HLS Holdings International, LLC

Trademark Trial and Appeal Board

Aug 30, 2010

No. 77642156 (T.T.A.B. Aug. 30, 2010)

Mailed: August 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re HLS Holdings International, LLC
___________

Serial No. 77642156
___________

John D. Gugliotta, Esq. for HLS Holdings International, LLC.

Nancy L. Clarke, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
____________

Before Walters, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

HLS Holdings International, LLC has filed an
application to register the mark shown below on the
Principal Register for “human hair shampoos and
conditioners,” in International Class 3.1

1 Serial No. 77642156, filed December 31, 2008, based on an allegation
of a bona fide intention to use the mark in commerce.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77642156

2

Serial No. 77642156

3
The examining attorney has issued a final refusal to
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 AMAZE, previously registered for “animal coat, fur
and hair conditioner and human hair conditioner,” in
International Class 5,”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. 1908059, issued August 1, 1995, to Ellen Voss.
[Renewed.]

Serial No. 77642156

4
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 Goods/Services
We must determine the question of likelihood of
confusion based on an analysis of the goods recited in
applicant’s application vis-à-vis the goods recited in the
registration, rather than what the evidence shows the goods
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); The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Both the application and the cited
registration include hair conditioners for human use in the
description of goods and, therefore, the goods are in part
identical. We may find likelihood of confusion when only
one item in a class is similar to registrant’s goods.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (“[L]ikelihood of
confusion must be found if the public, being familiar with
appellee’s use of MONOPOLY for board games and see the mark
Serial No. 77642156

5
on any item that comes within the description of goods set
forth by appellant in its use of the mark, directly or under
license, such item … ”) (Emphasis added).
Applicant contends, however, that registrant is not
using its mark in connection with human hair conditioner.
Applicant submitted a copy of the specimen in the file of
the cited registration, which shows a product label for a
coat conditioner for animals. Applicant argues that,
because the file does not also contain a label showing use
of the registrant’s mark in connection with human hair
conditioner, registrant is only using its mark in connection
with the animal conditioner. Applicant asserts that there
is a significant difference between its human hair shampoo
and conditioner and registrant’s conditioner for animals
and, thus, there is no likelihood of confusion.
Applicant’s argument is not well-taken. First, the
registrant was required to submit only one specimen of use
for the goods in one class. Thus, it would be inappropriate
for us to conclude from the specimen for an animal coat
conditioner that applicant does not use its mark on the
identified conditioner for human hair. Moreover,
applicant’s allegation of non-use by registrant is not
properly made in the context of this ex parte appeal.
Rather, one appropriate forum for this claim would be a
cancellation proceeding against that registration.
Serial No. 77642156

6
Second, the examining attorney has submitted excerpts
from three websites showing various marks used to identify
both human hair shampoos and conditioners. In further
support of this evidence, applicant submitted third-party
registrations owned by five different entities for marks in
connection with both human hair shampoo and conditioner.3
We find this evidence establishes that human hair shampoo
and conditioner are closely related products that regularly
come from the same source and are identified by the same
marks.
This du Pont factor weighs in favor of a finding of
likelihood of confusion.
Channels of Trade
Because the goods identified in the application and the
cited registration are in part identical, we must presume
that the channels of trade and classes of purchasers are the
same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) (“Given the in-part identical and in-part related
nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31

3 The examining attorney also submitted the results of a Google Internet
search. The partial descriptions for each listing include references to
Serial No. 77642156

7
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
The Marks
We turn, next, 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 determining the commercial impression created by

both shampoo and conditioner, but do not show use of the same mark in
Serial No. 77642156

8
the mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
Applicant has presented no argument about the marks,
which the examining attorney considered to be a concession
that the marks are substantially similar. While this may be
so, we will compare the marks and reach a conclusion on the
merits of this du Pont factor. The word portion of
applicant’s mark is identical to the registered mark in its
entirety. The design element of applicant’s mark consists
of slightly stylized font, which is insignificant, and a
small flower above the “M” in “AMAZE.” The word AMAZE
appears large relative to the flower. Also, it is the word
AMAZE that would be used by purchasers to call for
applicant’s goods. Thus, the wording would make a greater
impression on purchasers and is the portion that is more
likely to be remembered as the dominant and source-
signifying portion of the registered mark. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are
normally accorded greater weight because they would be used
by purchasers to request the goods”). See also, e.g., In re
Appetito Provisions Co., 3 USPQ2d 1553 (1987).
We find that, although the marks have certain
differences, the word portion of applicant’s mark is
identical to the registered mark and the stylized font and

connection with both products. This is of little probative value.
Serial No. 77642156

9
flower design are not sufficient to distinguish the marks
when used on identical and closely related goods.
Consumers familiar with registrant’s mark may simply
conclude that applicant’s mark is an alternate version of
the registrant’s mark, perhaps adopted as a logo or in
conjunction with another variety of its AMAZE human hair
conditioner.
This du Pont factor also weighs in favor of a finding
of 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 design mark, , and registrant’s standard
character mark, AMAZE, their contemporaneous use on the
identical and closely related human hair products 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.