House of Westmore, Inc.

Trademark Trial and Appeal Board

Mar 31, 1998

No. 74671877 (T.T.A.B. Mar. 31, 1998)

Paper No. 9
CEW
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MARCH 31, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re House of Westmore, Inc.
___________
Serial No. 74/671,877
___________
Michael A. Painter of Isaacman, Kaufman & Painter for
applicant.
Dominick J. Salemi, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
____________
Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
House of Westmore, Inc. has filed a trademark
application to register the mark PRISMATIQUE COLOUR for
“cosmetics, namely, liquid foundation.”1 The application
includes a disclaimer of COLOUR apart from the mark as a
whole.

1 Serial No. 74/671,877, in International Class 3, filed May 9, 1995,
based on an allegation of use of the mark in commerce, alleging first
use and first use in commerce as of July 20, 1989. In the application,
applicant noted its ownership of Registration No. 1,514,237 which
applicant alleges was canceled under Section 8 of the Trademark Act.
Applicant alleges, further, that the canceled registration is for the
same mark and the same goods as this application.
Serial No. 74/671,877
2
The Trademark Examining Attorney has finally refused
registration 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 PRISMATIC, previously registered for
“liquid make-up preparation for the face, which can also be
used as a powder base,”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, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Turning, first, to the goods, we take judicial notice
of the definition of “foundation” as “a cosmetic, as a cream
or liquid, used as a base for facial make up.”3 As such,

2 Registration No. 500,648 issued June 15, 1948, to Anatole Robbins,
Inc., in International Class 3. The record states that the present
owner of the registration is Charles of the Ritz Group Ltd. [Second
renewal for a term of twenty years from June 15, 1988; Sections 8 and
15 affidavits accepted and acknowledged, respectively.]
3 Random House Dictionary of the English Language, 2nd ed. unabridged
(1987).
Serial No. 74/671,877
3
applicant’s goods are clearly either identical or closely
related to the goods identified in the cited registration.
Turning, next, to the marks, the Examining Attorney
contends that PRISMATIQUE is the dominant portion of
applicant’s mark and notes, for the first time in his brief,
that PRISMATIQUE is a French word which translates into
English as PRISMATIC.4 The Examining Attorney concludes
that applicant has, thus, appropriated registrant’s mark in
its entirety and added to it the merely descriptive term
COLOUR.
Applicant contends that the Examining Attorney’s
position is contrary to the position the Office took in
permitting its mark to register previously and, further,
that the cited registrant did not object, through an
opposition or cancellation proceeding, to the prior
registration of the mark. Applicant also contends that the
Examining Attorney has not considered the marks in their
entireties, in which case the term COLOUR adequately
distinguishes applicant’s mark from registrant’s mark.
We agree with applicant that we must base our
determination on a comparison of the marks in their
entireties. However, we are guided, equally, by the well-

4 Although the Examining Attorney references a dictionary excerpt which
is not in the record, we take judicial notice of the entry in the
Collins Robert French Dictionary (2nd ed. 1994) stating that PRISMATIQUE
is a French word, an adjective, which translates into English as
PRISMATIC.
Serial No. 74/671,877
4
established principle that, in articulating reasons for
reaching a conclusion on the issue of confusion, “there is
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Further, the test of likelihood of confusion is
not whether the marks can be distinguished when subjected to
a side-by-side comparison. The issue is whether the marks
create the same overall commercial impression. Visual
Information Institute, Inc. v. Vicon Industries Inc., 209
USPQ 179 (TTAB 1980). Due to the consuming public’s
fallibility of memory, the emphasis is on the recollection
of the average customer, who normally retains a general
rather than a specific impression of trademarks or service
marks. Spoons Restaurants, Inc. v. Morrison, Inc., 23
USPQ2d 1735 (TTAB 1991), aff’d. No. 92-1086 (Fed. Cir. June
5, 1992); and In re Steury Corporation, 189 USPQ 353 (TTAB
1975).
In this case, we find that PRISMATIQUE is the dominant
portion of the mark PRISMATIQUE COLOUR, as PRISMATIQUE is,
at most, a suggestive term in connection with applicant’s
identified goods and it defines and distinguishes the noun
COLOUR. COLOUR is a British form of the American English
Serial No. 74/671,877
5
word “color”5 and, as applicant admits, it is merely
descriptive in connection with the identified goods. Thus,
the dominant portion of applicant’s mark is substantially
similar to opposer’s mark PRISMATIC. To the extent
consumers viewing these marks over time actually recall the
distinctions between PRISMATIQUE and PRISMATIC, the term
PRISMATIQUE is likely to be viewed as merely a fanciful, but
related, version of the term PRISMATIC formed by dropping
the final “C” in PRISMATIC and substituting “QUE.”
We find that when opposer’s mark, PRISMATIC, and
applicant’s mark, PRISMATIQUE COLOUR, are considered in
their entireties, they create substantially similar overall
commercial impressions. Because applicant’s mark
essentially encompasses opposer’s mark and merely
substitutes a fanciful ending to the word PRISMATIC and adds
the descriptive term COLOUR, it is likely that, when
considered in relation to the identical or closely related
goods of the parties, consumers may mistakenly believe that
applicant’s goods are part of registrant’s line of goods
identified by its mark PRISMATIC.
We believe that the Examining Attorney’s statement that
PRISMATIQUE is a French term which is equivalent to
PRISMATIC to be unnecessary to our determination. We note
that while the term PRISMATIQUE is a French word, the term

5 As noted in The Random House Dictionary of the English Language,
Serial No. 74/671,877
6
COLOUR is an English word that is primarily British in
usage. Thus, applicant’s mark as a whole is not a French
phrase. Further, in the French language an adjective, such
as PRISMATIQUE, would ordinarily follow the noun that it
modifies. The mark before us appears in English syntax as
the term PRISMATIQUE precedes the term COLOUR. As a general
rule, in considering the meaning and connotation of a mark
in the context of a determination of likelihood of
confusion, there is no distinction between English terms and
their foreign equivalents, despite the fact that the foreign
term may not be commonly known to members of the general
public in the United States. See, In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992) and cases cited therein. However,
the equivalency in connotation between two marks does not,
in and of itself, determine the question of likelihood of
confusion. In re Ithaca Industries, Inc., 230 USPQ 702
(TTAB 1986). In this case, because applicant’s mark as a
whole is not a French term and the term PRISMATIQUE is
similar in all respects to the term PRISMATIC, we do not
find it useful to consider PRISMATIQUE as it appears in the
phrase PRISMATIQUE COLOUR as a term that would necessarily
be perceived, by either French or English speaking
consumers, as a French term that is equivalent to the
English term PRISMATIC. Rather, it is equally likely that

supra, of which we take judicial notice.
Serial No. 74/671,877
7
PRISMATIQUE will be viewed as a fanciful version of
PRISMATIC. In either case, the similarity in appearance,
sound and connotation between the terms PRISMATIQUE and
PRISMATIC is substantial.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of registrant’s
mark PRISMATIC and applicant’s mark PRISMATIQUE COLOUR,
their contemporaneous use on the identical or closely
related goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
We are not convinced otherwise by applicant’s arguments
pertaining to its prior registration. Not only are we not
privy to the record in the prior registration, but the
propriety of the issuance of that registration is not before
us and neither the Board nor the Examining Attorney are
bound by the determination made by another Examining
Attorney who handled that case.
Decision: The refusal under Section 2(d) of the Act is
affirmed.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Serial No. 74/671,877
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Trademark Trial and Appeal Board