Henkel Corp.

Trademark Trial and Appeal Board

Dec 19, 2012

No. 77408579 (T.T.A.B. Dec. 19, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: December 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Henkel Corp.
________

Serial No. 77408579
_______

A. Kate Huffman for Henkel Corp.

Jaclyn Kidwell Walker, Trademark Examining Attorney, Law
Office 112 (Angela Bishop Wilson, Managing Attorney).
_______

Before Cataldo, Taylor and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Henkel Corp., filed an application to
register the mark GOT2B GUARDIAN ANGEL in standard
characters on the Principal Register for “hair care
preparations; hair styling preparations” in International
Class 3.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Application Serial No. 77408579 was filed on February 28, 2008,
based upon applicant’s allegation of its bona fide intent to use
the mark in commerce in connection with the goods.
Ser. No. 77408579
2
applicant’s mark so resembles the mark GUARDIAN ANGEL,
previously registered in standard characters on the
Principal Register for “cosmetics, namely, skin
moisturizers” in International Class 3 as to be likely to
cause confusion, mistake or deception.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney submitted main briefs
on the issue under appeal, and applicant submitted a reply
brief.
Likelihood of Confusion
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, though not exclusive,
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, 27 (CCPA 1976). See also In re Dixie

2 Registration No. 3815873 issued on July 6, 2010.

Ser. No. 77408579
3
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
In comparing applicant’s mark and registrant’s mark,
we first note that applicant has incorporated the
registered mark, GUARDIAN ANGEL, in its entirety. In cases
such as this, a likelihood of confusion frequently has been
found. “When one incorporates the entire arbitrary mark of
another into a composite mark, the inclusion of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion. [Internal citations
omitted]. An inclusion of a merely suggestive or
descriptive element, of course, is of much less
significance in avoiding a likelihood of confusion.” The
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design is similar the mark CONCEPT). See also Coca-Cola
Bottling Co. v. Seagram & Sons, Inc., 526 F.2d 556, 188
USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and Bengal Lancer
soldier design is similar to the mark BENGAL); and In re
Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (E-CELL is similar to the mark E). Thus, the
importance of applicant’s incorporation of registrant’s
GUARDIAN ANGEL mark depends greatly on the degree of
Ser. No. 77408579
4
suggestiveness of that mark as well as elements of the
marks that are not shared.
Strength of the Registered Mark
There is no evidence to indicate that GUARDIAN ANGEL
possesses any recognized meaning in connection with the
recited goods. While it stands to reason that the term
“guardian angel” may be slightly suggestive in connection
with skin and hair care products having protective
qualities, it is only modestly suggestive and we find no
specific meaning of the term in connection with the
identified goods in either the subject application or cited
registration. Even allowing for any suggestive nature of
the term GUARDIAN ANGEL, the fact that applicant has
incorporated the registered mark greatly increases the
level of similarity between the marks. See In re Denisi,
225 USPQ 624, 626 (TTAB 1985)(PERRY'S PIZZA for restaurant
services specializing in pizza and PERRY'S for restaurant
and bar services); Johnson Publishing Co. v. International
Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for
cosmetics and EBONY DRUM for hairdressing and conditioner);
and In re South Bend Toy Manufacturing Company, Inc., 218
USPQ 479, 480 (TTAB 1983)(LIL' LADY BUGGY for toy doll
carriages and LITTLE LADY for doll clothing).
Ser. No. 77408579
5
Applicant has made of record Internet evidence of
third parties displaying products under the names “Guardian
Angel Body Balm;”3 “Guardian Angel Fragrance Oil;”4
“Guardian Angel 7 Day Candle;”5 “Your Guardian Angel” (in
relation to health and skin care products);6 Estee Lauder
Guardian Angel Lucidity Powder Compact;7 and Estee Lauder
Cherub/Guardian Angel Perfume Compact.8 We note, however,
that with the exception of “Guardian Angel Body Balm” and
the “Your Guardian Angel” products, none of the third
parties appear to use the term in connection with the goods
in the cited registration or involved application, but
rather in connection with less closely related goods such
as makeup and perfume or unrelated goods such as fragrance
oil and candles. In addition, there is no indication as to
the extent to which consumers have been exposed to these
third-party uses such that we may conclude that the mark in
the cited registration is weak and entitled to a narrow
scope of protection. As such, we find based on this record

3 makeupalley.com
4 naturesgardencandles.com
5 mexgrocer.com
6 Angel-Face-Makeup.html
7 keeganskorner.com
8 Ebay.com

Ser. No. 77408579
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that GUARDIAN ANGEL is, at worst, mildly suggestive of a
characteristic of the involved goods.9
Fame of Applicant’s GOT2B Designation
Evidence made of record by the examining attorney
suggests that GOT2B is a mark used by applicant in
connection with a variety of beauty, hair and skin care
products. There is no evidence that GOT2B is descriptive
or even suggestive as applied to such goods.
Applicant argues that “GOT2B is a famous, highly
recognized brand, regarded as a standard in the hair care
industry.”10 We note, however, that applicant has submitted
very little evidence of the purported fame of that portion
of its mark. In addition, even assuming arguendo that the
notoriety of GOT2B creates a situation of reverse
confusion, we still must resolve doubt for the senior user
of the mark, which in an ex parte proceeding is presumed to
be the one who registered first (particularly as, we note,
applicant has filed an intent-to-use application). In re

9 Applicant also has made of record copies of several third-party
registrations taken from the USPTO Trademark Electronic Search
System (TESS) for GUARDIAN and ANGEL formative marks for hair,
skin and body products in addition to a variety of unrelated
products, although none of the examples show use of both terms in
the same mark. These registrations are not persuasive, primarily
because none display both of the terms comprising registrant’s
mark, namely, GUARDIAN and ANGEL, let alone the unitary term
GUARDIAN ANGEL.
10 Applicant’s brief, p. 10.

Ser. No. 77408579
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Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
As a result, applicant’s argument is not persuasive in an
ex parte context for our likelihood of confusion
determination.
We note in addition that there is little, if any,
evidence regarding the fame of registrant’s mark, and we
find that factor to be neutral. In re Thomas, 79 USPQ2d
1021, 1027 n.11 (TTAB 2006) (fame is not normally a factor
in ex parte proceedings).
Based upon the foregoing, we find the cited mark,
GUARDIAN ANGEL, to be entitled to a normal scope of
protection. Further, and as discussed above, applicant has
appropriated the entirety of registrant’s mark which, at
worst, is mildly suggestive of the recited goods. See
Wella Corp 194 USPQ at 422. We further observe that
consumers are often known to use shortened forms of names,
and it is highly likely that applicant’s goods will be
referred to as “GUARDIAN ANGEL.” Cf. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA
1978) [Rich, J., concurring: “the users of language have a
universal habit of shortening full names – from haste or
laziness or just economy of words”].
Ser. No. 77408579
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We must, of course, consider the marks in their
entireties and we have already noted that applicant relies
heavily on the GOT2B portion of its mark in arguing that
the two marks are dissimilar. However, because applicant
incorporates the entire registered mark which has not been
shown to be descriptive or weak, purchasers are likely to
assume that applicant’s mark may simply be a variation of
registrant’s mark, rather than identifying a different
source.
In sum, we conclude that applicant's mark and the
registered mark are substantially similar in terms of
sound, appearance, connotation and overall commercial
impression. Accordingly, this du Pont factor weighs in
favor of finding a likelihood of confusion.
The Goods
We turn now to our consideration of the identified
goods, noting that it is not necessary that the goods at
issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
Ser. No. 77408579
9
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, we find that applicant’s hair care
preparations and hair styling preparations are related to
registrant’s skin moisturizers inasmuch as both are beauty
products intended to enhance the respective appearance of
the hair and skin. Thus, the goods appear to be related on
the face of their respective identifications thereof.
In support of the refusal to register, the examining
attorney made of record copies of approximately 16 use-
based, third-party registrations reciting goods of a type
similar to the goods identified in the involved application
and cited registration, including 9 that recite “hair care
preparations” or “hair styling preparations” and “skin
moisturizers.”11 In addition, the examining attorney made
of record four of applicant’s own registrations that recite
both hair and skin care products similar to the ones
identified in its involved application and the cited
registration.12 These registrations suggest, in general,

11 For example, Registration Nos. 3887930; 3108590; 2986294;
2923034; and 2936388 are illustrative.
12 These include Registration Nos. 0613665; 1787304; 2617174; and
2854835.

Ser. No. 77408579
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that applicant’s hair care and styling products may
originate from the same source as registrant’s skin
moisturizers. See In re Infinity Broadcasting Corp. of
Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001). Although
these registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them, they nevertheless have probative value to the extent
that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source. See,
e.g., In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc.,
6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
The examining attorney further made of record evidence
from commercial Internet websites showing that hair care
and styling products and skin care products are offered
under the same marks. These websites include aveda.com;
trefis.com; and loccitane.com. Such evidence serves to
demonstrate that third parties are using a single mark to
identify applicant’s types of goods as well as those of
registrant.
We note applicant’s arguments that the above evidence
is not persuasive to show a relationship between its goods
and those of registrant. However, our case law
consistently holds that such evidence is persuasive to
Ser. No. 77408579
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support a finding that the goods in an involved application
are related to the goods identified in a cited registration
for purposes of a likelihood of confusion determination.
As discussed above, the third-party website evidence is
competent to show that such parties use a single mark to
identify both applicant’s and registrant’s types of goods,
and the third-party registrations suggest that the
identified goods are of a kind that emanate from a common
source. Based upon this evidence and the nature of the
goods themselves, we find that registrant’s goods are
related to those provided by applicant for purposes of our
determination herein.
As a result, this du Pont factor also favors a finding
of likelihood of confusion.
Channels of Trade
It is settled that in making our determination
regarding the relatedness of the parties’ goods, we must
look to the goods as identified in the involved application
and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“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
Ser. No. 77408579
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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.”). 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.”).
Because there are no restrictions in either
applicant’s or registrant’s identification of goods as to
the channels of trade in which the goods may be
encountered, or type or class of customer to which the
goods are marketed, both applicant’s and registrant’s goods
must be presumed to move in all normal channels of trade
and be available to all classes of potential consumers,
including those of each other’s goods. See In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). In consequence thereof,
this du Pont factor further favors a finding of likelihood
of confusion.
Summary
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists. Moreover, to the extent
that any of the points raised by applicant raise a doubt
Ser. No. 77408579
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about likelihood of confusion, that doubt is required to be
resolved in favor of the prior registrant. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.