma S.A.

Aretha Somerville, Trademark Examining Attorney,
Law Office 107 (J. Leslie Bishop, Managing Attorney)
_______

Before Mermelstein, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Galderma S.A. (“applicant”) has appealed from the
final refusal of the trademark examining attorney to
register LIVE LIFE SKIN SMART, in standard character form,
for goods and services ultimately identified as follows:
Printed materials, namely, booklets,
pamphlets, newsletters in the fields of
healthcare and dermatology, in Class
16;

Providing online forums for
transmission of messages among computer
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77704186
2
users concerning healthcare and
dermatology, in Class 38; and

Educational services, namely, providing
congresses, conferences, symposia,
meetings, forums, seminars and
workshops in the fields of healthcare
and dermatology, in Class 41.

Applicant disclaimed the exclusive right to use the word
“Skin.”
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the previously
registered mark SKINSMART, in standard character form, for
“dermatology skin care services,” in Class 44,1 that as used
in connection with applicant’s identified goods and
services, it is likely to cause confusion or mistake or to
deceive.
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
1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the

1 Registration No. 3429170, issued May 20, 2008.
Ser No. 77704186
3
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, 29 (CCPA
1976).
A. The similarity or dissimilarity and nature of the
goods and services described in the application and
the services in the registration.

To show that the goods and services are related, the
Examining Attorney submitted excerpts from the Internet
websites discussed below.
1. Helendale Dermatology & Medical Spa
(helendaledermatology.com) is a full service dermatology
practice focusing on medical and surgical care of the skin.
The Helendale Dermatology & Medical Spa offers an email
newsletter in the field of skin health and beauty. This
website shows the use of a mark in connection with a
dermatology practice and a newsletter.
2. The User Instinct website (userinstinct.com)
appears to be a business locator website. This excerpt
identifies “Children’s Dermatology Services in Wexford,
Pennsylvania.” It asks readers to write reviews of the
company and asks companies, such as Children’s Dermatology
Services to post press releases on the website noting,
however, that the Children’s Dermatology Services has not
opted to use the website to post press releases. This
Ser No. 77704186
4
website does not show the same mark used in connection with
dermatology services and any services listed in the
application.
3. The MIMA Dermatology website
(mimadermatology.com) excerpt is a newsletter from D. Larry
Bishop. Dr. Bishop explains that he is associated with the
MIMA practice group. The excerpt also features a gift
certificate for MIMA Dermatology. This website shows the
use of a mark in connection with a dermatology practice and
a newsletter.
4. Search result listings 1-10 from a GOOGLE search
engine summary for the search for “‘dermatology services’
newsletters.” The search summary is not probative because
it does not provide enough information for a proper
analysis. See In re Bayer Aktiengesellschaft, 488 F.3d
960, 967, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (GOOGLE®
search results that provided very little context of the use
of ASPIRINA deemed to be “of little value in assessing the
consumer public perception of the ASPIRINA mark”); In re
Tea and Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB
2008) (truncated search engine results entitled to little
probative weight without additional evidence of how the
searched term is used); In re Thomas, 79 USPQ2d 1021 (TTAB
2006) (Board rejected an applicant’s attempt to show
Ser No. 77704186
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weakness of a term in a mark through citation to a large
number of search engine “hits” because the list of results
lacked sufficient context); In re King Koil Licensing Co.
Inc., 79 USPQ2d 1048 (TTAB 2006); In re Remacle, 66 USPQ2d
1222, 1223 n.2 (TTAB 2002); In re Fitch IBCA Inc., 64
USPQ2d 1058 (TTAB 2002).
The Examining Attorney contends that because the goods
and services are all in the field of dermatology and
skincare, the goods and services are related. However,
just because the goods and services are in the same field
does not mean that they are related for purposes of the
likelihood of confusion analysis. Cooper Industries, Inc.
v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983) (“the
mere fact that the products involved in this case (or any
products with significant differences in character) are
sold in the same industry does not of itself provide an
adequate basis to find the required ‘relatedness’”). See
also In re White Rock Distilleries Inc., 92 USPQ2d 1282
(TTAB 2009) (regarding alcoholic beverages); Information
Resources Inc. v. X*Press Information Services, 6 USPQ2d
1034, 1038 (TTAB 1988) (regarding computer hardware and
software); Hi-Country Foods Corp. v. Hi Country Beef Jerky,
4 USPQ2d 1169, 1171 (TTAB 1987) (regarding food products);
Ser No. 77704186
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In re British Bulldog, Ltd., 224 USPQ 854, 855-56 (TTAB
1984), and cases cited therein (regarding clothing).
Based on the evidence in the record, we find that
dermatology skin care services and newsletters in the
fields of healthcare and dermatology are related, but that
there is no evidence to support a finding that dermatology
skin care services and online forums and educational
services concerning healthcare and dermatology are related.
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

With respect to dermatology skin care services and
newsletters in the field of dermatology and skincare, as
demonstrated by the Helendale Dermatology & Medical Spa and
MIMA Dermatology websites, we find that dermatologists use
newsletters to educate patients and to promote their
services. Accordingly, we find that dermatology skin care
services and associated newsletters move in the same
channels of trade to the same classes of consumers.
However, with respect to online forums and educational
services concerning healthcare and dermatology, there is no
evidence to suggest that those services would be marketed
under circumstances likely to give rise to the mistaken
belief that they emanate from the same source as
dermatology skin care services: that is, there is no
Ser No. 77704186
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evidence of dermatology practices offering educational
services to lay persons in the field of dermatology or
providing online forums for transmission of messages among
computer users concerning healthcare and dermatology. For
example, the educational services are specifically for
providing congresses, conferences, symposia, meetings,
forums, seminars and workshops in the fields of healthcare
and dermatology. Although not expressly limited to
professionals, these services do not appear to be directed
to lay persons.
C. The strength of the term SKINSMART.
A major part of our consideration of whether the
similarity of the marks factor favors a likelihood of
confusion is the strength of the mark in the cited
registration. The marks are similar to the extent that
they both share the term “Skin Smart” and applicant’s mark
incorporates the entirety of registrant’s mark. However,
applicant contends that the weakness of the term “Skin
Smart” coupled with the addition of the term LIVE LIFE is
sufficient to distinguish the marks.
In order to show that the registrant’s mark SKINSMART
is weak, applicant has submitted the following evidence
attached to its January 15, 2010 response:
Ser No. 77704186
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1. An excerpt from the Skin Smart Dermatology
website (skinsmartderm.com). “Skin Smart Dermatology” is a
service mark used by Dr. Toby Shawe, M.D., to identify his
practice in Wyndmoor and Philadelphia, Pennsylvania.
2. The listing of the dermatology practice of Samy
Badawy, MD., dba, Skinsmart Dermatology located in
Glendale, Pennsylvania at Yahoo! search engine directory.
Glendale is a suburb of Pittsburgh.
3. An excerpt from the Skin Smart Salon website
(skinsmartsalon.com). The Skin Smart Salon is located in
Ashland, Massachusetts and specializes in skin care.
4. An excerpt from the Smart Skin Spa & Salon
(smartskinspasalon.com) website. Smart Skin Spa & Salon is
located in Prattville, Alabama and specializes in skin
care.
5. A listing of skin care service providers in North
Carolina in the iLookBetter.com website. The list
identifies Skin Smart located in Rocky Mount, North
Carolina.
6. An excerpt from the Cooperlabs website
(cooperlabs.com) advertising CABOT skin moisturizer using
the advertising line “Skin Smart Solutions … for healthy
skin.”
Ser No. 77704186
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7. An excerpt from the Coleman website (coleman.com)
advertising SKINSMART insect repellant. There was also a
review about this product in the SNEWS website
(snewsnet.com).
8. An excerpt for the Apotek website
(apotecksmartskin.com) advertising APOTEK SMART SKIN “anti-
aging skincare product.”
9. An advertisement for the sale of PRESTIGE Light
Response Skin Smart Liquid Foundation in the Beauty
Encounter website (beautyencounter.com).
10. An excerpt from the ST. TROPEZ anticancer website
(sttropezskinsmart.org) regarding its St. Tropez SkinSmart
Campaign promoting awareness of the dangers of tanning
beds.
11. An article published by the University of
Southern California in its online publication “USC Health
Now” (healthnow.usc.edu) entitled “Skin Smart.” The
subject of the article is skin cancer awareness.
12. An article appearing the Medical News Today
website (medicalnewstoday.com) entitled “Skin Smart –
Protecting Yourself Against Melanoma.” The website appears
to be a website in the field of dermatology and skin care.
This article is also referenced in an excerpt from the Skin
Clinics website (skinclinics.net).
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13. An excerpt from the American Federation for Aging
Research website (afar.org). This excerpt features an
article entitled “Skin Smart Seniors Are Safe Year-Round”
regarding skin cancer awareness.
14. An excerpt from a book entitled The Complete
Idiot’s Guide to Beautiful Skin retrieved from GOOGLE Books
(books.Google.com). The authors use the term SKIN SMART to
identify inserts with tips regarding skin care.
15. An abstract for an article entitled “Skin smart:
common sense advice for warding off winter’s bite” in an
unidentified website (faqs.org).
16. An article entitled “Skin-smart diet-Brief
Article” in the BNET website (findarticles.com) regarding
the proper diet for improving your complexion.
17. A list of articles regarding skin care from the
website SmartSkinCare.com, a website dedicated to helping
people find information about skin care.
We find from the evidence of third-party use that the
term “Skin Smart” is highly suggestive when used in
connection with skin care products and services because it
implies or suggests intelligent skin management.
Accordingly, with respect to the inherent strength of
registrant’s mark, the cited registration is not entitled
to a broad scope of protection because it is highly
Ser No. 77704186
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suggestive. However, as the examining attorney has pointed
out, even suggestive or weak marks are entitled to
protection from the use of a very similar mark for related
services. See In re Chica Inc., 84 USPQ2d 1845, 1850 (TTAB
2007), quoting In re Colonial Stores, 216 USPQ 793, 795
(TTAB 1982):
[I]f the word CORAZON, and its English
translation, was considered to be
highly suggestive of jewelry, it
nonetheless is entitled to protection
from the use of a very similar mark on
jewelry products. “[E]ven weak marks
are entitled to protection against
registration of similar marks,
especially identical ones, for related
goods and services.”

With respect to the marketplace strength of the term
“Skin Smart,” applicant has made of record evidence of five
third parties using the term “Skin Smart” in connection
with dermatology services or spa services and four third-
party uses for skin care products. Widespread and
significant use by third parties of marks containing
elements in common with the mark in the cited registration
may indicate that confusion is not, in reality, likely to
occur in the marketplace. Extensive third party use
suggests that consumers will look to other elements as a
means of distinguishing the source of the goods and
services. In re Broadway Chicken, Inc., 38 USPQ2d 1559,
Ser No. 77704186
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1565-66 (TTAB 1996). By relying on such third-party use,
applicant is asserting that small variations in the SKIN
SMART marks used in connection with different skin care
goods and services are sufficient to avoid confusion.
With respect to the dermatology practices and spa
services, the Internet evidence indicates that these
service providers are local in nature. Thus, the relevant
patients/clients may not have encountered multiple “Skin
Smart” dermatology practices or spas so as to condition
them to look to other elements of the marks or trade names
to distinguish their source.
With respect to the “Skin Smart” products identified
by the Internet evidence, applicant has not provided any
evidence regarding the extent of such use by these third
parties. As the Court of Appeals for the Federal Circuit,
our primary reviewing court has previously held, where the
“record includes no evidence about the extent of [third
party] uses … [t]he probative value of this evidence is …
minimal.” Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d
1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001).
The evidence of third-party use is insufficient for us
to find that consumers are so used to seeing marks
containing the term “Skin Smart” for skin care products and
services of the types identified in applicant’s application
Ser No. 77704186
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and the cited registration that the additional wording, in
this case LIVE LIFE, necessarily causes consumers to look
to the additional wording to distinguish the marks.
D. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to 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. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks,
we are mindful that 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 impression so
that confusion as to the source of the goods and services
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
Ser No. 77704186
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June 5, 1992). The proper focus is on the recollection of
the average customer, who retains a general rather than a
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975).
As noted, the cited mark is SKINSMART and applicant’s
mark is LIVE LIFE SKIN SMART. Thus, applicant incorporates
the entire registered mark. Likelihood of confusion is
often found where the entirety of one mark is incorporated
within another. The Wella Corp, v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design for men’s cologne,
hair spray, conditioner and shampoo is likely to cause
confusion with the mark CONCEPT for cold permanent wave
lotion and neutralizer); Coca-Cola Bottling Co. v. Seagram
& Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975)
(BENGAL LANCER and soldier design for club soda, quinine
water and ginger ale is likely to cause confusion with
BENGAL LANCER for gin); In re West Point-Pepperell, Inc.,
468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT
PEPPERELL and griffin design for fabrics is likely to cause
confusion with WEST POINT for woolen piece goods).
Ser No. 77704186
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We are not persuaded that the addition of the term
LIVE LIFE to applicant’s mark is sufficient to
differentiate applicant’s mark from the registered mark in
any meaningful way. The composite mark LIVE LIFE SKIN
SMART conveys the message “live your life with intelligent
skin care.” Thus, the marks have similar connotations and
engender a similar commercial impression in that they both
convey the message of intelligent skin care.
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
E. Balancing the factors.
In view of the similarity of the marks, goods and
services, channels of trade and classes of consumers, we
find that applicant’s mark LIVE LIFE SKIN SMART for printed
materials, namely, booklets, pamphlets, newsletters in the
fields of healthcare and dermatology so resembles the mark
SKINSMART for “dermatology skin care services” as to be
likely to cause confusion. However, the record lacks any
evidence regarding the relationship, channels of trade and
classes of consumers with respect to “providing online
forums for transmission of messages among computer users
concerning healthcare and dermatology” and “educational
services, namely, providing congresses, conferences,
Ser No. 77704186
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symposia, meetings, forums, seminars and workshops in the
fields of healthcare and dermatology” in the application
and “dermatology skin care services” in the cited
registration. Therefore, we find that applicant’s mark
LIVE LIFE SKIN SMART for the services set forth in Classes
38 and 41 are not likely to cause confusion with the mark
SKINSMART for “dermatology skin care services.”
Decision: The refusal of register the mark in
connection with the goods in Class 16 is affirmed.
The refusal to register the mark in connection with
the services in Classes 38 and 41 is reversed.